Ex Parte Tanaka et al

Patent Trial and Appeal Board

Feb 23, 2018

12748747 (P.T.A.B. Feb. 23, 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.
11333/327 (1-2008-089US) 5868
EXAMINER
SKIBINSKY, ANNA
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
12/748,747 03/29/2010
7590757
BGL
P.O. BOX 10395
CHICAGO, IL 60610
02/26/2018
Yousuke Tanaka
02/26/2018 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 YOUSUKE TANAKA, KOUJI KISHI, JUNYAINOUE, and
KEISUKE TSUTSUMIDA
Appeal 2017-004998
Application 12/748,7471
Technology Center 1600
Before ERIC B. GRIMES, DEBORAH KATZ, and
ELIZABETH A. LaVIER, Administrative Patent Judges.
LaVIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner’s rejection of claims 1, 2, 8, 11—13, 21 and 23—32. We have
jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we
AFFIRM.
BACKGROUND
The Specification describes “a diagnostic support apparatus and
computer program product for outputting diagnostic support information
based on the results of measurements of a urine sample.” Spec. 12.
1 Appellants state the real party in interest is Sysmex Corp. Appeal Br. 2.
Appeal 2017-004998
Application 12/748,747
Claim 1 is illustrative:
1. A method of measuring a urine sample comprising:
transporting, by a transporting device, a sample container
containing a urine sample to a first measurement device;
aspirating, by the first measurement device, the urine
sample from the transported sample container;
measuring, by the first measurement device, the aspirated
urine sample and obtaining red blood cell numerical
information representing the number of red blood cells in the
urine sample;
receiving, by a data analysis computer, the red blood cell
numerical information;
determining, by the data analysis computer, a necessity
of a measurement by a second measurement device based on
the red blood cell numerical information;
transporting, by the transporting device, the sample
container to the second measurement device from the first
measurement device;
when the measurement by the second measurement
device is determined to be necessary by the data analysis
computer, aspirating, by the second measurement device, the
urine sample from the transported sample container;
measuring, by the second measurement device, the
aspirated urine sample and obtaining first quantitative value
information representing amount of protein component in the
urine sample and second quantitative value information
representing amount of lipid component in the urine sample;
receiving, by a data analysis computer, the first and
second quantitative value information; and
generating, by the data analysis computer, an analysis
result indicative of suspicion of renal disease when a condition
that the amount of protein component in the urine sample is
equal to or excess over a first threshold value is met,
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Application 12/748,747
wherein the analysis result states that the renal disease is
not progressive when the amount of lipid component in the
urine sample is less than a second threshold value and the
number of red blood cells in the urine sample is less than a third
threshold value, even if the condition is met.
Appeal Br. 14 (Claims Appendix).
APPEALED REJECTION
Claims 1, 2, 8, 11—13, 21 and 23—32 stand rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Non-Final Act. 3.2
DISCUSSION
Section 101, which provides that a patent may be obtained for the
invention of “any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof,” is
limited implicitly insofar as “[ljaws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Banklnt’l,
134 S. Ct. 2347, 2354 (2014) (quoting Assn for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The Supreme Court
has established a two-step framework for this analysis, wherein a claim does
not satisfy § 101 if
(1) it is “directed to” a patent-ineligible concept, i.e., a law of
nature, natural phenomenon, or abstract idea, and (2), if so, the
particular elements of the claim, considered “both individually
and ‘as an ordered combination,’” do not add enough to
“transform the nature of the claim into a patent-eligible
application.”
2 Non-Final Office Action mailed Feb. 23, 2016.
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Application 12/748,747
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(quoting Alice, 134 S. Ct. at 2355).
The Examiner finds that claim 1 is directed toward ineligible subject
matter because “[a]s a whole the computerized process relies on the abstract
ideas of comparing information, categorizing, organizing and transmitting
information and organizing information through mathematical correlations.”
Non-Final Act. 3. The additional elements, such as transporting and
aspirating the sample, are “routine and conventional.” Id. at 3-A (citing
Roginski3 Abstract; Ribeiro417). The recited computer is general-purpose.
Id. at 4. Thus, the Examiner concludes that “[vjiewed as a whole, these
additional claim element(s) do not provide meaningful limitation(s) to
transform the abstract idea into a patent eligible application of the abstract
idea such that the claim(s) amounts to significantly more than the abstract
idea itself.” Id..
Appellants’ arguments to the contrary are largely by way of analogy;
notably Appellants compare claim 1 with the patent-eligible claims in cases
such as Diamond v. Diehr, 450 U.S. 175 (1981), Research Corp.
Technologies, Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010)
{“RCV), and McRO Inc. v. Bandai Namco Games America, Inc., 837 F.3d
1299 (Fed. Cir. 2016). See generally Appeal Br. 5—7; Reply Br. 2-A.
Having reviewed these cases, among others, we are not persuaded of any
reversible error by the Examiner. Indeed, claim 1 bears more similarities to
the patent-ineligible claims of Mayo Collaborative Services v. Prometheus
3 Roginski, 4,927,545, issued May 22, 1990.
4 Ribeiro et al., US 2009/0280572 Al, published Nov. 12, 2009.
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Application 12/748,747
Laboratories, Inc., 566 U.S. 66 (2012) than to those of the above-cited
cases.
The claim at issue in Mayo was directed toward a method of
optimizing a therapeutic treatment that “set forth laws of nature—namely,
relationships between concentrations of certain metabolites in the blood and
the likelihood that a dosage of a thiopurine drug will prove ineffective or
cause harm.” Id. at 77. The Court explained that the claimed steps that did
not recite a law of nature were not “sufficient to transform the nature of the
claim,” either individually or when considering the claim as a whole:
The upshot is that the three steps simply tell doctors to gather
data from which they may draw an inference in light of the
correlations. To put the matter more succinctly, the claims
inform a relevant audience about certain laws of nature; any
additional steps consist of well-understood, routine,
conventional activity already engaged in by the scientific
community; and those steps, when viewed as a whole, add
nothing significant beyond the sum of their parts taken
separately. For these reasons we believe that the steps are not
sufficient to transform unpatentable natural correlations into
patentable applications of those regularities.
Id. at 79—80. Distinguishing Diehr, the Mayo Court noted that Diehr
“nowhere suggested that all these steps, or at least the combination of those
steps, were in context obvious, already in use, or purely conventional.” Id.
at 81.
Appellants argue that the types of analyses recited in claim 1 were not
routine or conventional (see Appeal Br. 7), and the Examiner does not
appear to dispute this assertion (see Ans. 7). This argument is not
persuasive, however, because the discovery of a natural law cannot itself be
the non-conventional element that rescues a claim from patent-ineligibility.
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SeeAriosa Diagnostics v. Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir.
2015) (“For process claims that encompass natural phenomenon, the process
steps are the additional features that must be new and useful.”). Claim 1 ’s
analytical steps are similar in this regard to the correlation steps in Mayo:
[T]he “wherein” clauses simply tell a doctor about the relevant
natural laws, at most adding a suggestion that [they] should take
those laws into account when treating [their] patient. That is to
say, these clauses tell the relevant audience about the laws
while trusting them to use those laws appropriately where they
are relevant to their decisionmaking (rather like Einstein telling
linear accelerator operators about his basic law and then
trusting them to use it where relevant).
Mayo, 566 U.S. at 78.
Appellants also argue that claim 1 ’s “specific applications in the
marketplace” and “improvements to technologies in the marketplace”
(Appeal Br. 6) due to improved speed of testing should render it patentable,
akin to the claims in RCT. This is not persuasive. As the Examiner finds:
[T]he claims result in information that while potentially useful
is not patent eligible because the instant claims are drawn to
performing a numerical calculation that results in an “analysis
result” and not a technological improvement as in RCT v.
Microsoft which results in an improved real-world, digital
image.
Ans. 6—7. Further, RCT involved circumstances not present here. As the
Federal Circuit later explained:
[T]he method in Research Corp., which required the
manipulation of computer data structures (the pixels of a digital
image and the mask) and the output of a modified computer
data structure (the halftoned image), was dependent upon the
computer components required to perform it. See CyberSource
[Corp. v. Retail Decisions, Inc., 654 F.3d [1366,] 1376 [(Fed.
Cir. 2011)] (“[T]he method [in Research Corp.] could not, as a
practical matter, be performed entirely in a human's mind.”).
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Application 12/748,747
Here, in contrast, the computer merely permits one to manage a
stable value protected life insurance policy more efficiently
than one could mentally. Using a computer to accelerate an
ineligible mental process does not make that process patent-
eligible.
Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266, 1279
(Fed. Cir. 2012). Furthermore, and contrary to Appellants’ arguments (see
Reply Br. 2—3) McRO is similarly distinguishable from the present appeal.
See McRO, 837 F.3d at 1315 (“The claimed process uses a combined order
of specific rules that renders information into a specific format that is then
used and applied to create desired results: a sequence of synchronized,
animated characters.”); id. at 1316 (“The claim uses the limited rules in a
process specifically designed to achieve an improved technological result in
conventional industry practice.”). Like the ineligible claim in Bancorp, the
abstract ideas embedded in the present claims amount to a “determination
[that] can also be carried out as a mental step or with the assistance of
paper/pen.” Ans. 6; see also id. at 7. Whatever practical improvements the
claims yield do not amount to significantly more than the application of
these abstract ideas.
Having considered each of Appellants’ arguments, we are not
persuaded of any reversible error by the Examiner in rejecting claim 1.
Appellants argue claims 11,21, and 28 separately. Claim 21 is an
independent claim and, like claim 1, is drawn to a method of measuring a
urine sample. See Appeal Br. 15—16 (Claims Appendix). Although
appearing in a separate section of their Appeal Brief, Appellants’ arguments
regarding claim 21 are very similar to those made regarding claim 1
(compare Appeal Br. 10-12 (discussing claim 21) with id. at 5—8 (discussing
claim 1)). For essentially the same reasons as discussed above with respect
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to claim 1, these arguments are not persuasive. For claims 11 and 285 (see
Appeal Br. 8—10, 12—13), Appellants point to a district court decision in
which a similar claim was determined to be subject-matter eligible, and
argue that the same rationale applies here, i.e., that “the instant claims also
implement a novel solution to a pre-existing problem in the field” (id. at 9
(discussing Ameritrox, Ltd. v. Millennium Health, LLC, WIWD-3-13-cv-
00832)). We are not persuaded. As the Examiner puts it:
While the instant claims may contain an “inventive concept”
and be free from the prior art, they are not patent eligible
because they are drawn to an abstract idea without
“significantly more.” Appellants appear to concede (Brief,
page 7, par. 5) that implementing aspirators and container
transport devices is routine and conventional. Other limitations
of the claims are drawn to numerical data analysis and
comparison resulting in a determination of suspicion of renal
disease.
Ans. 7. Claim 21, like claim 1, is similar to the ineligible claim in Mayo
insofar as claim 21 “inform[s] a relevant audience about certain laws of
nature; any additional steps consist of well-understood, routine, conventional
activity already engaged in by the scientific community” (566 U.S. at 79—
80). Accordingly, we are not persuaded of any reversible error by the
Examiner in rejecting claims 11, 21, or 28.
5 Claim 11 depends from claim 1 and further recites obtaining “creatinine
quantitative value information” and “correcting, by the data analysis
computer, the amounts of the lipid component and the protein component in
the urine sample by the amount of creatinine in the urine sample.” Appeal Br.
15 (Claims Appendix). Claim 28 recites additional limitations similar to those
of claim 11, but depends on claim 21. See id. at 17—18.
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CONCLUSION
The rejection of claims 1, 2, 8, 11—13, 21 and 23—32 is affirmed.
AFFIRMED
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