Ex Parte Iyengar et al

Patent Trial and Appeal Board

Aug 16, 2017

12882761 (P.T.A.B. Aug. 16, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/882,761 09/15/2010 Sridhar Iyengar AGAM.P-060 3542
57381 7590 08/16/2017
Larson & Anderson, LLC
P.O. BOX 4928
DILLON, CO 80435
EXAMINER
JANG, CHRISTIAN YONGKYUN
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
08/16/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SRIDHAR IYENGAR and IAN HARDING
____________________

Appeal 2015-006229
Application 12/882,761
Technology Center 3700
____________________

Before BRANDON J. WARNER, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.

DOUGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1–22 under 35 U.S.C. § 101. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was held on August 7, 2017.
We reverse.

Appeal 2015-006229
Application 12/882,761

2
CLAIMED SUBJECT MATTER
The claims are directed to methods related to an implantable biosensor
system. Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for determination of the thickness of a polymer layer
in an implantable biosensor comprising an electrode and the
polymer layer, wherein the polymer layer contains an enzyme,
said method comprising the steps of:
(a) placing the biosensor in contact with a solution;
(b) applying a potential (V) to the biosensor sufficient to
oxidize or reduce a redox active species in the solution and
generate a current,
(c) switching off the applied potential and observing
subsequent decay of potential to obtain a plurality of V versus
time (t) data points, and
(d) determining the slope (k) of a plot of V versus l/√t,
wherein the slope (k) provides an indication of the thickness of
the polymer layer.

OPINION
The Examiner rejects claims 1–22 under 35 U.S.C. § 101 as being
“directed to the abstract idea of a mathematical relationship or formula.”
Final Act. 2. The Examiner, without providing further analysis, determines
that “all claim elements both individually and in combination, do not amount
to significantly more than an abstract idea.” Id.
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). Under that framework, we first “determine whether the claims at
Appeal 2015-006229
Application 12/882,761

3
issue are directed to one of those patent-ineligible concepts”—i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. (citing Mayo, 132
S. Ct. at 1296–97).
The Federal Circuit has instructed that “[t]he ‘directed to’ inquiry . . .
[does not] simply ask whether the claims involve a patent-ineligible concept,
because essentially every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural phenomenon.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). The
Courts continues: “the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Id. (citing
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015).
It is only after the claims have been determined to be “directed to” a
patent-ineligible concept that we secondly “consider the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S.
Ct. at 1298, 1297).
Under the first step of the Alice framework, the Examiner determines
that the claims are directed to an abstract idea because “the calculation of a
slope is clearly a mathematical determination using mathematical
relationships and/or formulas.” Ans. 2.
However, though both independent claims 1 and 11 include the step of
“determining the slope,” the Examiner has not sufficiently shown that the
claims are directed to an abstract idea.
Appeal 2015-006229
Application 12/882,761

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Appellants argue that the claims “provide a method for determining
the thickness of a polymer layer in an implantable biosensor and determine
the amount of analyte in a sample using a biosensor,” which are “real-world
functions . . . tied to biosensors.” Appeal Br. 3. Further, Appellants note
that the “claims result in a change in a redox active species (either being
oxidized or reduced by applying a potential to a biosensor).” Id.
We determine that the claims here are directed to an improvement in
functionality of a biosensor—specifically, determination of the thickness of
an enzyme-containing polymer layer therein, for which determining the
slope is only one applied part thereof. Thus, we agree with Appellants that
the claims “are directed to processes that recite[] meaningful limitations that
limit the practical applications of the claimed processes,” which “do not seek
to tie up [a] judicial exception.” Id. at 4.
For these reasons, we do not sustain the Examiner’s rejection.

DECISION
The Examiner’s rejection of claims 1–22 is reversed.

REVERSED