Ex Parte Neuvonen et al

Patent Trial and Appeal Board

Mar 19, 2018

13622317 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/622,317 09/18/2012
24280 7590 03/21/2018
CHOATE, HALL & STEWARTLLP
TWO INTERN A TI ON AL PLACE
BOSTON, MA 02110
FIRST NAMED INVENTOR
Teppo Neuvonen
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.
2010467-0025 PRK-014US 1045
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
patentdocket@choate.com
jnease@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TEPPO NEUVONEN, SAMI RANT ALA, GRANT GAILLARD,
and CURT PAULETTE
(Applicants: Wallac OY and PerkinElmer Health Sciences, Inc.)
Appeal2017-000018
Application 13/622,317 1
Technology Center 3600
Before JUSTIN BUSCH, MATTHEW R. CLEMENTS,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6-18, 22-24, and 27--41. Claims 5, 19-21,
25, 26, and 42-70 are cancelled. (Final Act. 2.) We have jurisdiction over
the pending rejected claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify PerkinElmer Health Sciences, Inc. and Wallac OY as
the real parties in interest. (App. Br. 2.)
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Application 13/622,317
THE INVENTION
Appellants' disclosed and claimed invention is directed to storing and
transferring patient information related to biological sample testing using
biological sample cards and short range communications. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject matter
on appeal:
1. A biological sample card comprising:
one or more collection regions, each configured to stably
contain a biological sample; and
a transmission and storage device comprising:
an antenna configured for short range
communication, and
a computer-readable medium,
wherein the transmission and storage device is
configured to:
receive patient data transmitted to the antenna,
store the patient data in the computer-readable
medium, and
transmit the patient data via the antenna responsive
to a query signal.
REJECTIONS
The Examiner rejected claims 1--4, 6-18, 22-24, and 27--41 under
35 U.S.C. § 101 as being directed to ineligible subject matter. (Final Act. 3-
4.)
The Examiner rejected claims 1--4, 6, 11, and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Morrison (US 2004/0126281 Al, pub.
July 1, 2004), Conry et al. (US 2006/0074713 Al, pub. Apr. 6, 2006), and
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Applicant Admitted Prior Art (as evidenced by Niemiec et al. (US
2008/0103827 Al, pub. May 1, 2008)). (Final Act. 5-10.)
The Examiner rejected claims 13, 14, 16, 17, 22-24, 27, 31-35, and
38--41 under 35 U.S.C. § 103(a) as being unpatentable over Conry,
Morrison, and Applicant Admitted Prior Art. (Final Act. 10-24.)2
The Examiner rejected claims 7-10 and 28-30 under 35 U.S.C.
§ 103(a) as being unpatentable over Morrison, Conry, Applicant Admitted
Prior Art, and Penuela et al. (US 2004/0113421 Al, pub. June 17, 2004).
(Final Act. 24--30.)
The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Morrison, Conry, Applicant Admitted Prior Art, and
Gucciardi et al. (US 2009/0248437 Al, pub. Oct. 1, 2009). (Final Act. 30-
31.)
The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as being
unpatentable over Morrison, Conry, Applicant Admitted Prior Art, and Finn
(US 2006/0219776 Al, pub. Oct. 5, 2006). (Final Act. 31-32.)
The Examiner rejected claims 36 and 37 under 35 U.S.C. § 103(a) as
being unpatentable over Morrison, Conry, Applicant Admitted Prior Art, and
Cunningham (US 2003/0170143 Al, pub. Sept. I I, 2003). (Final Act. 33-
34.)
2 Although claims 3 8--41 are not listed in the heading of the section dealing
with this rejection, those claims are rejected in the body of the section.
(Final Act. 22-24.)
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ISSUES ON APPEAL
Appellants' arguments in the Appeal Brief present the following
dispositive issues: 3
Issue One: Whether claims 1--4, 6-18, 22-24, and 27--41 are directed
to ineligible subject matter. (App. Br. 7-15.)
Issue Two: Whether the Examiner erred in finding the combination of
Morrison, Conry, and the Applicant Admitted Prior Art teaches or suggests
the limitations of independent claims 1, 13, and 31. (App. Br. 15-21.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. We disagree with Appellants'
arguments, and we adopt as our own ( 1) the pertinent findings and reasons
set forth by the Examiner in the Action from which this appeal is taken
(Final Act. 3-34) and (2) the corresponding findings and reasons set forth by
the Examiner in the Examiner's Answer in response to Appellants' Appeal
Brief. (Ans. 4--19.) We concur with the applicable conclusions reached by
the Examiner, and emphasize the following.
Issue One
The Examiner concludes the pending claims are patent-ineligible
under 35 U.S.C. § 101:
3 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Jan. 11, 2016) (herein, "App.
Br."); the Reply Brief (filed Sept. 22, 2016) (herein, "Reply Br."); the Final
Office Action (mailed Mar. 18, 2015) (herein, "Final Act."); and the
Examiner's Answer (mailed July 22, 2016) (herein, "Ans.") for the
respective details.
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[The claims] are directed to the abstract idea of storing patient
information, which are/is method of organizing human activity
(i.e., the fundamental human activity of storing information).
This is analogous to using categories to organize, store, and
transmit information which has been held to constitute an
abstract idea.
(Final Act. 3.) In addition, the Examiner concludes:
The claim( s) does/ do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because receiving and transmitting data does not add
meaningful limitations to the abstract idea because they would
be routine in any computer implementation (they constitute
extra-solution activity).
(Final Act. 3--4.)
Appellants argue the Examiner incorrectly describes the subject
matter of the claims, and that, when correctly characterized, the claims do
not fall under the various statutory exceptions recognized by the authorities:
Contrary to the Examiner's position, each of claims ... recites
various physical structural limitations including "a biological
sample card" ....
There is a significant difference between, among other things, (1)
using a biological sample card to contain a biological sample,
and (2) receiving and/or transmitting patient data, as disclosed in
the present claims, and the abstract ideas described [in case law],
for example, of"comparing data that can be done mentally." (See
July 2015 Update: Subject Matter Eligibility, page 3.) That is,
using a biological sample card to contain a biological sample and
transmitting/receiving patient data is not in any way analogous
to the abstract ideas of merely organizing, storing, and
transmitting information, as alleged in the Office Action.
(App. Br. 7, 12.) In elaboration, Appellants cite the benefits of the claimed
subject matter: "improv[ing] the efficiency of obtaining biological samples
and conducting tests on the samples, and also improving the reliability of the
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samples and tests." (App. Br. 12) Appellants further argue "the subject
matter of the claims does not seek to tie up a judicial exception and,
therefore, does not preempt others from using a judicial exception." (App.
Br. 13.)
Appellants also argue the claims recite significantly more than an
abstract idea - relying on specific dependent claim limitations such as
encryption of data, physical characteristics of the claimed sample collection
regions and other sample card characteristics, use of bar codes and RFID or
NFC tags, and use of a processor to determine punching patterns and data
handling. (App. Br. 13-14.)
We are not persuaded by Appellants' arguments. We adopt the
Examiner's findings and conclusions provided in the Final Office Action
and Answer. (Final Act. 3--4; Ans. 6-14.) The Supreme Court has long held
that "[l]aws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.Ct. 2347, 2354
(2014) (quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc.,
133 S.Ct. 2107, 2116 (2013)). The "abstract ideas" category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S.Ct. at 2354--55 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
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of the claims "individually and 'as an ordered combination"' to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to "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. (quoting Mayo, 566 U.S. at 73.) The
prohibition against patenting an abstract idea "'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity."' Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010) (internal citation omitted.)
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants' claims are reasonably characterized as directed to
an abstract idea of the "receipt, storage, and transmission of patient data."
(Ans. 6.) The fact that this idea is used in connection with a biological
sample card is an example of the use of the abstract idea in a particular
technological environment, which does not circumvent the prohibition of
patenting an abstract idea. Moreover, the use of bar codes and RFID or NFC
tags to track the sample cards is itself an example of the common business
practice of tracking inventory by these well-established means, and does not
alter the conclusion that the claims are directed to an abstract idea.
There is no definitive rule to determine what constitutes an "abstract
idea." Rather, the Federal Circuit has explained that "both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous
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cases." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir.
2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) (explaining that, in determining whether claims are
patent-eligible under § 101, "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided").
The Federal Circuit also noted that "examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is similar to
concepts previously found abstract by the courts." Amdocs, 841 F.3d at
1294 n.2 (internal citation omitted.)
Here, the claims are similar to the claims that the Federal Circuit
determined are patent ineligible in Electric Power Group, LLC v. Alstom S.
A., 830 F.3d at 1353-54 (collecting information and "analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, [are] essentially mental processes within the abstract-idea
category"). The Federal Circuit has also held similar data manipulation
claims to be directed to patent-ineligible abstract ideas -see Digitech
Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014) (employing mathematical algorithms to manipulate existing
information); OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) (offer-based price optimization); Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
2015) (tailoring information presented to a user based on particular
information); Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating tasks in an insurance
organization); and Versata Dev. Grp. v. SAP Am., 793 F.3d 1306, 1333-34
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(Fed. Cir. 2015) (price-determination method involving arranging
organizational and product group hierarchies).
Appellants' argument that the claims do not preempt all methods of
using biological sample cards do not make them any less abstract. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(collecting cases); Accenture, 728 F.3d at 1345; Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility").
Turning to the second step of the Alice inquiry, we find nothing in the
claims that adds anything "significantly more" to transform the abstract idea
of the receipt, storage, and transmission of patient data. Alice, 134 S. Ct. at
2357. Beyond that abstract idea, the claims merely recite "'well-understood,
routine, conventional activit[ies ], "' such as tracking objects using bar codes
and radio-frequency tags, encryption of data, and using a processor to
determine punching patterns (the latter as established by the Cunningham
reference at Paragraph 91 ). Alice, 134 S. Ct. at 2359 (quoting Mayo, 566
U.S. at 73). Considered individually or taken together as an ordered
combination, the claim elements fail "to 'transform' the claimed abstract
idea into a patent-eligible application." Id. at 2357 (quoting Mayo, 566 U.S.
at 72-73, 78).
Because Appellants' claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's 35 U.S.C. § 101
rejection of the pending claims.
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Issue Two
In rejecting the independent claims, the Examiner relies on the
disclosure in Morrison of a storage container for a biological sample in
which the container includes a sliding platform with a bar code identification
and the ability to hold a filter paper card containing a biological sample,
where the platform can be enclosed and locked into the container, and the
container can include an RFID tag and memory for storing and transmitting
sample identification data. (Final Act. 5-6; Morrison Abstract, Fig. 1,
i-fi-125-26, 32.) The Examiner also relies on the disclosure in Conry of an
RFID device located on a patient card used to receive, store and transmit
patient data. (Final Act. 6-7; Conry i-fi-f 11, 28, 36.)
Appellants argue that the separate container and platform cannot
correspond to the claimed biological sample card, because that combination
would "eliminate the advantages of the claimed invention ... which include
maintaining together (1) the data stored on the transmission and storage
device of the biological sample card, with (2) the biological samples
contained in the one or more collection regions." (App. Br. 18-19.)
However, we agree with the Examiner, that the combination teaches, or at
least suggests, the claimed biological sample card, given that the platform is
completely enclosed, and can be locked, into the container, thus forming an
integral whole akin to a sample card, and given that the Specification does
not provide a definition of "biological sample card." (Ans. 14--16.)
Appellants also argue the container/platform combination of Morrison
does not receive, store, or transmit patient data, and Conry does not disclose
a biological sample card. (App. Br. 19-20.) This argument is unpersuasive
because it focuses on the references individually, whereas the Examiner's
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rejection is based on the teachings of the combination of references. Non-
obviousness cannot be established by attacking references individually
where, as here, the ground of unpatentability is based upon the teachings of a
combination of references. In re Merck & Co., Inc., 800 F .2d 1091, 1097
(Fed. Cir. 1986). Rather, the test for obviousness is whether the
combination of references, taken as a whole, would have suggested the
patentee's invention to a person having ordinary skill in the art. In re Keller,
642 F.2d 413, 425 (CCPA 1981).
Accordingly, we sustain the Examiner's rejections of independent
claims 1, 13, and 3 1.
CONCLUSION
For the reasons stated above, we sustain the Examiner's rejection of
claims 1--4, 6-18, 22-24, and 27--41 as being directed to patent-ineligible
subject matter under § 101.
Also for the reasons stated above, we sustain the Examiner's
obviousness rejections of independent claims 1, 13, and 31 over Morrison,
Conry, and the Applicant Admitted Prior Art.
We also sustain the obviousness rejection of claims 2--4, 6, 11, 12, 14,
16, 17, 22-24, 27, 32-35, and 38--41 over Morrison, Conry, and the
Applicant Admitted Prior Art, of claims 7-10 and 28-30 over Morrison,
Conry, Applicant Admitted Prior Art, and Penuela, of claim 14 over
Morrison, Conry, Applicant Admitted Prior Art, and Gucciardi, of claim 18
over Morrison, Conry, Applicant Admitted Prior Art, and Finn, and of
claims 36 and 37 over Morrison, Conry, Applicant Admitted Prior Art, and
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Cunningham, which rejections are not argued separately with particularity.
(App. Br. 20-21.)
DECISION
We affirm the Examiner's decision rejecting claims 1--4, 6-18, 22-24,
and 27--41.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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