Ex Parte Kelkar et al

Board of Patent Appeals and Interferences

Sep 24, 2010

10629448 (B.P.A.I. Sep. 24, 2010)

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.
10/629,448 07/29/2003 Bhooshan Prafulla Kelkar CHA9 2003 003 US1 5732
63166 7590 09/24/2010
KARL O. HESSE
13324 MAYES ROAD
HUNTERSVILLE, NC 28078
EXAMINER
CLOW, LORI A
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
09/24/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BHOOSHAN PRAFULLA KELKAR,
TANVEER F. SYEDA-MAHMOOD and GREGOR M. MEYER
____________

Appeal 2009-004635
Application 10/629,448
Technology Center 1600
____________

Before ALLEN R. MacDONALD, Vice Chief Administrative Patent Judge,
ERIC GRIMES, and DONALD E. ADAMS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1

This appeal under 35 U.S.C. § 134 involves claims 1-6, 10-16, and 20,
the only claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/629,448

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STATEMENT OF THE CASE
The claims are directed to a method for determining similarity
between portions of gene expression profiles or genes (claims 1-6 and 20)
and a program product having computer readable code stored on a
recordable media for determining similarity between portions of gene
expression profiles or genes (claims 10-16). Claim 1 is illustrative and is
reproduced in Appellants’ Appendix of “Claims Involved in this Appeal”
(App. Br. 32).
Claims 1-6, 10-16, and 20 stand rejected under 35 U.S.C. § 101, as
being directed to non-statutory subject matter.
We affirm. However, because our rationale expands on the rationale
set forth by the Examiner, we designate the affirmance a new ground of
rejection.
ISSUE
Does the claimed method for determining similarity between portions
of gene expression profiles define statutory subject matter?
FINDINGS OF FACT
FF 1. The method of Appellants’ claim 1 is performed “in a computer”
(Claim 1).
FF 2. Appellants’ Specification discloses that in addition to a typical
computer architecture, “[t]he present invention may also be used in any
digital computer architectures, including personal, minicomputer and
mainframe computer environments, and in local area and wide area
computer networks” (Spec. 6: 4-7).
FF 3. The method of Appellants’ claim 1 “does not transform any physical
object or article” (Ans. 4 (emphasis removed)).
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FF 4. Appellants’ Specification discloses that a
[P]referred embodiment uses a time and intensity-invariant
correlation function such as that described by R. Agrawal. . . .
Specifically, we employ the similar sequence algorithm
embodiment of the above described correlation function in
Intelligent Miner for Data . . . which was designed for business
intelligence, against time varying gene expression data.

(Spec. 5: 8-18).
PRINCIPLES OF LAW
The machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101. See Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010).
“The machine-or-transformation test is a two-branched inquiry; an applicant
may show that a process claim satisfies § 101 either by showing that his
claim is tied to a particular machine, or by showing that his claim transforms
an article.” In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008) (en banc).
The machine-or-transformation test is not, however, the sole test for
deciding whether an invention is a patent-eligible process. Bilski, 130 S.Ct
at 3227. An inquiry into whether a process is merely an abstract idea
provides a useful tool in determining subject matter eligibility under 35
U.S.C. § 101. Id. at 3229. In this regard, the Bilski Court directed attention
to Parker v. Flook, 437 U.S. 584 (1978). See Bilski, 130 S.Ct. at 3230. The
Bilski Court found that in Flook, the appellant “attempted to patent a
procedure for monitoring the conditions during the catalytic conversion
process in the petrochemical and oil-refining industries. The application’s
only innovation was reliance on a mathematical algorithm.” Id. “Flook
stands for the proposition that the prohibition against patenting abstract ideas
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Application 10/629,448

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‘cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment’ or adding ‘insignificant postsolution
activity.’” Id. (quoting Diamond v. Diehr, 450 U.S. 175, 191-192 (1981)).
When the broadest reasonable interpretation of a claim covers a signal
per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-
statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed.
Cir. 2007) (transitory embodiments are not directed to statutory subject
matter). See also, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
ANALYSIS
While Appellants contend that claim 10 is representative (App. Br.
23), we find that Appellants’ arguments emphasize their process (see, e.g.,
App. Br. 29). Accordingly, we find claim 1 representative. 37 C.F.R.
§ 41.37(c)(1)(vii).
The method of claim 1 is not limited to a particular machine (FF 1-2).
At best, the preamble identifies the environment in which the method is
performed and represents nothing more than a field-of-use limitation that is
insufficient to render the otherwise ineligible process of claim 1 patent-
eligible. See Diehr, 450 U.S. at 191. Accordingly, claim 1 fails to meet the
machine prong of the machine-or-transformation test.
The method of claim 1 compares a number of gene expression
profiles, lists gene expression profile pairs in clusters, and provides an
output of the listing of clusters of gene expression profiles (see Claim 1).
The claimed method does not transform a particular article into a different
state or thing (FF 3). Accordingly, claim 1 fails the transformation prong of
the machine-or-transformation test.
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A finding that claim 1 fails to meet either prong of the machine-or-
transformation test is not the endpoint for our inquiry under 35 U.S.C. § 101.
We must also analyze claim 1 under the Supreme Court’s precedents on the
unpatentability of abstract ideas.
Claim 1 applies the mathematical manipulation of data to determine
the similarity between portions of gene expression profiles (see FF 4). Here,
as in Flook, “[t]he application’s only innovation . . . [is its] reliance on a
mathematical algorithm.” Bilski, 130 S.Ct. at 3230. We therefore conclude
that claim 1 is directed to an abstract idea – the mathematical algorithm – as
applied to a defined type of data. “[T]he prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’.” Id. Accordingly, we
are not persuaded by Appellants’ contention that the process of claim 1 “is
limited to a particular practical application” and “does not convert or process
just any data but is limited to useful concrete and non-abstract gene
expression profiles in a data base of such profiles” (App. Br. 29.
We are not persuaded by Appellants’ contentions regarding U.S .
Patents 6,406,853 and 6,436,642 (App. Br. 30). Each case must be decided
on its own merits. See, e.g., In re Gyurik, 596 F.2d 1012, 1016 (CCPA
1979).
To be complete, we recognize Appellants’ contentions regarding the
phrase “stored on a recordable medium” and “carrier wave storage” (Reply
Br. 6-7). Giving the claims their broadest reasonable interpretation, we find
no error in the Examiner’s conclusion that “the program products stored on a
recordable medium read on carrier wave storage” (Ans. 7). In this regard,
we direct attention to 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
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CONCLUSION OF LAW
The claimed method for determining similarity between portions of
gene expression profiles fails to define statutory subject matter. The
rejection of claim 1 under 35 U.S.C. § 101, as being directed to non-
statutory subject matter is affirmed. Claims 2-6, 10-16, and 20 fall together
with claim 1.
TIME PERIOD FOR RESPONSE
Because our rationale expands on the rationale set forth by the
Examiner, we designate the affirmance as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed.
Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7,
2004)). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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. . . .

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Application 10/629,448

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AFFIRMED; 37 C.F.R. § 41.50(b)

alw

KARL O. HESSE
13324 MAYES ROAD
HUNTERSVILLE, NC 28078