Ex Parte Tuck et alDownload PDFPatent Trial and Appeal BoardAug 29, 201613135968 (P.T.A.B. Aug. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/135,968 07/18/2011 7590 Thomas N. Giaccherini Post Office Box 1146 Carmel Valley, CA 93924 08/30/2016 FIRST NAMED INVENTOR Edward F. Tuck 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. SFA2006-l-2011RFNo.17 7921 EXAMINER GOLDBERG, JEANINE ANNE ART UNIT PAPER NUMBER 1634 MAILDATE DELIVERY MODE 08/30/2016 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 EDWARD F. TUCK and MARTIE G. HASELTON1 Appeal2014-003142 Application 13/135,968 Technology Center 1600 Before DONALD E. ADAMS, JEFFREYN. FREDMAN, and TA WEN CHANG, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to methods for predicting good matches between members of the opposite sex, which have been rejected as anticipated and directed to a non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and enter a new ground of rejection. 1 Appellants identify the Real Party in Interest as Social Fabric Corporation. (Br. 2.) Appeal2014-003142 Application 13/135,968 STATEMENT OF THE CASE "The MHC is a cluster of genes that determines details of cellular surfaces and thus immune responses, and specifies certain peptides that appear in skin secretions and urine." (Spec. 4:9-11.) The Specification explains that these peptides are responsible for body odors that uniquely identify individuals. (Id. at 4:11-12.) According to the Specification, "[m]en and women detect others' MHC genes through their body odors," which play a role in mate-selection. (Id. at 4:20-24.) Further according to the Specification, selecting "mates on the basis of MHC dissimilarity equips offspring with a broad immune system, increasing the offspring's fitness." (Id. at 5:1-3.) Claims 1-3, 6, 7, 14, 16, 27, and 63 are on appeal (Br. 2; see generally Ans. 3).2 Claims 1 and 63 are representative and read as follows: 1. A method comprising the steps of: obtaining a tissue sample ( 42) from a woman (10) using a human sample test kit (14 ); said human sample test kit (14) being obtained by said woman (10) using a website (18); said tissue sample ( 42) being obtained from the cheek of said woman (10); sending said tissue sample ( 42) of said woman (10) to a laboratory for analysis; 2 "Claims 1-3, 6-7, 14, 16, 27, 31-60 and 63 are pending. Claims 31-60 have been withdrawn" (Ans. 3). 2 Appeal2014-003142 Application 13/135,968 analyzing said tissue sample ( 42) to determine a set of genetic attributes (GI) for said woman (10); said genetic attributes (G 1) being defined by MHC alleles; producing a list of MHC alleles which are found in said tissue sample ( 42) of said woman (1 O); compiling a library of candidates of men; comparing said list ofMHC alleles which are found in said tissue sample ( 42) of said woman (10) to said library of candidates of men; predicting a good match between said woman ( 10) and one of said candidates of men based on a correlation of said woman's list of MHC alleles and the MHC alleles for one of said men; and reporting said good match to said woman ( 10) using said website (18). 63. A method comprising the steps of: obtaining a sample (S) from a woman (10) using a human sample test kit (14); said human sample test kit (14) being obtained by said woman (10) using a website (18); sending said sample (S) of said woman (10) to a laboratory for analysis; analyzing said sample (S) to determine a set of genetic attributes (G 1) for said woman (1 O); said genetic attributes ( G 1) for said woman (10) being defined by MHC alleles; 3 Appeal2014-003142 Application 13/135,968 producing a list of MHC alleles which are found in said sample (S) of said woman (1 O); compiling a library of candidates of men; comparing said list of MHC alleles for said woman (10) which are found in said sample (S) of said woman ( 10) to said library of candidates of men; and predicting the responsivity of said woman (10) to one of said candidates of men among said candidates of men based on a correlation of said list of MHC alleles of said woman (10) and the MHC alleles of one of said candidates of men. (Br. Appendix A.) The claims stand rejected as follows: Claims 1-3, 6, 7, 14, 16, 27, and 63 are rejected as ineligible subject matter under 35 U.S.C. § 101. Claims 1-3, 7, 27, and 63 are rejected under 35 U.S.C. § 102(b) as anticipated by Holzle. 3 I. Issue The Examiner has rejected claims 1-3, 6, 7, 14, 16, 27, and 63 under 35 U.S.C. § 101 as ineligible subject matter. (Ans. 5.)4 3 Holzle, US 2005/0112684 Al, published May 26, 2005. 4 The Examiner's Answer states that claims 1-30 and 61---63 are rejected under 35 U.S.C. § 101. (Ans. 5.) However, the only remaining pending claims are claims 1-3, 6, 7, 14, 16, 27, and 63. (Id. at 3.) 4 Appeal2014-003142 Application 13/135,968 Applying Mayo, The Examiner finds that [t]he instant claims set forth laws of nature - namely relationships between MHC alleles of two individuals and their compatibility. The law of nature is that individuals with greater differences in the MHC alleles are better mates. An application that simply describes that relation sets forth a natural law. (Ans. 5---6 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012).) The Examiner further finds that the additional steps in the claim "consist of well-understood, routine, conventional activity already engaged in by the scientific community," which, "when viewed as a whole, add nothing significant beyond the sum of their parts taken separately." (Id. at 6.) Appellants argue that Mayo "does not preclude the patentability of combinations that are novel, useful and non-obvious elements of physical items." (Br. 44.) Appellants contend that "[e]ach one of the steps" of the instant claims "requires the inventive action of human beings; and include physical elements which have never spontaneously appeared in Nature by the action of Natural Law." (Id. at 49.) Appellants further contend that the claims contain more than just "insignificant post-solution activity" and would not monopolize the law of nature itself. (Id. at 49-50 (internal quotation and citation omitted).) Because Appellants do not separately argue claims 2, 3, 6, 7, 14, 16, and 27 (id. at 37, 55), we decide the appeal of this rejection on the basis of claims 1 and 63. The issue with respect to this rejection is whether the evidence of record supports the Examiner's finding that claims 1 and 63 are directed to ineligible subject matter under 35 U.S.C. § 101. 5 Appeal2014-003142 Application 13/135,968 Findings of Fact FF 1. Holzle teaches a "process of matching people with one another, for social and/or sexual purposes, based on the profiles of the participants' Class I and Class II MHC genes." (Holzle Abstract.) FF2. Holzle teaches collecting or obtaining samples from humans, analyzing the samples by performing Class I and Class II MHC typing of individuals and documenting the results, and finally using the results to predict compatible matches from the participants. (See, e.g., id. at Fig. 1; see also id. i-fi-f 16, 20.) FF3. Holzle teaches that "[c]ollecting genetic samples from the individuals in a pool of participants" and "typing the Class I and Class II regions of the MHC of each individual" are "routinely practiced ... in the field of genetics." (Id. at i-f 16.) FF4. In particular, Holzle teaches that "[c]ollecting sample genetic material from the individuals in a pool of participants is relatively common" and "could include drawing blood, rubbing a cotton swab along the inside of the cheek to retrieve cells from the mouth, or removing hair." (Id. at i-f 17.) FF5. Holzle also teaches that, [ o ]nee genetic material is obtained, it can be analyzed, or typed, to determine the individuals' MHC Class I and Class II profiles. MHC typing is commonly practiced today in genetic laboratories, and it often involves growing the original DNA sample to establish a desired quantity, followed by the actual typing itself. Both of these steps are accomplished in a variety of ways, which are outside the scope of this patent, but the end result is a Class I and Class II MHC profile of each subject. (Id. at i-f 18.) 6 Appeal2014-003142 Application 13/135,968 FF6. Holzle teaches comparing [the class I and class II MHC] profiles of some or all of the participants with said profiles of others and rating the degree of compatibility between any two or more people according to the number of alleles they have in common, where fewer commonalities represent a greater degree of compatibility. (Id. at claim l(c); see also id. at Abstract.) FF7. Holzle teaches "assembling and/or defining a population of human participants, physically and/or virtually, to be matched amongst themselves and/or any future or past participants in the context of a dating service[.]" (Id. at claim l(a).) Analysis We agree with the Examiner that claims 1 and 63 are not directed to patent-eligible subject matter under the two-step test set forth in Mayo. Mayo, 132 S. Ct. 1289. In Mayo, the claimed invention was a "method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder" comprising administering a certain class of drug and then determining the level of metabolites in a patient, where a level of metabolite below or above certain amounts indicated a need to increase or decrease, respectively, the drug dosage. Mayo, 132 S. Ct. at 1295. The claims at issue are similar in that they are directed to a method of predicting good matches between individuals by comparing their MHC alleles. As the Examiner points out, they set forth laws of nature - "namely[,] relationships between MHC alleles of two individuals and their compatibility." (Ans. 5---6.) As in Mayo, while it takes human actions (obtaining and analyzing tissue samples to compare MHC alleles and report 7 Appeal2014-003142 Application 13/135,968 "a good match") in order to "trigger a manifestation of this relation in [] particular person[ s]," "the relation itself exists in principle apart from any human action." Mayo, 132 S. Ct. at 1297. Under the first step of Mayo test, therefore, claims 1 and 63 are directed to a law of nature or natural phenomenon. Appellants first argue that Mayo is distinguishable because claims 1 and 63 recite physical, man-made elements and/or a result of intelligent effort that may not reasonably be dismissed as being part of the laws of nature. (Br. 48-51, 53-54.) Appellants further argue that the pending claims would not "monopolize the law of nature itself." (Id. at 49, 53 (internal quotation marks and citation omitted.) We are not persuaded. The claims at issue in Mayo also contain steps that are not themselves natural laws. Mayo, 132 S. Ct. at 1297. As Mayo explained, however, "[p]urely 'conventional or obvious' '[pre]-[ or post- ]solution activity' is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law." Id. at 1298 (internal citation omitted). Thus, the question here, and the second part of the Mayo test, "is whether the [pending] claims do significantly more than simply describe [a] natural relations[hip]. Id. at 1297. Contrary to Appellants' contention (Br. 50), we find that they do not. Like the steps of the claims in Mayo, the manipulative steps of claims 1 and 63 on appeal "consist of well-understood, routine, conventional activity already engaged in by the scientific community." Id. at 1298. In particular, Holzle teaches that obtaining and analyzing tissue samples to determine MHC profiles is routine. (FF2-FF5.) As shown by Holzle, 8 Appeal2014-003142 Application 13/135,968 comparing MHC profiles of different individuals is likewise conventional. (FF1-FF2, FF6.) The final step of claim 1, reporting a "good match," simply informs an individual of predictions based on the results of the MHC profile comparisons and the natural relationship between MHC correlation and "compatibility." In sum, we find that claims 1 and 63 merely inform a relevant audience of certain laws of nature: specifically, that correlations between MHC alleles may be used to predict compatibility between individuals. All of the additional steps of claims 1 and 63 consist of well-understood, routine, conventional activity already engaged in by the scientific community such as Holzle. Accordingly, we conclude that claims 1 and 63 are directed to patent- ineligible subject matter. The rejection of claims 1 and 63 under 35 U.S.C. § 101 is affirmed. Claims 2, 3, 6, 7, 14, 16, and 27 fall with claim 1. II. Issue The Examiner has rejected claims 1-3, 7, 27, and 63 under 35 U.S.C. § 102(b) as anticipated by Holzle. (Ans. 8.) The Examiner finds that "Holzle teaches an improved process of matching people ... based upon the profiles of the participants' Class I and Class II MHC genes," including the steps of collecting samples from individuals, analyzing the samples by performing MHC typing, documenting the results, and predicting good matches by matching those who possess a desired degree of compatibility. (Ans. 8.) The Examiner further finds that 9 Appeal2014-003142 Application 13/135,968 "Holzle teaches that the [participants] may be assembled virtually, i.e. [using] a website." (Id.) Appellants contend that claim 1 recites two limitations that specifically includes the use of a website. (Br. 58.) In contrast, Appellants argue that Holzle does not include the word "website," and neither "disclose[s], teach[ es] or suggest[s] the use of a website, nor does [Holzle] refer to the Internet." (Br. 58.) Appellants further contend that "Holzle does not describe any method for obtaining a human sample test kit or for reporting a good match using a website, the Internet or any computing device." (Id.) The issue with respect to this rejection is whether Holzle teaches obtaining a human sample test kit and/or reporting a good match using a website. Findings of Fact The findings of fact from Section I are incorporated by reference herein. Analysis We agree with the Appellants that the Examiner has not provided evidence to show that Holzle discloses the disputed limitation. "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). "A reference may anticipate inherently if a claim limitation that is not expressly disclosed 'is necessarily present, or inherent, in the 10 Appeal2014-003142 Application 13/135,968 single anticipating reference.' ... The inherent result must inevitably result from the disclosed steps; '[i]nherency ... may not be established by probabilities or possibilities."' In re Montgomery, 677 F.3d 1375, 1379-80 (Fed. Cir. 2012) (citations omitted, alterations to second quote in original). While Holzle describes "assembling and/or defining a population of human participants ... virtually, to be matched amongst themselves and/or any future or past participants in the context of a dating service" (FF7), Holzle does not expressly disclose obtaining a human sample test kit or reporting a good match "using a website." Neither has the Examiner provided evidence or technical reasoning to show that a virtual assemblage of participants necessarily requires a website. Thus, the Examiner has not provided adequate evidence to support the finding that Holzle discloses a method meeting all of the limitations of claim 1. The rejection of claim 1 and its dependent claims 2, 3, 7, and 27 as being anticipated by Holzle is reversed. Claim 63 also contains a limitation of "human sample test kit ... being obtained ... using a website." Thus, the anticipation rejection of claim 63 is reversed for the same reasons. III. Under the provision of 37 C.F .R. § 41.50(b ), we enter the following new ground of rejection: Claims 1 and 63 are rejected under 35 U.S.C. § 103(a) as obvious over Holzle. Findings of Fact The findings of fact from Section I are incorporated by reference herein. 11 Appeal2014-003142 Application 13/135,968 Analysis Holzle discloses assembling a population of human participants in the context of a dating service (FF7), obtaining tissue sample from the cheek of such participants (FF2, FF4), analyzing the tissue sample by performing Class I and Class II MHC typing (FFl, FF2, FF5), and matching participants based on the profiles of the participants' Class I and Class II MHC genes (FFl, FF2, FF6). Thus, Holzle teaches all of the limitations of claims 1 and 63, except for the limitations relating to obtaining a human sample test kit and reporting a good match "using a website." Nevertheless, Holzle discloses that its dating service may be virtual rather than physical, thus suggesting the use of electronic components and means of communication. (FF7.) Moreover, because Holzle discloses obtaining tissue sample from dating service participants and matching such participants based on the profiles of their Class I and Class II MHC genes, using a website to obtain a human sample test kit and reporting a good match does no more than update the method disclosed in Holzle "using modem electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost." Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Because we find that a skilled artisan would have found it obvious to adapt Holzle' s prior art method "using newer technology that is commonly available and understood in the art," such as a website, we reject claims 1 and 63 pursuant to 35 U.S.C. § 103(a). Id. 12 Appeal2014-003142 Application 13/135,968 SUMMARY We affirm the rejection of claims 1-3, 6, 7, 14, 16, 27, and 63 under 35 U.S.C. § 101. We reverse the rejection of claims 1-3, 7, 27, and 63 under 35 U.S.C. § 102(b) as anticipated by Holzle. We enter a new ground of rejection of claims 1 and 63 as obvious over Holzle. We have not entered new rejections of the dependent claims, but in the event of further prosecution (see below), the Examiner should consider whether any of the dependent claims should also be rejected over the prior art. TIME PERIOD FOR RESPONSE Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(l) provides that "Appellant may file a single request for rehearing within two months of the date of the original decision of the Board." In addition to affirming the Examiner's rejection of the pending claims, this decision contains 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(September7, 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 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 [ e ]vidence relating 13 Appeal2014-003142 Application 13/135,968 to the claims so rejected, or both, and have the matter reconsidered by the [E]xaminer, in which event the prosecution will be remanded to the [E]xaminer. ... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same record .... Should the Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If the Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment, or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. AFFIRMED; 37 C.F.R. § 41.50(b) 14 Copy with citationCopy as parenthetical citation