Ex Parte Manri et al

Patent Trial and Appeal Board

Feb 6, 2018

13641881 (P.T.A.B. Feb. 6, 2018)

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.
13/641,881 10/18/2012 Chihiro Manri 072388.0846 8085
21003 7590 02/08/2018
RAKFR ROTTST T P
EXAMINER
30 ROCKEFELLER PLAZA LIN, JERRY
44TH FLOOR
NEW YORK, NY 10112-4498 ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
02/08/2018 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):
DLNYDOCKET@BAKERBOTTS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIHIRO MANRI, SATOSHI MITSUYAMA,
TOMONORI MIMURA, and KUMIKO KAMIHARA1
Appeal 2016-003698
Application 13/641,881
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
appellants state that the real party-in-interest is Hitachi High-Technologies
Corporation. App. Br. 1.
Appeal 2016-003698
Application 13/641,881
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—14 as unpatentable under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CFAIMED INVENTION
Appellants’ invention is directed to a technique for automatically
determining or predicting a line range specific to a sample that appears in a
reaction curve in an automated analyzer for mixing a specimen and a reagent
and measuring a change in a mixture of the specimen and the reagent with
time. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. An automated analyzer for mixing a specimen and
a reagent and measuring a change in a mixture of the specimen
and the reagent with time, comprising:
an absorption detection mechanism configured to detect
degrees of absorption related to mixing of the specimen and the
reagent and to output a reaction curve of the specimen and the
reagent based on the detected degrees of absorption;
a measurement point data acquisition unit which acquires
a plurality of measurement point data from the reaction curve of
the specimen and the reagent;
a data processing unit which processes the measurement
point data;
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Application 13/641,881
a storage unit which stores a first approximation formula
used by the data processing unit; and
an output unit which outputs a processing result from the
data processing unit, wherein the data processing unit causes the
first approximation formula stored in the storage unit, which
approaches a straight line to approximate the plurality of
measurement point data, calculates a straight line which is
approached by a second approximation formula that is obtained
as a result of the approximation, sets a time when a difference
between the straight line and the second approximation formula
falls below a reference value or a difference between a slope of
the straight line and a slope of the second approximation formula
falls below a reference value as a start time of line, and
determines a line range of the reaction curve.
App. Br. 26.
ISSUES AND ANALYSES
We adopt the Examiner’s findings of fact and conclusion that the
appealed claims are directed to non-statutory subject matter. We address the
arguments raised by Appellants below.
Issue
Appellants argue that the Examiner erred because claim 1 is directed
to a tangible structure, i.e., an automated analyzer for mixing a specimen and
a reagent and measuring a change in a mixture of the specimen and the
reagent with time to determine a line range of the reaction curve and,
therefore, is not directed to an abstract idea. App. Br. 11.
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Appeal 2016-003698
Application 13/641,881
Analysis
The Examiner finds that claim 1 is directed to the abstract idea of
analyzing a change in a mixture of a specimen and a reagent using
computational means. Final Act. 2. The Examiner finds that the additional
elements or combination of elements in the claims, other than the abstract
idea, amounts to no more than recitation of a generic computer structure that
serves to perform generic computer functions that are well understood,
routine, and conventional activities previously known to the pertinent
industry. Id. at 2—3. The Examiner further finds that claim 1 includes
acquiring data, which the Examiner finds constitutes only data gathering
steps. Id. at 3. The Examiner concludes that, viewed as a whole, the
additional claim elements do not provide meaningful limitations to transform
the abstract idea into a patent-eligible application of the abstract idea such
that the claims amount to significantly more than the abstract idea itself. Id.
Appellants argue that their claimed invention is not directed to an
abstract idea such as a “fundamental economic practice” or a “longstanding
commercial practice.” App. Br. 11 (citing ideas. Alice Corp. v. CLS Bank
Inti, 134 S.Ct. 2347, 2354 (2014); Bilski v. Kappos, 561 U.S. 593, 599
(2010)). Nor is it directed to, Appellants argue, “[a]n idea of itself,” nor a
mathematical relationship/formula. Id. (citing Gottschalk v. Benson, 409
U.S. 63, 64-67 (1972); Parker v. Flook, 437 U.S. 584, 594-595 (1978)).
Rather, Appellants argue, claim 1 is directed only partially to what could be
argued to be an abstract concept, which is insufficient to render an invention
patent ineligible. Id. at 12.
We do not agree. Appellants’ claim 1 recites a device (i.e., an
automated analyzer) and is therefore directed, at least nominally, to a
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Application 13/641,881
category of patentable subject matter. See 35 U.S.C. § 101. However,
Appellants’ claim 1 recites, as part of the claimed invention:
[Wjherein the data processing unit causes the first approximation
formula stored in the storage unit, which approaches a straight
line to approximate the plurality of measurement point data,
calculates a straight line which is approached by a second
approximation formula that is obtained as a result of the
approximation, sets a time when a difference between the straight
line and the second approximation formula falls below a
reference value or a difference between a slope of the straight
line and a slope of the second approximation formula falls below
a reference value as a start time of line, and determines a line
range of the reaction curve.
Claim 1, then, is directed to calculating the data acquired by the
automated analyzer in the preceding steps in accordance with certain
algorithms stored in the data processing unit. As such, claim 1 is directed, at
least in part, to the processing of input data to achieve a certain output of
data, i.e., to an abstract idea, and is therefore directed, in part, to one of the
judicially-created exceptions to Section 101. See Mayo Collaborative
Serves, v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (“Phenomena of
nature, ... mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work”
(quoting Gottschalk, 409 U.S. at 67)). Further, “simply implementing a
mathematical principle on a physical machine, namely a[n autoanalyzer, is]
not a patentable application of that principle.” Id. 566 U.S. at 84.
Having determined that claim 1, considered as a whole, is directed in
part to a judicial exception to Section 101, we then analyze the claim to see
whether the elements of claim 1, both individually and “as an ordered
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Application 13/641,881
combination,” “transform the nature of the claim” into a patent-eligible
application. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1375 (2015) (quoting Mayo, 566 U.S. at 79. The Supreme Court has
described the second step of this analysis as a search for an “inventive
concept”—i.e., an element or combination of elements that is “sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.” Id.
We conclude that the remaining limitations of claim 1 do not add
significantly more than the recited abstract idea so as to render the claim
directed to patent-eligible subject matter. The remaining limitations of claim
1 recite: (1) an absorption detection mechanism configured to detect degrees
of absorption related to mixing of the specimen and the reagent and to output
a reaction curve of the specimen and the reagent based on the detected
degrees of absorption; (2) a measurement point data acquisition unit which
acquires a plurality of measurement point data from the reaction curve of the
specimen and the reagent; and (3) a data processing unit which processes the
measurement point data; and (4) a storage unit which stores a first
approximation formula used by the data processing unit. Each of these
limitations relates to, at best, the collection, manipulation, and display of
data, which are abstract processes. Intellectual Ventures ILLC v. Capital
One Financial Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see Digitech
Image Techs., LLCv. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014).
Appellants do not argue that their “automated analyzer” recited in the
preamble to claim 1 and depicted in Figure 3 is a novel invention; indeed,
such automated analyzers have been well known in the art for decades.
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Appellants’ Specification admits that it is the processing and storing steps of
the claim that constitute the allegedly novel portion of the invention. See,
e.g., Spec. 125 (“The present invention also includes an invention obtained
by combining a known technology [i.e., an automated analyzer unit] with the
system configuration and processing operation”) (emphasis added).
Furthermore, the Specification discloses that the recited “data
processing unit” and “storage unit” can be no more than a generic personal
computer (“PC”). See, e.g., Spec. 1 64 (“For example, the processing in
Figure 1 can also be executed as a software process to be executed in the
computer (PC) 10. Additionally, an internal storage device of the computer
(PC) 10 can be used as the storage device 12”); see also Spec. Fig. 3. An
instruction to apply an abstract idea using an unspecified, generic computer
is not enough to transform an abstract idea into a patent-eligible invention.
Alice, 134 S.Ct. at 2351.
We consequently conclude that the additional limitations of claim 1
do no more than involve “well-understood, routine, conventional activity
previously engaged in by researchers in the field” that do not contain an
“inventive concept,” sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the abstract idea itself. See Mayo,
566 U.S. at 72—73. We also note that the abstract idea does not directly
improve the operation of the conventional portions of the apparatus because
“the focus of the claims is not on such an improvement in computers as
tools, but on certain independently abstract ideas that use computers as
tools.” Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016). We consequently affirm the Examiner’s rejection of claim
1.
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Application 13/641,881
Appellants rely upon the same arguments with respect to dependent
claims 2—13. App. Br. 15—16. These claims all recite limitations that
narrow and refine the last calculation step of claim 1. For the same reason,
therefore, we affirm the Examiner’s rejection of these claims.
Appellants argue claim 14 separately. App. Br. 12. Claim 14 is
directed to “a method of using an automated analyzer for detecting a mixture
of a specimen and a reagent and measuring a change in that mixture of the
specimen and the reagent with time to determine a line range of the reaction
curve.” Id. at 13. For the same reasons we have explained supra, we
conclude that the limitations of claim 14 do not amount to “significantly
more” than the abstract concept of manipulating the collected data to achieve
a calculated result. We therefore affirm the Examiner’s rejection of claim
14.
DECISION
The Examiner’s rejection of claims claims 1—14 as unpatentable under
35U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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