Ex Parte Simons

Patent Trial and Appeal Board

Jan 31, 2018

12663197 (P.T.A.B. Jan. 31, 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.
12/663,197 02/05/2010 Malcolm James Simons 400376-20003 1890
25570 7590 02/02/2018
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
CHUNDURU, SURYAPRABHA
ART UNIT PAPER NUMBER
1637
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
lgallaugher@rmsc2.com
docketing@rmsc2.com
secretaries @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MALCOLM JAMES SIMONS1
Appeal 2016-002684
Application 12/663,197
Technology Center 1600
Before JOHN G. NEW, TIMOTHY G. MAJORS, and DAVID COTTA,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
1 Appellant states that the real party-in-interest is Haplomic Technologies
Pty, Ltd. App. Br. 2.
Appeal 2016-002684
Application 12/663,197
Appellant has filed a Request for Rehearing (hereinafter the
“Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our
Decision of December 15, 2017 (hereinafter the “Decision”).
The Decision reversed the Examiner’s rejections of claims 16, 20, 22,
24, and 25 as unpatentable under 35 U.S.C. § 102(b) over X. Liu et al.,
Preparation of Single Rice Chromosome for Construction of a DNA Library
Using a Laser Microbeam Trap, 109 J. Biotech. 217—26 (2004). Decision
19. However, the Decision affirmed the Examiner’s rejection of claims 16,
20, 22, and 24—27 as unpatentable under 35 U.S.C. § 101 as being directed
to nonstatutory subject matter. Id.
In the Request, Appellant seeks reconsideration of our Decision
affirming the Examiner’s rejection of claims 16, 20, 22, and 24—27 under 35
U.S.C. § 101. Specifically, Appellant argues: (1) the Board incorrectly
determined that claim 16 is directed to one of the judicially-created
exceptions to 35 U.S.C. § 101; (2) the Board failed to address that the
combination of steps recited in the claims is one that was novel and non­
routine in the art of DNA methylation analysis at the priority date of the
present application; (3) the Board did not address that the problem that is
solved by the combination of steps is one rooted in the art of DNA
methylation analysis; and (4) the Board erred in finding that: “‘[t]he mental
step of making a determination of whether two methylated sites are cis or
trans therefore constitutes an abstract idea, another judicially-created
exception to Section 101.” Request 3, 7 (quoting Decision 18). Finally,
Appellant “wish[es] to address the Board’s ‘preemption’ argument.” Id. at
8. We address each of these arguments in turn.
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A. Whether claim 16 is directed to a judicially-created exception to 35
U.S.C. $ 101
Appellant argues that the Board concluded that the claim is directed to
a “phenomenon of nature,” but failed to indicate what that natural
phenomenon is. Request 3. Appellant points to page 12 of the Decision,
which, Appellant contends, explains that the claims recite a method of
isolating and describing the location of methylated sites on DNA isolated
from individual chromosomes and determining whether any two of the
methylated sites are present in cis or tram configurations. Id. According to
Appellant, the Decision further explains that the method describes locations
of methylation sites already present in the DNA and does not require
alteration of the methylation sites of the isolated DNA.2 Id. Appellant
speculates that the Board implied that the claims are somehow directed to
the natural phenomenon of an isolated DNA molecule, but contends that this
2 Appellant also notes in fn. 1 (mislabeled fn. 11) that claim 26 recites a step
of reacting the isolated DNA with bisulfite to convert unmethylated
cytosines to uracil, thus transforming the isolated molecule into another
kind of molecule. Request 3. In the Final Office Action, the Examiner
found that treating the genomic DNA with bisulfite represented routine
conventional activity and that the steps do not significantly transform the
naturally existing methylated bases since bisulfite does not have any effect
on the naturally existing methylated bases. Final Act. 2—3. Appellant, in
the Appeal Brief, argued that “Appellant submits that these more
particularized methods of analysis [i.e., bisulfite treatment] yet further
remove the subject matter claimed in claims 26 and 27 from the realm of
mere “abstract ideas.” App. Br. 15. However, in the briefs below,
Appellant did not make the argument that bisulfite treatment (which
Appellant’s Specification admits is well known in the art) transforms the
molecule by replacing methylated cytosines with uracil. Because
Appellant did not raise this issue in the Appeal, the argument is not
considered in the Request. See 37 C.F.R. § 41.51(a)(1).
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interpretation is not correct; rather, Appellant argues, the claims are directed
to a process for determining the structure of a DNA molecule, not to an
isolated DNA molecule. Id.
We are not persuaded that the Board misapprehended or overlooked
Appellant’s arguments. Reviewing the claims, the Examiner concluded that:
“[T]he claims are directed to determining the presence or absence of one or
more methylated bases on the DNA and determining whether any two
methylated bases are present in cis on the DNA molecule, and, as such, are
directed towards a phenomenon of nature.” Decision 10 (citing Ans. 9).
The Board adopted the Examiner’s conclusion, stating:
Appellant’s claim [16] recites a method of isolating and
describing the location of methylated sites on DNA isolated from
an individual chromosome or chromatid and determining
whether any two of the methylated sites are present in cis, i.e.,
both located on the maternal or paternal chromosome from which
it was isolated. See Spec. 5. As such, Appellant’s claims are
directed to a method of describing the location of methylated
sites that are already present in the chromosomal DNA within the
cell. Appellant’s claims do not, explicitly or inherently, require
any alteration of the methylation sites in the isolated DNA,
merely a description of whether two methylated sites are cis (i.e.,
located on the same chromosome) or trans (located on sister
chromosomes). See Spec. 5. Nor are Appellant’s claims of
detecting methylation sites linked to any particular location on a
particular chromosome, chromatid, or fragment thereof.
Decision 12. Both the Examiner and the Board thus agreed that Appellant’s
claim 16 is directed to determining whether the sites of methylation on a
portion of isolated DNA are cis or trans. Appellant’s claim 16 is not
directed to altering, or in any other way changing, the cis or trans
configuration of the isolated DNA, but is directed rather to detecting the
configuration of methylated sites that are already present in the DNA
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molecule in situ prior to its isolation from the cell. In much the same way,
the general determination of the nucleotide sequence of a naturally-occurring
DNA in situ is a phenomenon of nature. See, e.g., Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1376 (Fed. Cir. 2015). As such, we
conclude again that, because the DNA is methylated in its cis or trans
configuration prior to isolation, and because Appellant’s claims are directed
merely to determining the configuration that exists prior to such isolation,
Appellant’s claims are directed to a naturally-occurring phenomenon, i.e., a
“phenomenon of nature,” and, therefore, to a judicially-created exception to
Section 101.
B. & C. The Board allegedly failed to address that the combination of steps
recited in the claims is novel and non-routine in the art of DNA
methylation analysis and that the problem that is solved by the
combination of steps is one rooted in the art of DNA methylation analysis
Appellant next argues that the Board failed to address Appellant’s
assertion that the combination of isolation of an individual chromosome, or a
part thereof, together with analysis of the methylation pattern of the isolated
chromosome or part thereof, was not “well-understood, routine,
conventional activity” in the field of methylation analysis of genomic DNA
at the time the present application was filed. Request 4. According to
Appellant, the Board reads the claims as a step directed to a natural
phenomenon in isolation from additional steps that recite “well-understood,
routine, conventional activity.” Id. (quoting Decision 16). Appellant
contends that, under the jurisprudence of the Supreme Court and the Federal
Circuit, as well as the Patent Office’s examination guidance and training
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materials, a claim at issue must be reviewed for a combination of elements
that describes an “inventive concept.” Id. at 5.
By way of example, Appellant points to Example 29 of the Life
Science Examples provided in the USPTO’s training materials published in
May 20163 (hereinafter the “Guidance”) which, Appellant argues, presents
facts similar to those of the present appeal. Request 5. Particularly,
Appellant asserts, the fact pattern of (hypothetical) Example 29 postulates
(and similar to the state of the art with respect to isolation of individual
chromosomes), that porcine antibodies had been used in the prior art, but not
for purposes of diagnosing a hypothetical disease. Id. According to
Appellant, the Example’s hypothetical claim 34 is patentable because:
[Significantly, there is no evidence that porcine antibodies were
routinely or conventionally used to detect human proteins such
as JUL-1. Thus, the claim’s recitation of detecting JUL-1 using
a porcine antibody is an unconventional step that is more than a
mere instruction to “apply” the correlation and critical thinking
3 USPTO, Subject Matter Eligibility Examples: Life Sciences, 1—31 (May
2016).
4 Hypothetical claim 3 of the Guidance’ Example 29 recites:
3. A method of diagnosing julitis in a patient, said method
comprising:
a. obtaining a plasma sample from a human patient;
b. detecting whether JUL-1 is present in the plasma sample
by contacting the plasma sample with a porcine anti-
JUL-1 antibody and detecting binding between JUL-1
and the porcine antibody; and
c. diagnosing the patient with julitis when the presence of
JUL-1 in the plasma sample is detected.
Guidance 10.
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step (the exception) using well-understood, routine or
conventional techniques in the field.
Request 5 (quoting Guidance 13).
Similarly, Appellant asserts, in appealed claim 16, the step of
analyzing the isolated chromosome to determine the presence or absence of
one or more methylated bases in the DNA molecule and determining
whether any two methylated bases are present in cis or in trans on the DNA
molecule was not routinely applied to isolated chromosomes at the time the
present application was filed. Request 6. Alternatively, argues Appellant, it
was not routine in the art of DNA methylation analysis to use individual
chromosomes (or chromatids or fragments thereof) as the starting material
for methylation analysis of genomic DNA or, at least, there is no evidence in
the record that would support a conclusion that either combination was
routine in the art. Id.
Appellant repeats the argument presented previously, that the claimed
use of an isolated individual chromosome as the starting material for the
methylation analysis solves a problem systematically embedded in the nature
of methylation analysis at the time the present application was filed.
Request 6. Appellant contends that our reviewing court has held that claims
to inventions that solve a problem central to the art in which they are
practiced can be patent-eligible despite being directed to a judicial
exception. Id. (citing, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1256 (Fed. Cir. 2014)). In so finding, Appellant asserts, the court
indicated that:
These claims stand apart [from claims found ineligible for
patenting] because they do not merely recite the performance of
some business practice known from the pre-Internet world along
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with the requirement to perform it on the Internet. Instead, the
claimed solution is necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of
computer networks.
Id. (quoting DDR, 773 F.3d at 1257). Appellant argues that the court also
relied upon a finding that the claims as a whole described an invention that
was not using the internet in a merely routine or conventional manner;
similarly, Appellant asserts, and as in the Guidance’s Example 29, the court
relied in part on the non-routine nature of the combination of claim
elements. Id.
According to Appellant, the Decision does not give any substantial
rebuttal at all to Appellant’s argument that the claims solve a problem rooted
in the art of genomic DNA methylation analysis and that the claims recite a
technological step that was not routinely applied in the art of genomic DNA
methylation analysis that solves that problem. Request 6. Appellant asserts
that both of these aspects of the present claims have been found in Federal
Circuit decisions to support patent eligibility of claims. Id. Therefore,
Appellant argues, the Board’s alleged failure to consider the combination of
elements in the claims on appeal with whatever abstract ideas or natural
phenomena are recited in the claims, and the combination of the recited steps
that provide a method that is a practical application of those abstract ideas or
natural phenomena that is not conventional or routine in the art at the time
Id. at 6—7.
Appellant’s argument does not persuade us the Board overlooked or
misapprehended relevant points of fact or law in the Decision. As we have
explained, we find that independent claim 16 is directed to a phenomenon of
nature, viz., the state of cis or tram methylation of a DNA molecule as it
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occurs in situ. Having so determined, the second step of our two-step
analysis under Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 566 U.S. 66 (2012), requires that we next consider the elements of the
claims on appeal both individually and “as an ordered combination” to
determine whether additional elements “transform the nature of the claim”
into a patent-eligible application such that the claim limitations amount to
“significantly more” than a patent upon the ineligible concept itself. 566
U.S. at 78, 79.
Claim 16 requires three steps: (1) substantially isolating a DNA
molecule; (2) analyzing the DNA to determine whether any of the DNA
molecule sequence’s sites are methylated; and (3) determining whether the
methylated sites are present in cis on the isolated DNA molecule. The claim
thus expressly embraces any method of analyzing the isolated DNA
molecule for methylation sites.
Claim 25, which depends from claim 16, names some of these
methods, including: “DNA sequencing using bisulfite treatment, restriction
landmark genomic scanning, methylation-sensitive arbitrarily primed PCR,
Southern analysis using a methylation-sensitive restriction enzyme,
methylation-specific PCR, restriction enzyme digestion of PCR products
amplified from bisulfite-converted DNA, and combinations thereof.”
However, Appellant does not argue that any of these methods were not
previously well known in the art as methods of localizing methylated DNA
sites. See Spec. 4 (“In another form of the invention where the step of
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analyzing is performed on DNA, the modification is methylation.5 The
analysis may be implemented using any suitable methodology, however
typically the step of analyzing the one or more sites for the presence or
absence of methylation comprises a method selected from the ... [methods
recited in claim 25]”). In short, Appellant’s claims are directed to
determining, by any means, including means well known in the art, the
naturally-occurring cis or tram position of methylated sites on a sequence of
isolated DNA.
We therefore do not find persuasive Appellant’s arguments that the
limitations of the claims add “significantly more” to the natural phenomenon
of in situ methylated DNA sites, because the claims recite no more than a
mere determination of their location on the isolated DNA sequence by
means well known and conventional in the art.
Appellant points to claim 3 of Guidance Example 29 in support of
their argument. Here too, Appellant’s reliance on Example 29, does not
show that the Board overlooked or misapprehended relevant points of fact or
law in reaching the Decision.6 Claim 3 of the Example is deemed by the
5 Page 3 of the Specification discloses, with respect to the term
“modification,” that the invention is directed to: “[AJnalyzing any one or
more of the paternally- or maternally-derived DNA molecules or
associated proteins for the presence or absence of modifications, wherein
the step of analyzing determines whether any two modifications are present
in cis on one chromosome, or in trans across two sister chromosomes.”
6 The cited Example in the Guidance, although instructive, is not law that is
binding on the Board’s decisions. Nor did the cited Example exist at the
time the Examiner’s rejection on appeal, or when Appellant filed its
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Guidance to be directed to patent-eligible subject matter because it is
directed to a novel discovery beyond the phenomenon of nature to which the
claim is otherwise directed. See Guidance 13 (Claim 3 is directed to a
natural phenomenon). Specifically, the Guidance state that:
[Claim 3] requires detecting using a porcine anti-JUL-1
antibody. Prior to applicant’s invention, and at the time the
application was filed, the use of porcine antibodies in veterinary
therapeutics was known to most scientists in the field. But
significantly, there is no evidence that porcine antibodies were
routinely or conventionally used to detect human proteins such
as JUL-1. Thus, the claim’s recitation of detecting JUL-1 using
a porcine antibody is an unconventional step that is more than a
mere instruction to “apply ” the correlation and critical thinking
step (the exception) using well-understood, routine or
conventional techniques in the field. Whether taken alone or as a
combination with the other additional elements, the recitation of
detecting JUL-1 using a porcine anti-JUL-1 antibody yields a
claim as a whole that amounts to significantly more than the
exception itself.
Id. (emphasis added). As we have noted, Appellant’s claims recite no such
unconventional step for the determination of methylated sites on isolated
DNA but, rather, broadly embrace any method, including, expressly, those
well-known in the art.
To the extent Appellant invokes the Guidance in its Request, claim 2
of Example 29 is more apposite than claim 3 to our analysis. Exemplary
claim 2 recites:
2. A method of diagnosing julitis in a patient, said method
comprising:
relevant briefing on appeal. Appellant referred to the Example for the first
time at oral hearing (see Hr’g Tr. 11 (dated Dec. 13, 2017)).
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Application 12/663,197
a. obtaining a plasma sample from a human patient;
b. detecting whether JUL-1 is present in the plasma
sample by contacting the plasma sample with an anti-
JUL-1 antibody and detecting binding between JUL-1
and the antibody; and
c. diagnosing the patient with julitis when the presence of
JUL-1 in the plasma sample is detected.
Guidance 10. We find exemplary claim 2 is more directly comparable to
Appellant’s claim 16 in that both contain: (1) an isolating/obtaining step; (2)
an analysis step; and (3) a “determining/diagnosing” step.
The Guidance states that claim 2 is directed to patent-ineligible
subject matter because:
Obtaining a sample in order to perform tests is well-understood,
routine and conventional activity for those in the field of
diagnostics. Further, the step is recited at a high level of
generality such that it amounts to insignificant presolution
activity, e.g., a mere data gathering step necessary to use the
correlation. Detecting whether JUL-1 is present in the plasma
sample merely instructs a scientist to use any detection technique
with any generic anti-JUL-1 antibody. When recited at this high
level of generality, there is no meaningful limitation, such as a
particular or unconventional machine or a transformation of a
particular article, in this step that distinguishes it from well-
understood, routine, and conventional data gathering activity
engaged in by scientists prior to applicant’s invention, and at the
time the application was filed, e.g., the routine and conventional
techniques of detecting a protein using an antibody to that
protein.
Guidance 12 (emphasis added). Similarly, and as we have noted supra,
Appellant’s claims are similarly directed to a “high level of generality,”
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using “well-understood, routine, and conventional data gathering activity''’
{id. (emphasis added)) that is well-known in the art.
We are consequently not persuaded by Appellant’s arguments that the
Board failed to consider and address whether the combination of steps
recited in the claims was novel in the art of DNA methylation and whether
the limitations of the claim add “significantly more” than just the claimed
natural phenomenon. For reasons explained, those matters were considered,
yet we concluded that the claim elements alone and in combination failed to
recite “significantly more” such that the added limitations “transform the
nature of the claim” into a patent-eligible application. Mayo, 566 U.S. at 78.
D. The Board allegedly erred in finding that the mental step of making a
determination of whether two methylated sites are cis or trans therefore
constitutes an abstract idea
Appellant argues that the Board also erred in finding that: “[t]he
mental step of making a determination of whether two methylated sites are
cis or trans therefore constitutes an abstract idea, another judicially-created
exception to Section 101....” Request 7 (quoting Decision 18). According
to Appellant, the Board frames this alternatively as the claims requiring a
“correlation step.” Id. (citing Decision 17).
Appellant argues that the binary determination of whether two
methylated sites are in a cis or trans relationship with one another is not
accomplished by a mental step, but is rather performed by the step of
“substantially isolating a DNA molecule from the biological sample,
wherein the DNA molecule is an individual metaphase chromosome or a
chromatid, or a fragment obtained therefrom” recited in claim 16. Request
7. According to Appellant, such isolation is not a mental step, but rather one
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that requires significant activities in “the real world.” Id. Appellant repeats
the argument that it is the claimed isolation step that addresses the problem
in the art that arose from the use of diploid genomic DNA for methylation
analysis that was, at best, a statistical likelihood of the distribution of methyl
groups along a single DNA strand. Id. In contrast, Appellant argues, as a
result of the claimed invention, as a combination of steps that includes
isolation of a maternal DNA strand from a paternal DNA strand, such
ambiguity is resolved to a definitive assignment of the cis and tram
relationships among methylation sites in diploid genome. Id. at 7—8.
We are not persuaded. The Board’s conclusion that claim 16 contains
an abstract “mental step” is not directed to the isolation of the DNA
molecule, which is undeniably a non-abstract, practical procedure. Rather,
the “mental step” of claim 16 is contained within the limitation reciting
“determining whether any two methylated bases are present in cis on the
DNA molecule.” In the Decision, we expressly equated this step to the
Federal Circuit’s holding in In re BRCA1 and BRCA2-Based Hereditary
Cancer Test Patent Litigation, 11A F.3d 755 (Fed. Cir. 2014):
In BRCA, the Federal Circuit held that method claims directed to
the comparison of wild-type genetic sequences with a subject’s
genetic sequence were directed to the patent-ineligible abstract
idea of comparing BRCA sequences and determining the
existence of alterations. BRCA, 774 F.3d at 763. The Federal
Circuit found, in this regard, that:
The methods, directed to identification of
alterations of the gene, require merely comparing
the patient’s gene with the wild type and identifying
any differences that arise. The number of covered
comparisons is unlimited. The covered comparisons
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are not restricted by the purpose of the comparison
or the alteration being detected.
Id. (internal reference omitted).
Decision 17—18 (also citing Association for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589-90 (2013)). Similarly, Appellant’s claims
require, in relevant part, only a mental determination whether “whether any
two methylated bases are present in cis on the DNA molecule.” We are
therefore not persuaded the Board misapprehended or overlooked matters in
concluding that claim 16’s recitation of “determining whether any two
methylated bases are present in cis on the DNA molecule” constitutes a
mental step, and is therefore directed to an abstract idea.
To the extent Appellant raises the Guidance in support of the Request,
here too, claim 2 of Example 29 is instructive. With respect to claim 2 of
Example 29, the Guidance states that: “step c [(i.e., “diagnosing the patient
with julitis when the presence of JUL-1 in the plasma sample is detected”)]
could be performed by a human using mental steps or basic critical thinking,
which are types of activities that have been found by the courts to represent
abstract ideas.” Guidance 12. We similarly concluded that the final step of
Appellant’s independent claim 16 reciting: “determining whether any two
methylated bases are present in cis on the DNA molecule” is likewise
directed to a mental step or basic critical thinking and, therefore, to an
abstract idea. As we expressly stated in the Decision:
In other words, claim 16 is directed to isolating and localizing, by
any and all methods, methylated sites naturally occurring in cellular
DNA and then making a mental assessment as to whether the
localized methylated sites are cis or trans. This latter step require
only a mental comparison step, viz., a comparison of the attained
results, to determine whether two methylated sites are either cis or
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trans. As such, we conclude that this step is directed to a patent-
ineligible abstract idea.
Decision 17. We are consequently not persuaded by Appellant’s arguments
in this respect.
E. The Board’s alleged preemption analysis
Finally, Appellant argues that the Board’s preemption analysis is
already addressed by the two-step analysis developed under the case law and
published by the USPTO. Request 8. Appellant points to the Federal
Circuit’s holding in Ariosa that: “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability.” 788 F.3d at 1379. Appellant argues further that the Board
should reconsider that, if its concern is that future, as yet undiscovered
methods of DNA methylation analysis are foreclosed by claims 16, 20, and
22, claims 24—27 limit the claimed method to use of analytic methods
including the already extant technologies recited in these claims at the time
of filing of the present application, thus avoiding the preemption concerns
set out by the Board. Id. (emphasis added).
We are not persuaded by this argument. Although the scope of
preemption of Appellant’s dependent claims may be narrower than the
preemption created by Appellant’s independent claims — preempting the
natural phenomenon only when well-known assays are employed — that
does not make the claims patent eligible. As explained above, merely
appending conventional or routine steps (e.g., analyzing the DNA sequence
via a routine assay), does not add significantly more to the natural
phenomenon. Moreover, Appellant’s contention simply reinforces that
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claim 16 is much broader, and encompasses observation of the natural
phenomenon through any means of “analyzing” the substantially isolated
DNA molecule. Hence claim 16 risks preempting analysis of the natural
phenomenon with “the already extant technologies,” as well as with
technologies that are presently unknown. We consequently are not
persuaded by Appellant’s arguments urging reversal of the Decision
affirming the Examiner’s rejection under 35 U.S.C. § 101.
CONCLUSION
We have considered the arguments raised by Appellant in the
Request, but find none of these arguments persuasive that our original
Decision was in error. We have addressed Appellant’s arguments with
respect to the claims on appeal, however, it is our view that Appellant has
not identified any points that the Board has misapprehended or overlooked.
We are still of the view that the Examiner did not err in reaching the legal
conclusion of unpatentability under 35 U.S.C. § 101 based upon the record
before us in the original appeal. We have therefore reconsidered our
Decision, but decline to grant the relief requested. This Decision on
Appellant’s “Request for Rehearing” is deemed to incorporate our earlier
Decision by reference. See 37 C.F.R. § 41.52(a)(1).
DECISION
We have granted Appellant’s request to the extent that we have
reconsidered our Decision, but we deny the requested relief with respect to
making any changes therein.
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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 also 37
C.F.R. § 41.52(b).
DENIED
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