Ex Parte Ishikawa et al

Patent Trial and Appeal Board

Aug 9, 2016

11046658 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111046,658 01/28/2005
44765 7590 08/11/2016
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg.4
Bellevue, WA 98005
FIRST NAMED INVENTOR
Muriel Y. Ishikawa
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
1003-002-002J-OOOOOO 9978
EXAMINER
WHALEY, PABLO S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
08/11/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ISFDocketlnbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MURIEL Y. ISHIKAWA,
EDWARD K.Y. JUNG, NATHAN P. MYHRVOLD,
RICHA WILSON, and LOWELL L. WOOD, JR. 1
Appeal2012-008962
Application 11/046,658
Technology Center 1600
Before LORA M. GREEN, ALLEN R. MacDONALD, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
GREEN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejections of claims 51, 56, and 58-72. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part. We also enter a new ground of rejection of claims
56 and 66-72 under 35 U.S.C. § 112, second paragraph, for indefiniteness.
1 According to Appellants, the Real Party in Interest is Searete LLC. (App.
Br. 4).
Appeal2012-008962
Application 11/046,658
STATEMENT OF THE CASE
Claims 51 and 56 are representative of the claims on appeal, and read
as follows:
51. A system, comprising:
a computer readable recordable type medium including, but not
limited to, a computer program for use with a computer system
and wherein the computer program includes a plurality of
instructions including:
one or more instructions for selecting one or more computable
epitopes;
one or more instructions for predicting at least one pattern
change as determined by analysis of past variations in the one
or more computable epitopes;
one or more instructions for associating the at least one pattern
change in the one or more computable epitopes with at least one
timeline of therapy change;
one or more instructions for designating a course of action
associated with the at least one pattern change in the one or
more computable epitopes; and
one or more instructions for communicating the course of
action to at least one system user.
56. A system, comprising:
circuitry for selecting one or more computable epitopes;
circuitry for predicting at least one pattern change as
determined by analysis of past variations in the one or more
computable epitopes;
2
Appeal2012-008962
Application 11/046,658
circuitry for associating the at least one pattern change in the
one or more computable epitopes with at least one timeline of
therapy change;
circuitry for designating a course of action associated with the
at least one pattern change in the one or more computable
epitopes; and
circuitry for communicati[ ng] the course of action to at least
one system user.
(App. Br. 57-58).
The following grounds of rejection are before us for review:
I. Claims 51 and 58---65 stand rejected under 35 U.S.C. § 101 as
drawn to non-statutory subject matter (Ans. 6).
II. Claims 51, 56, and 58-72 stand rejected under 35 U.S.C. § 112,
first paragraph as being non-enabled (Ans. 7).
\X/ e affirm rejection I, but reverse rejection II. \X/ e also enter ne\'l/
grounds of rejection.
ISSUE (Rejection I)
Has the Examiner established by a preponderance of the evidence that
claims 51 and 58---65 are drawn to non-statutory subject matter?
FINDINGS OF FACT
\Ve find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
3
Appeal2012-008962
Application 11/046,658
FF 1. The Specification teaches that the "present application relates, in
general, to detection and/or treatment" (Spec. 4).
FF 2. The Specification teaches further "a system includes but is not limited
to: a computer readable medium including, but not limited to, a
computer program for use with a computer system" (id.).
FF 3. The Specification defines "epitope" as, including but not limited to:
a sequence of at least 3 amino acids, a sequence of at least nine
nucleotides, an amino acid, a nucleotide, a carbohydrate, a
protein, a lipid, a capsid protein, a polysaccharide, a sugar, a
lipopolysaccharide, a glycolipid, a glycoprotein, and/or at least a
part of a cell. As used herein, the term "epitope" ... may ... be
used interchangeably with antigen, paratope binding site,
antigenic determinant, and/ or determinant. As used herein, the
term "determinant" can include an influencing element,
determining element and/or factor, unless context indicates
otherwise. In one aspect the term "epitope" ... includes, but is
not limited to, a peptide=binding site. ii:\.s used herein, the term
"epitope" ... may include structural and/or functionally similar
sequences found in the agent .... The term "epitope" ... includes,
but is not limited to, similar sequences observed in orthologs,
paralogs, homologs, isofunctional homologs, heterofunctional
homologs, heterospecific homologs, and/or pseudogenes of the
agent ....
(Id. at 13).
FF 4. The Specification defines "immune response component" as
including:
but ... not limited to, at least a part of a macrophage, a neutrophil,
a cytotoxic cell, a lymphocyte, a T-lymphocyte, a killer T-
lymphocyte, an immune response modulator, a helper T-
lymphocyte, an antigen receptor, an antigen-presenting cell, a
4
Appeal2012-008962
Application 11/046,658
dendritic cell, a cytotoxic T-lymphocyte, a T-8 lymphocyte, a
cluster differentiation (CD) molecule, a CD3 molecule, a CD 1
molecule, a B lymphocyte, an antibody, a recombinant antibody,
a genetically engineered antibody, a chimeric antibody, a
monospecific antibody, a bispecific antibody, a multispecific
antibody, a diabody, a chimeric antibody, a humanized antibody,
a human antibody, a heteroantibody, a monoclonal antibody, a
polyclonal antibody, a camelized antibody, a deimmunized
antibody, an anti-idiotypic antibody, an antibody fragment, a
synthetic antibody, and/or any component of the immune system
that may bind to an antigen and/ or an epitope thereof in a specific
and/ or a useful manner.
(Id. at 10).
FF 5. The Specification further teaches (emphasis added):
In addition, those skilled in the art will appreciate that the
mechanisms of the subject matter described herein are capable of
being distributed as a program product in a variety of forms, and
that an illustrative embodiment of the subject matter . . .
described herein applies equally regardless of the particular type
of signal-bearing media used to actually carry out the
distribution. Examples of a signal-bearing media include, but
are not limited to, the following: recordable type media such as
floppy disks, hard disk drives, DVD/CD-ROMs, digital tape,
computer memory devices of various types; and data
transmission type-media such as digital and analog
communication links using TDM or IP-based communication
links (e.g., packetized data links).
(Id. at41).
PRINCIPLES OF LAW
During prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. In re American
5
Appeal2012-008962
Application 11/046,658
Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). In
addition, the claims are not to be confined to the embodiments found in the
Specification, and it is improper to import limitations from the Specification
into the claims. In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299
(Fed. Cir. 2007).
"An essential purpose of patent examination is to fashion claims that
are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process." In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
Moreover, it is during prosecution that applicants have "the opportunity to
amend the claims to obtain more precise claim coverage." American
Academy, 367 F.3d at 1364.
It is well established that laws of nature, natural phenomena, and
abstract ideas are not patentable subject matter under 35 U.S.C. § 101.
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289, 1290 (2012).
ANALYSIS
The Examiner rejects claims 51, and 58---65 as being drawn to non-
statutory subject matter because the claims "are directed to a system
comprising a computer readable recordable type medium including a
computer program with instructions." (Ans. 6). The Examiner reasons that,
because the Specification "does not supply a limiting definition of a
computer readable recordable type medium," this claim limitation is "not
sufficient to distinguish the claimed medium from a signal" and therefore the
claims cover "both transitory and non-transitory embodiments" (id.).
6
Appeal2012-008962
Application 11/046,658
Appellants first argue that the rejection is improper because it is not a
new rejection, but rather has the "same thrust" as a prior rejection which was
expressly withdrawn. (App. Br. 26-27). Appellants contend that the
Examiner's reinstatement of a previous rejection with "no new explanation"
is improper because it "[creates] a confusing record," amounts to "the
unnecessary and costly waste ofUSPTO and Appellant's resources," and
violates the principles of"[ f]aimess and equity" and the "USPTO' s policy of
compact prosecution." (Id. at 28-29; Reply Br. 3).
That argument is not persuasive of reversible error. Appellants have
not identified any authority or case law that prevents an Examiner from
reconsidering the patentability of claims during prosecution. As the
Examiner explains, the rejection of claim 51 under § 101 was expressly
withdrawn in the March 1, 2010 Official Action, but was reconsidered in
light of Subject Matter Eligibility Guidelines of Computer Readable Media
(hereinafter "Guidelines") published in February 2010. (Ans. 13).
Appellants contend, however, that the Guidelines "already existed when [the
Examiner] explicitly withdrew the prior rejection in the March 2010 Office
Action," and that the Examiner was presumably aware of the Guidelines
when the rejection was withdrawn. (Reply Br. 6).
That argument is also not persuasive. The rejection of claim 51 under
§ 101 was withdrawn in an Official Action mailed Monday, March 1, 2010.
The Guidelines were published six days before, on Tuesday, February 23,
2010. Appellants' contention seems to suggest that the Examiner was aware
of and applied the Guidelines to claim 51, and then processed an Official
Action to enable its mailing within six days of the Guideline's publication.
7
Appeal2012-008962
Application 11/046,658
We do not find that position reasonable. However, even if Appellants'
position had some merit, Appellants still have not identified how the
Examiner erred by reconsidering the patentability of claim 51 while
prosecution was ongoing. Thus, we discern no reversible error committed
by the Examiner in reconsidering the previous withdrawal of the § 101
rejection of claim 51.
Next, Appellants argue that the broadest reasonable interpretation of
the recited "computer readable recordable type medium" in claim 51, and its
dependent claims 58---65, is "sufficient to distinguish the claimed medium
from a signal" because the claimed language "would be read by one of
ordinary skill in the art to include tangible medium [sic], specifically
'recordable type' tangible media." (App. Br. 35).
We are not persuaded. In claim 51 i the recited "computer readable
recordable type medium" is not claimed as non-transitory, and the
Specification does not expressly and unambiguously limit that medium to
solely non-transitory forms via a definition or similar limiting language.
Rather, the Specification merely provides non-limiting examples of
recordable type media~ which include "data transmission type-media such as
digital and analog communication links using TDM or IP-based
communication links (e.g., packetized data links)" (see FF 5). Therefore, the
claimed medium encompasses transitory fonns and is ineligible under§ 101.
8
Appeal2012-008962
Application 11/046,658
CONCLUSION OF LAW
We conclude that the Examiner has established by a preponderance of
the evidence that claims 51 and 58---65 are directed to non-statutory subject
matter.
Accordingly, we affirm the Examiner's § 101 rejection of claims 51
and 58---65.
ISSUE (Rejection II)
Has the Examiner established by a preponderance of the evidence that
the Specification fails to enable the claimed systems?
FINDINGS OF FACT
FF 6. The Examiner's statement of the enablement rejection may be found
at pages 7-12 of the Answer.
FF 7. The Examiner finds that "[t]he claims are broad in that they require
associating at least one pattern change in one or more computable
epitopes with at least one timeline of therapy change, and are not
limited to a particular therapy for a particular disease, nor to any
particular epitopes." (Ans. 12).
FF 8. The Examiner also finds that the Specification does not provide specific
guidance or working examples of a computer program for associating
at least one pattern change in one or more computable epitopes with at
least one timeline of therapy change, and also finds that the nature of
the invention is complex (id. at 10).
FF 9. The Examiner further finds that the level of skill in the art is high, but
that the prior art does not teach "anything related to a machine with
9
Appeal2012-008962
Application 11/046,658
hardware and software components for associating a pattern change in
one or more computable epitopes with a timeline of therapy change"
(id. at 11 ).
FF 10. The Examiner appears to cite De Groot2 and Moore3 as evidence of
the state of the art (id.).
FF 11. The Examiner notes that while De Groot "teaches bioinformatics tools
for designing epitope-based treatments for HIV ... [De Groot] does not
teach associating pattern changes in epitopes with a timeline of therapy
change" (id.).
FF 12. The Examiner notes that although "Moore teaches a program (Epipop)
for performing association testing between the presence of HIV residue
polymorphisms and HLA alleles in a population ... [Moore] does not
teach associating pattern changes in epitopes with a timeline of therapy
change" (id.).
FF 13. Thus, according to the Examiner:
The skilled practitioner would first tum to the instant
specification for guidance in making and using the claimed
invention. However, the specification does not disclose any
computer hardware components and integrated software or any
method capable of predictably associating at least one pattern
change in one or more computable epitopes with at least one
timeline of therapy change, as in claims 51 and 56. As such, the
skilled practitioner would tum to the prior art for guidance, but
2 A.S. De Groot et al., Designing HIV-I vaccines to reflect viral diversity
and the global context of HIV/AIDS, 1AIDSCIENCE1-16 (2001) ("De
Groot").
3 Corey B. Moore et al., Evidence of HIV-I Adaptation to HLA-Restricted
Immune Responses at a Population Level, 296 SCIENCE 1439-1443 (2002)
("Moore").
10
Appeal2012-008962
Application 11/046,658
the prior art does not discuss these limitations. Finally, said
practitioner would tum to trial and error experimentation to make
and use the claimed invention. Due to the high degree of
unpredictability, coupled to the lack of guidance in either the
prior art or instant specification, it would require undue
experimentation to perform the instructions recited in the claims.
(Id. at 12).
PRINCIPLES OF LAW
"When rejecting a claim under the enablement requirement of section
112, the PTO bears an initial burden of setting forth a reasonable explanation
as to why it believes that the scope of protection provided by that claim is not
adequately enabled by the description of the invention provided in the
specification of the application." In re Wright, 999 F.2d 1557, 1561---62 (Fed.
Cir. 1993).
[A] specification disclosure which contains a teaching of the
manner and process of making and using the invention in terms
which correspond in scope to those used in describing and
defining the subject matter sought to be patented must be taken
as in compliance with the enabling requirement of the first
paragraph of§ 112 unless there is reason to doubt the objective
truth of the statements contained therein which must be relied on
for enabling support.
In re Marzocchi, 439 F.2d 220, 223 (CCPA 1971) (emphasis added). "[It] is
incumbent upon the Patent Office, whenever a rejection on this basis is made,
to explain why it doubts the truth or accuracy of any statement in a supporting
disclosure and to back up assertions of its own with acceptable evidence or
reasoning which is inconsistent with the contested statement." Id. at 224.
11
Appeal2012-008962
Application 11/046,658
Although "working examples are desirable in complex technologies
... examples are not required to satisfy section 112, first paragraph." In re
Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982) (emphasis in original).
"'The enablement requirement is met if the description enables any
mode of making and using the invention."' Johns Hopkins Univ. v. CellPro,
Inc., 152 F.3d 1342, 1361 (Fed. Cir. 1998) (quoting Engel Indus., Inc. v.
Lodiformer Co., 946 F.2d 1528, 1533 (Fed. Cir. 1991)). Furthermore,
"[ e ]nablement does not require an inventor to meet lofty standards for success
in the commercial marketplace. Title 35 does not require that a patent
disclosure enable one of ordinary skill in the art to make and use a perfected,
commercially viable embodiment absent a claim limitation to that effect."
CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003).
ANALYSIS
Appellants argue that the Specification "provides further support and
context for the claim recitations as a whole," and thus, "[ o ]ne of skill in the
art could implement these portions of the specification, inter alia, in relation
to programming a computer system to utilize Appellant[ s'] claims 51 and
56, or for utilizing such a programmed computer system" (App. Br. 42, 44).
Appellants further argue that the Examiner has not demonstrated "a
reasonable basis to question the enablement of Appellant[s'] claims" (id. at
44--45). Appellants assert that the Specification "provides clear 'direction or
guidance' [to] one of skill in the art to practice Appellant[ s'] claims without
undue experimentation. Table 1 ... lists multiple examples from the
specification that provide support for claims 51 and 56" (id. at 49-50).
12
Appeal2012-008962
Application 11/046,658
Appellants further assert that the statement of the rejection "did not describe
the relationship of the cited [De Groot and Moore] references to the actual
claims at issue and therefore does not establish a reasonable basis to
determine any 'undue experimentation' that may be required to use
Appellant[s'] claims" (id. at 52).
We agree with Appellants that the Examiner has not established a
prima facie case that the Specification fails to enable the claimed systems.
In particular, although we acknowledge that the Specification does not
provide working examples of such systems, it does provide guidance as to
how the ordinary skilled artisan could make or use a system with an
integrated hardware or software component for associating a pattern change
in one or more computable epitopes with a timeline of therapy change. (See,
e.g., Spec. 21-22, and 30-33).
We have also considered the Moore and De Groot references cited by
the Examiner, but they do not persuade us otherwise. The fact that the
references do not discuss associating a pattern change in one or more
computable epitopes with a timeline of therapy change is not evidence that
the instant claims are not enabled, or even that they are enabled. That is,
Moore and De Groot do not appear to be relevant to the issue of whether the
instantly claimed systems are enabled.
CONCLUSION OF LAW
We conclude that the Examiner has not established by a
preponderance of the evidence that the Specification fails to enable the
claimed systems. We, thus, reverse the Examiner's enablement rejection
13
Appeal2012-008962
Application 11/046,658
under 35 U.S.C. § 112, first paragraph, of claims 51, 56, and 58-72, as
failing to comply with the enablement requirement.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 56 and 66-72 under 35 U.S.C. § 112, second
paragraph, for indefiniteness.
Specifically, we construe each of the "circuitry for" limitations recited
in independent claim 56 as "means-plus-function" limitations subject to 35
U.S.C. § 112, sixth paragraph, and conclude that claim 56 and each of its
dependent claims are rendered indefinite under 35 U.S.C. § 112, second
paragraph, due to the Specification's failure to disclose corresponding
structure for performing either of the recited functions. Claims 66-724
depend from claim 56, and, thus, those claims are rejected as well.
FINDINGS OF FACT
FF 14. As to "systems" the Specification teaches (emphasis added):
In one or more various aspects, related systems include but
are not limited to circuitry and/or programming for effecting the
herein-referenced method aspects; the circuitry and/or
programming can be virtually any combination of hardware,
software, and/or firmware configured to effect the herein-
referenced method aspects depending upon the design choices of
the system designer.
4 We note that the dependent claims 66 and 69-72 also contain "circuitry
for" limitations, but determine there is no need to separately address those
added limitations for purposes of this new ground of rejection.
14
Appeal2012-008962
Application 11/046,658
(Spec. 5).
FF 15. The Specification teaches (emphasis added):
The foregoing detailed description has set forth various
embodiments of the devices and/or processes via the use of block
diagrams, flowcharts, and/or examples. Insofar as such block
diagrams, flowcharts, and/or examples contain one or more
functions and/or operations, it will be understood by those
within the art that each function and/or operation within such
block diagrams, flowcharts, or examples can be implemented,
individually and/or collectively, by a wide range of hardware,
software, firmware, or virtually any combination thereof In one
embodiment, several portions of the subject matter described
herein may be implemented via Application Specific Integrated
Circuits (AS I Cs), Field Programmable Gate Arrays (FPGAs ),
digital signal processors (DSPs ), other integrated formats, or
other extensively-integrated formats. However, those skilled in
the art will recognize that some aspects of the embodiments
disclosed herein, in whole or in part, can be equivalently
implemented in standard integrated circuits, as one or more
computer programs running on one or more computers (e.g., as
one or more programs running on one or more computer
systems), as one or more programs running on one or more
processors (e.g., as one or more programs running on one or more
microprocessors), as firmware, or as virtually any combination
thereof, and that designing the circuitry and/or writing the code
for the software and[/]or firmware would be well within the skill
of one of skill in the art in light of this disclosure.
(Id. at 40).
FF 16. The Specification teaches further (emphasis added):
In a general sense, those skilled in the art will recognize
that the various aspects described herein which can be
implemented, individually and/or collectively, by a wide range
of hardware, software, firmware, or any combination thereof can
be viewed as being composed of various types of "electrical
circuitry." Consequently, as used herein "electrical circuitry"
includes, but is not limited to, electrical circuitry having at least
15
Appeal2012-008962
Application 11/046,658
one discrete electrical circuit, electrical circuitry having at least
one integrated circuit, electrical circuitry having at least one
application-specific integrated circuit, electrical circuitry
forming a general-purpose computing device configured by a
computer program (e.g., a general-purpose computer configured
by a computer program which at least partially carries out
processes and/or devices described herein, or a microprocessor
configured by a computer program which at least partially carries
out processes and/or devices described herein), electrical
circuitry forming a memory device (e.g., forms of random access
memory), and/or electrical circuitry forming a communications
device (e.g., a modem, communications switch, or optical-
electrical equipment).
(Id. at 41).
FF 17. The Specification teaches further (emphasis added):
Those skilled in the art will recognize that it is common
within the art to describe devices and/or processes in the fashion
set forth herein, and thereafter use standard engineering
practices to integrate such described devices and/or processes
into data-processing systems. That is; at least a portion of the
devices and/or processes described herein can be integrated into
a data-processing system via a reasonable amount of
experimentation. Those having skill in the art will recognize that
a typical data processing system generally includes one or more
of a system unit housing, a display device, a video display device,
a memory such as volatile and/or non-volatile memory,
processors such as microprocessors and digital signal processors,
computational entities such as operating systems, drivers, user
interfaces (e.g., graphical), and applications programs, one or
more interaction devices, such as a touch-pad or screen, and/or
control systems including feedback loops and control motors
. . . . A typical data processing system may be implemented
utilizing any suitable commercially available components, such
as those typically found in digital data
computing/communication and/or network computing/
communication systems.
16
Appeal2012-008962
Application 11/046,658
(Id. at 41--42).
FF 18. The Specification teaches further (emphasis added):
The herein described aspects depict different components
contained within, or connected with, different other components.
It is to be understood that such depicted architectures are merely
exemplary, and that in fact many other architectures can be
implemented which achieve the same functionality. In a
conceptual sense, any arrangement of components to achieve the
same functionality is effectively "associated" such that the
desired functionality is achieved. Hence, any two components
herein combined to achieve a particular functionality can be seen
as "associated with" each other such that the desired
functionality is achieved, irrespective of architectures or
intermedial components. Likewise, any two components so
associated can also be viewed as being "operably connected", or
"operably coupled", to each other to achieve the desired
functionality, and any two components capable of being so
associated can also be viewed as being "operably couplable", to
each other to achieve the desired functionality.
(Id. at 42).
17
Appeal2012-008962
Application 11/046,658
FF 19. Figure 1 is reproduced below:
100.
)
A computer system
A com.puter program
-··-··'"'··~'- ·-·····•••""'"'················ ..... 1 .. •an••••••••••H•'"'"'
l instructioms fur deHvering a
l irea!men! to a t:1oot wherein U1e
\ !reatment is assodated with
! ;-nodulating a predicted pattern of
j progression of one or more
! computable epitopes
!
~
1
: .... .-. • .-. • .,.,,~~··••••••e;;,.,.,.,,,,,.,.,,."••••,•••••••••u••.-,,.,..,,,,.,~, ..... t
L
t
~ ............... 11
r ,...,
L
1lIB i
---,"----:~la~~l~------·J l
l
______ l_ __________ j~
Hi? i
. Output -1 I
;
L-. ..-.-.-- .. -..... ·.·.·.-.-.-.·.·.-.-.-.-.-.-.-.-.-.--.-.--.-.v ............... J
"Figure 1 depicts a partial view of a system that may serve as an
illustrative environment of and/or for subject matter technologies." (Id. at
5).
18
Appeal2012-008962
Application 11/046,658
FF 20. Regarding Figure 1, the Specification teaches:
One or more users 110 may use a computer system 100 including
a computer program 102, for example, for providing and/or
delivering a treatment associated with a disease, disorder, or
condition. The computer program 102 may include one or more
instructions, for example, instructions for delivering a treatment
to a host wherein the treatment is associated with modulating a
predicted pattern of progression of one or more computable
epitopes 103. The instructions may be such that, when they are
loaded to a general-purpose computer or microprocessor
programmed to carry out the instructions, they create a new
machine, because a general purpose computer in effect may
become a special-purpose computer once it is programmed to
perform particular functions pursuant to instructions from
program software. That is, the instructions of the software
program may electrically change the general-purpose computer
by creating electrical paths within the device. These electrical
paths, in some implementations, may create a special-purpose
machine having circuitry for carrying out the particular
program. The computer program 102 may include instructions
that give rise to circuitry for delivering a treatment to a host
wherein the treatment is associated with modulating a predicted
pattern of progression of one or more computable epitopes 103.
The treatment, may be provided based on, for example,
including, but not limited to, information specific to the host
and/or agent. In one aspect, the treatment, may include a plan
and/or a protocol for treating a person. The treatment may
include, and is not limited to, the treatment of a disease, disorder,
condition, management of health in a healthy individual, and/or
the management of health in an at-risk individual.
(Id. at 7-8).
19
Appeal2012-008962
Application 11/046,658
FF 21. Figure 2 is reproduced below:
1()0 ~------------------- ------------------------
~ A co":'.::sem
I A compulsqx0g1arn
103 l
! instructions fo:r delivering a treatment j
! lo a host wherein !he treatment is i
i assocla!oo with modulatirig a 1
: pred=cled pattern of progression of
~ one or more computable epitopes
'
~'""'''"'·••-•.••.•.•.•:r•<•"L•.,.•nu••••.•-.nu .. _,.,,,.,__,v••.rreSJ)(lnding str11ctt1re~
rnaterial, or acts described in the specification and equivalents
thereof
35 U.S.C. § 112, sixth paragraph (emphasis added). While this provision
permits a claim limitation to be set forth using solely functional language, it
operates to restrict such claim limitations to those structures, materials, or
acts disclosed in the specification (or their equivalents) that perform the
claimed function. Personalized Media Commc'ns, LLC v. Int'! Trade
Comm 'n, 161 F.3d 696, 703 (Fed. Cir. 1998).
The Federal Circuit has established that use of the term "means" is
central to the analysis of whether a claim limitation should be interpreted in
accordance with 35 U.S.C. § 112, sixth paragraph: use of the word "means"
21
Appeal2012-008962
Application 11/046,658
creates a rebuttable presumption that the inventor intended to invoke § 112,
sixth paragraph, whereas failure to use the word "means" creates a
rebuttable presumption that the inventor did not intend the claims to be
governed by§ 112, sixth paragraph. Id. at 703---04. However, this
presmnption against its invocation can be overcome, and therefore§ 112,
sixth paragraph wm apply, if the "claim term fails to 'recite [] sufficiently
definite structure' or else recites 'function without reciting sufficient
stn1cture for performing that function."' VVilliamson v. Citrix Online, LLC,
792 F.3d 1339, 1348 (Fed. Cir. 2015) (quoting J17atts v. XL S)'s., Inc.) 232
f , i ·~ 8'77 R8-'0 '[,'. d (.,. 20()0 .. ) ·- u 1 , o (re . .lf. ) .
For a computer-implemented claim limitation interpreted under § 112,
sixth paragraph, the corresponding structure must include the algorithm
needed to transform the general purpose computer or processor disclosed in
the specification into the special purpose computer programmed to perform
the disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int'! Game
Tech., 521F.3d1328, 1333 (Fed. Cir. 2008); see also Function Media,
L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013). Thus, the
specification must sufficiently disclose an algorithm to transform the general
purpose computer or processor to a special purpose processor programmed
to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1338. An
algorithm is defined, for example, as "a finite sequence of steps for solving a
logical or mathematical problem or performing a task." MICROSOFT
Computer Dictionary 23 (5th ed. 2002). An applicant may express the
algorithm in any understandable terms including as a mathematical formula,
in prose, in a flow chart, or "in any other manner that provides sufficient
22
Appeal2012-008962
Application 11/046,658
structure." Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340
(Fed. Cir. 2008).
An indefiniteness rejection under§ 112, second paragraph, is
appropriate if the specification discloses no corresponding algorithm
associated with a computer or processor. Aristocrat, 521 F.3d at 1337-38.
I\1ere reference to a general purpose computer or processor with appropriate
programrning without providing an explanation of the appropriate
programming or to "software" without providing detail about the means to
accomplish the software function is not an adequate disclosure. Id. at 1334;
Finisar, 523 F.3d at 1340-41. In addition, simply reciting the claimed
function in the specification, while saying nothing about how the computer
or processor ensures that those functions are perfonned, is not a sufficient
disclosure for an algorithm which, by definition, must contain a sequence of
steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed.
Cir. 2009).
ANALYSIS
Claim 56 is directed to "[a] system, comprising:
circuitry for selecting one or more computable epitopes;
circuitry for predicting at least one pattern change ... ;
circuitry for associating the at least one pattern change ... ;
circuitry for designating a course of action ... ; and
circuitry for communicati[ng] the course of action .... "
Appellants' failure to use the word "means" in each "circuitry for"
limitation creates a rebuttable presumption that the inventor did not intend
this claim limitation to be governed by§ 112, sixth paragraph. Personalized
23
Appeal2012-008962
Application 11/046,658
Media, 161 F.3d at 703-704. However, this presumption may be overcome
if one or more of the "circuitry for" limitations "recites 'function without
reciting sufficient structure for perfonning that function'." /!Villiamson, 792
F.3d at 1348 (quoting ~Vatts, 232 F.3d at 880).
We conclude that the presumption against invoking § 112, sixth
paragraph has been overcome, and thus§ 112, sixth paragraph does apply,
because the claimed circuitry limitations recite specific functions without
reciting sufficient structure for performing those functions. In particular, we
note that the Specification recites that the circuitry "can be virtually any
combination of hardware, software, and/ or firmware configured to effect"
the claimed functions, and that "designing the circuitry and/or writing the
code for the software and[/] or firmware" is within the skilled of the ordinary
skilled artisan (see FFs 14 and 15). The Specification also describes that
when the instructions are loaded onto a general purpose computer, the
instructions may transform the general purpose computer into a "special-
purpose computer" by "creating electrical paths within the device" (FF 20).
The Specification also states that "standard engineering practices" may be
used to integrate such devices into data processing systems which are
"implemented utilizing any suitable commercially available components"
(FF 17).
However, the Specification fails to provide instructions on how the
claimed circuitry, which could be part of a general purpose computer, is
actually capable of performing the claimed functions. Despite providing
several general references to "instructions" for carrying out the claimed
functions (Spec. 4, 7-8, FFs 19-21 ), the Specification is silent regarding the
24
Appeal2012-008962
Application 11/046,658
algorithm, or sequence of steps, specifying precisely how to carry out the
various claimed functions of the circuitry. Rather, the Specification simply
recites the claimed functions and provides no guidance about how the
claimed circuitry ensures that those functions are performed. See Advanced
Ground h?fb. S)'s. v. Life360, 2016 \VL 4039771, at *6 (Fed. Cir. July 28,
2016) CA patentee cannot claim a means for performing a specific function
and subsequently disclose a 'general purpose computer as the structure
designed to perform that function' because this 'amounts to purely
functional claiming."' (quotingAritocrat, 521 F.3d at 1333)).
CONCLUSION OF LAW
Accordingly, we conclude that Appellants have not disclosed
sufficient structure for performing the functions recited in independent
claim 56. Thus, claim 56 is indefinite under 35 U.S.C. § 112, second
paragraph as to the functional aspects of the recited "circuitry." Dependent
claims 66-72 are likewise indefinite under 35 U.S.C. § 112, second
paragraph in view of their dependence from claim 94.
25
Appeal2012-008962
Application 11/046,658
TIME PERIOD FOR RESPONSE
Regarding the affirmed rejection(s), 37 CPR§ 41.52(a)(l) provides
that "Appellant may file a single request for rehearing within two months
from the date of the original decision of the Board."
In addition to affirming the examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37 CPR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21(September7, 2004)). 37 CPR
§ 41.50(b) provides: "A new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review."
37 CPR§ 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the Examiner, in which
event the proceeding will be remanded to the Examiner. ...
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
Should the Appellants elect to prosecute further before the Examiner
pursuant to 3 7 CPR § 41. 50(b )( 1 ), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
26
Appeal2012-008962
Application 11/046,658
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellants elect prosecution before the Examiner and this does
not result in allowance of the application, abandonment, or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
AFFIRMED-IN-PART; 37 C.F.R. §41.50(b)
27