Ex Parte Vervier et alDownload PDFPatent Trials and Appeals BoardJun 25, 201914387777 - (D) (P.T.A.B. Jun. 25, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/387,777 09/24/2014 29980 7590 06/27/2019 Nicolas E. Seckel Westerman, Hattori, Daniels & Adrian LLP 1250 Connecticut Avenue, NW Suite 850 Washington, DC 20036 FIRST NAMED INVENTOR Kevin Vervier 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. P25842USOO 5696 EXAMINER WISE, OLIVIA M. ART UNIT PAPER NUMBER 1631 NOTIFICATION DATE DELIVERY MODE 06/27/2019 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): patentmail@whda.com nseckel@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN VERVIER, PIERRE MAHE, and JEAN-BAPTISTE VEYRIERAS Appeal2018-001026 Application 14/387,777 1 Technology Center 1600 Before DEBORAH KATZ, JOHN G. NEW, and DAVID COTTA, Administrative Patent Judges. COTT A, Administrative Patent Judge. DECISION ON APPEAL This is an Appeal under 35 U.S.C. § 134 involving claims to a method of identifying by spectrometry unknown microorganisms from among a set of reference species in a spectrometry identification device. The Examiner rejected the claims on Appeal under 35 U.S.C. § 101 as directed to patent- ineligible subject matter. An oral hearing took place on May 2, 2019. We affirm. 1 According to Appellants, the real party in interest is Biomerieux. App. Br. 3. Appeal2018-001026 Application 14/387,777 STATEMENT OF THE CASE The Specification discloses that "[i]t is known to use spectrometry or spectroscopy to identify microorganisms, and more particularly bacteria." Spec. 1. This is done by obtaining a mass, vibrational or fluorescence spectrum of a sample, processing it, and then comparing it "by means of classification tools with data from a knowledge base built from a set of reference spectra, each associated with an identified microorganism." Id. The Specification discloses that "[a]lgorithms of support vector machine or SVM [ support vector machine] type are conventional supervised learning tools, particularly adapted to the learning of high-dimension classification models aiming at classifying a large number of species." Id. at 2. Conventional "flat" SVM algorithms "consider the species to be classified equivalently and, as a corollary, also consider classification errors as equivalent" such that "a classification error between two close bacteria has the same value as a classification error between a bacteria and a fungus." Id. As a result, "the obtained classification model may be inaccurate for certain species ... making the subsequent step of prediction of an unknown microorganism very difficult." Id. The Specification discloses that the claimed method "aims at providing a method of identifying microorganisms by spectrometry or spectroscopy based on a classification model obtained by an SVM-type supervised learning method which minimizes the severity of identification errors, thus enabling to substantially more reliably identify unknown microorganisms." Id. This is accomplished by introducing "information which has not been considered up to now in supervised learning algorithms used in the building of classification models for the identification of 2 Appeal2018-001026 Application 14/387,777 microorganisms, that is, a hierarchical treelike representation of the microorganism species in terms of evolution and/or of clinical phenotype." Id. at 3--4. Such a hierarchical representation differs from conventional SVM algorithms in that it is not a "flat" algorithm and the various species are not treated as interchangeable. Id. at 4. Instead, it takes into account, qualitatively and quantitatively, the proximity between species according to, for example "a 'distance' defined on the trees of the reference species." Id. As compared to species identifications using a conventional SVM algorithm, species identifications using a hierarchical SVM algorithm result in a similar number of erroneous species identifications, however, the severity of the prediction errors is diminished. Id. at 23. Claims 1-5 and 7-17 are on Appeal. Claim 1 is illustrative and reads as follows: 1. A method of identifying by spectrometry unknown microorganisms from among a set of reference species in a spectrometry identification device comprising a spectrometer and a data calculating unit, the data calculation unit comprising a processor and a knowledge base integrated in the device, compnsmg: (i) learning, by supervised learning, a classification model of a plurality of reference species, comprising: (a) for each reference species, acquiring from the spectrometer by the data processing unit, a set of training spectra of identified microorganisms belonging to said reference species; (b) transforming, by the data processing unit, each acquired training spectrum into a set of training data according to a predetermined format for their use by a multi-class support vector machine type algorithm; and 3 Appeal2018-001026 Application 14/387,777 ( c) determining, by the data processing unit, the classification model of the plurality of reference species as a function of the sets of training data by means of said algorithm of multi-class support vector machine type, wherein said classification model of the plurality of reference species is stored in the knowledge base of the data processing unit, (ii) predicting the identity of an unknown microorganism, compnsmg: ( d) acquiring from the spectrometer, by the data processing unit, a spectrum of the unknown microorganism; and ( e) inferring, by the data processing unit, from said spectrum and from the classification model at least one type of microorganism to which the unknown microorganism belongs, wherein the transforming by the data processing unit of each acquired training spectrum comprises: transforming, by the data processing unit, the training spectrum into a data vector representative of a structure of the training spectrum; and generating, by the data processing unit, the set of training data according to the predetermined format by calculating a tensor product of the data vector by a predetermined vector bijectively representing a position of the reference species of the microorganism in a tree- like hierarchical representation of the reference species in terms of evolution and/or of clinical phenotype; and wherein the classification model stored in the knowledge base of the data processing unit is a 4 Appeal2018-001026 Application 14/387,777 classification model of classes corresponding to nodes of the tree-like hierarchical representation, the algorithm of multi-class support vector machine type comprising determining parameters of the classification model by solving a single problem of optimization of a performance criterion expressed according to the parameters of the classification model under margin constraints comprising loss functions quantifying a proximity between the tree nodes, wherein the calculation of the performance criterion comprises calculating a confusion matrix as a function of the results returned by said inferring; and the new current values of the loss functions respectively correspond to the components of a combination of a first loss matrix listing distances separating the reference species in the tree of the hierarchical representation and of a second matrix calculated as a function of the confusion matrix, and (iii) returning a prediction of the identity of the unknown microorganism by the spectrometry identification device. App. Br. 11 (Claims App.). The Examiner rejected claims 1-5 and 7-17 under 35 U.S.C. § 101 as directed to patent ineligible subject matter. ANALYSIS Appellants argue claims 1-5 and 7-17 together. We designate claim 1 as representative. 5 Appeal2018-001026 Application 14/387,777 An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "'[l]aws of nature, natural phenomena, and abstract ideas'" are not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S. 6 Appeal2018-001026 Application 14/387,777 252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. 7 Appeal2018-001026 Application 14/387,777 The PTO recently published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or ( 4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum. Following the Guidance, we begin by considering whether claim 1 is directed to a judicial exception. In rejecting claim 1 as directed to patent ineligible subject matter, the Examiner found that claim 1 included recitations similar to the concepts of comparing new and stored information and using rules to identify options in SmartGene, Inc. v[] Advanced Biological Labs[] (555 Fed. Appx. 950 (Fed. Cir. 2014)) and organizing information through mathematical correlations in Digitech Image Techs., LLC v[] Electronics for Imaging, Inc. (758 F.3d 1344 ... (Fed. Cir. 2014)). 8 Appeal2018-001026 Application 14/387,777 Ans. 2. The Examiner, therefore, concluded that the claims recite a judicial exception "that is the abstract idea of data manipulation and mathematical modeling." Id. The Examiner then considered whether claim 1 recited additional elements or combinations of elements that amount to significantly more than the recited exception. Id. at 3. The Examiner noted that claim 1 requires acquiring a spectra of microorganisms and returning a prediction and concluded that these additional elements "equate to mere instructions to implement the abstract ideas on a computer with generic computer components, adding insignificant extrasolution activity to the judicial exception." Accordingly, the Examiner rejected claim 1 as directed to patent ineligible subject matter. For the reasons discussed below, we agree with the Examiner that claim 1 is directed to patent ineligible subject matter. 1. The claims are directed to a judicial exception Consistent with Mayo, the Guidance expressly identifies mental processes - i.e. "concepts performed in the human mind[ ] (including an observation, evaluation, judgment, opinion)" - as judicial exceptions. See Memorandum 52; Mayo, 566 U.S. at 71 ( quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("'[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work'"). Claim 1 is directed to a method of "identifying by spectrometry unknown microorganisms." With the exception of the final step "output" step of the recited method, - i.e., the "returning a prediction ... " limitation 9 Appeal2018-001026 Application 14/387,777 - each of the steps of the claimed method can be performed entirely in the human mind. 2 The first step in the method of claim 1 is "learning, by supervised learning, a classification model of a plurality of reference species." App. Br. 67 (Claims App.). Leaming the classification model requires three sub- steps, each of which can be performed in the human mind. The first "learning" sub-step is: for each reference species, acquiring from the spectrometer by the data processing unit, a set of training spectra of identified microorganisms belonging to said reference species; Id. This sub-step does not limit how the training spectra are acquired and can be satisfied by simply reading spectrograms. The second "learning" sub-step is: transforming, by the data processing unit, each acquired training spectrum into a set of training data according to a predetermined format for their use by a multi-class support vector machine type algorithm; and App. Br. 67 (Claims App.). This sub-step involves applying an algorithm to data. Claim 1 subsequently recites that this transforming step comprises "transforming ... the training spectrum into a data vector" and "calculating a tensor product of the data vector." Id. at 68. This sub-step, thus, recites a 2 Claim 1 makes several references to a "data processing unit." We acknowledge that a "data processing unit" is a tangible thing, but this does not remove the claim from the category of mental processes. See Memorandum 52 n.14 ("If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind" (citing cases).). 10 Appeal2018-001026 Application 14/387,777 mathematical operation that, save for the recitation of a "data processing unit," can be performed mentally. The third "learning" sub-step next step is: determining, by the data processing unit, the classification model of the plurality of reference species as a function of the sets of training data by means of said algorithm of multi-class support vector machine type, Id. at 67---68. This sub-step, thus, uses an algorithm to determine a classification model. The claim subsequently specifies that the algorithm determines the parameters of the classification model by "solving a single problem of optimization of a performance criterion[ 3] ••• under margin constraints comprising loss functions[ 4] quantifying a proximity between the tree nodes." Id. The algorithm manipulates data by performing mathematical operations to determine a classification model. 5 These mathematical operations can be performed mentally. Thus, as with the first and second "learning" sub-steps, the third "learning" sub-step can be performed mentally. 3 The claim further specifies that the "performance criterion" are calculated using a confusion matrix as a function of the results obtained from subsequently recited "inferring" steps. The calculation of performance criteria is a mathematical function that can be performed mentally. 4 The claim further specifies that the value of the "loss functions" corresponds to the components of a combination of two matrixes. The identification of the value of loss functions can be done mentally by selecting the appropriate values from the two recited matrixes. 5 While claim 1 does not recite equations for performing these mathematical operations, dependent claim 12 recites an equation for solving the "optimization problem," and claim 10 recites an equation for quantifying a proximity between the tree nodes. 11 Appeal2018-001026 Application 14/387,777 After the "learning" step has been completed, the claimed method requires the step of "predicting the identity of an unknown microorganism." This involves two sub-steps. The first "predicting" sub-step requires "acquiring from the spectrometer, by the data processing unit, a spectrum of the unknown microorganism." As with the first "learning" sub-step, this sub-step imposes no limits on how the training spectra are acquired and can be satisfied by simply reading spectrograms. The second "predicting" sub-step requires: "inferring, by the data processing unit, from said spectrum and from the classification model at least one type of microorganism to which the unknown microorganism belongs." This step involves correlating spectrum data from an unknown microorganism with the classification model. As with the other method steps, this step can be performed mentally. In sum, the recited "learning" and "predicting" steps, including all of their sub-steps, are directed to steps that could be performed entirely in the human mind. Accordingly, we conclude the claims recite mental processes, which are among the groups of subject matter identified in the Revised Guidance as abstract ideas. 2. The judicial exception is not integrated into a practical application Having determined that claim 1 is directed to a judicial exception, the Guidance directs us to next consider whether the claims integrate the judicial exception into a practical application. The Guidance directs us to "[i]dentify[] whether there are any additional elements recited in the claim beyond the judicial exception( s )" and then "evaluat[ e] those additional 12 Appeal2018-001026 Application 14/387,777 elements individually and in combination to determine whether they integrate the exception into a practical application .... " See Memorandum 54--55. Summarizing the relevant case law, the Guidance notes that courts have generally not considered an "additional element [that] adds insignificant extra-solution activity," like "mere data gathering," to integrate a judicial exception into a practical application. See id. at 55, 55 n.31 ( citing Mayo as teaching that the "additional element of measuring metabolites of a drug administered to a patient was insignificant extra-solution activity, which was insufficient to confer patent eligibility"). In addition to the steps that recite a judicial exception, claim 1 requires "returning a prediction of the identity of the unknown microorganism by the spectrometry identification device." This step simply requires conveying the results of the mental process, which the Federal Circuit has found insufficient to confer patentability on otherwise ineligible subject matter. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018) ("Although the claims include 'display instructions,' those instructions are simply for 'displaying the image' generated from the acquired content, and have no bearing on how to display the 'image' in a section of the screen that is unused. . . . [D]isplaying the information which results from th[ e] collection and organization [ of information] as recited by other instructions limitations, is 'abstract as an ancillary part of such collection and analysis."'). As noted above (see supra n.2), claim 1 also recites the use of a "data processing unit" in several places. The recitation of a generic computer, without more, does not integrate a mental process into a practical 13 Appeal2018-001026 Application 14/387,777 application. See Benson, 409 U.S. 63 (holding that merely implementing a mathematical principle on a general purpose computer is patent ineligible). Similarly, claim 1 recites the use of a "spectrometer" in several places. However, using the claimed method in connection with the spectrometer does not change or improve the spectrometer itself. Rather, the spectrometer is simply a tool used to gather data to be manipulated in the recited method. Accordingly, the recitation of a "spectrometer" does not integrate the claimed method into a practical application. Finally, claim 1 recites the steps of "acquiring ... a set of training spectra" and "acquiring ... a spectrum of the unknown microorganism." As discussed supra, these steps can be satisfied simply be reading spectrograms. We note that to the extent these steps are considered to require one to perform spectroscopy rather than simply reading spectrograms, it would not change the results of our analysis, because performing spectroscopy would amount to mere data gathering. See, Memorandum 5 5 n. 31; Tr. 3: 13-20. Considering claim 1 as a whole, we find that the focus of the claim is on the judicially excepted subject matter - the mental process for identifying a microorganism - rather than a particular application of that process. In this respect, this case is like Flook. In Flook, the "only difference between the conventional methods of changing alarm limits and that described in respondent's application rest[ed] in the second step----the mathematical algorithm or formula." 437 U.S. at 585-86. The Flook court found that the claimed subject matter "simply provides a new and presumably better method for calculating alarm limit values" and, thus, was not directed to patent eligible subject matter. Id. at 595 ( explaining "'if a claim is directed essentially to a method of calculating, using a mathematical formula, even if 14 Appeal2018-001026 Application 14/387,777 the solution is for a specific purpose, the claimed method is nonstatutory. '"). The court found that the use of this method to adjust an alarm limit did not render the method patent eligible. Id. Here, as in Flook, the claimed method is directed essentially to a "new and presumably better" algorithm, and the only difference between the claimed method and conventional methods lies in the algorithms used. As in Flook, the judicially excepted subject matter generates information (here the identity of a microorganism, in Flook, an alarm value). In Flook, the information generated was used to "adjust" an alarm value. Here, the information generated is used to "return" the identity of the unknown microorganism. In neither case does the use of the information generated by the excepted subject matter integrate the judicially excepted subject matter into a practical application. Appellants argue that the claimed method is not directed to an abstract idea because it "uses algorithms as rules to provide a technological solution to a technological problem, improves the structure and operation of a computer system, which in tum improves a technological product: the information identifying the unknown microorganism." App. Br. 13. Appellants therefore contend that the claimed method is similar to McRO, Inc. v. Bandai Namco Games Am. Inc. (837 F.3d 1299 (Fed. Cir. 2016)) (App. Br. 15-24), like Enfish, LLC v. Microsoft Corp. (822 F.3d 1327 (Fed. Cir. 2016)) (App. Br. 24--28), and like Amdocs (Israel) Ltd. v. Openet Telecom, Inc. (841 F.3d 1288 (Fed. Cir. 2016)) (App. Br. 32-33). In McRO, the claimed process used "a combined order of specific rules that render[ ed] information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated 15 Appeal2018-001026 Application 14/387,777 characters." McRO, 837 F.3d at 1315. The result of the claimed process was improved technological product- i.e., improved lip synchronization of animated characters. Id. Here, the claimed method returns a prediction of the identity of an unknown microorganism. While the prediction may be better than those made using previously known methods, as the Examiner points out, the prediction itself is an "information-based result rather than a technological product." Ans. 4. This distinguishes the present claims over the claims in McRO. In Enfzsh, the claims were directed to a "data storage and retrieval system for a computer memory." Enfzsh, 822 F.3d at 1336. The Federal Circuit explained that the relevant inquiry into whether the claims were directed to an abstract was "whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Id. at 1335-36. The court concluded that the claims at issue were not directed to an abstract idea, but to a "specific improvement to the way computers operate, embodied in the self-referential table." Id. at 1336 ("[T]he plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity."). In the method of claim 1, the recited data processing unit and spectrometer are used in their ordinary capacity to perform the claimed method without improving the function of the data processing unit or the spectrometer. This distinguishes the present claims over the claims in Enfzsh. 16 Appeal2018-001026 Application 14/387,777 In Amdocs, the claims were found to be patent eligible under 3 5 U.S.C. § 101 because "the claim's enhancing limitation necessarily requires that these generic components [ network devices, etc.] operate in an unconventional manner to achieve an improvement in computer functionality." 841 F. 3 d at 1300--01. Here, the improvement identified by Appellants is not to a device, but rather to the algorithm used to evaluate data. See Spec. 3--4 ("In other words, the invention specifically introduces a priori information which has not been considered up to now in supervised learning algorithms used in the building of classification models for the identification of microorganisms, that is, a hierarchical treelike representation of the microorganism species in terms of evolution and/or of clinical phenotype.") Appellants argue that Cleveland Clinic Foundation v. True Health Diagnostics LLC (859 F.3d 1352, 1362 (Fed. Cir. 2017)) supports the patent eligibility of the claimed method because, in finding the pending claims patent ineligible, the court commented that Cleveland Clinic did "not purport to derive new statistical methods," and that the claims at issue in that case "require[ d] only conventional MPO detection methods and compare those values to predetermined or control values derived from conventional statistical methods." App. Br. 36, 37. According to Appellants, it is implicit in these statements that "a statistical method embodied in a detection and analysis method of a given biological product would be appropriate to provide an inventive concept sufficient for patent-eligibility." Id. at 37-38. We are not persuaded because we do not interpret Cleveland Clinic to stand for the proposition that a statistical method, which is itself an abstract idea, is patent eligible if the statistical method is novel or 17 Appeal2018-001026 Application 14/387,777 unconventional. See Flook, 487 U.S. at 585 ("the discovery of a novel and useful mathematical formula may not be patented"). Appellants assert that this case is "similar[] and analogous[] to a new laboratory manipulation like the cell re-freezing that was found patent- eligible in Rapid Litig. Mgmt. Ltd v. CellzDirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016)." App. Br. 38. We are not persuaded. The method claimed in CellzDirect was an improved method for producing hepatocytes, which allowed them to be frozen and thawed more than once. CellzDirect, 827 F.3d at 1045--46. The court held that "the claims are simply not directed to the ability of hepatocytes to survive multiple freeze-thaw cycles. Rather, the claims ... are directed to a new and useful laboratory technique for preserving hepatocytes." Id. at 1048. The court distinguished several cases involving "claims ... we have found patent ineligible in cases since Mayo and Alice," finding that, "[a]lthough the claims in each of these cases employed method steps, the end result of the process, the essence of the whole, was a patent-ineligible concept," whereas the claims at issue in CellzDirect were "directed to a new and useful method of preserving hepatocyte cells." Id. Here, unlike CellzDirect, the essence of the claims and end result of the process is manipulating data to produce information- i.e., an improved prediction. Appellants argue that the claims are like the claims in Diehr. App. Br. 55-58. Appellants contend that the claims at issue, like the claims in Diehr, "improve a technological process." Id. at 58. The Court in Diehr found that a claim employing a mathematical formula in a manufacturing process was patent eligible, because it "applie[ d] that formula in a structure or process which, when considered as a whole, [was] performing a function which the 18 Appeal2018-001026 Application 14/387,777 patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing)." Diehr, 450 U.S. at 192. Unlike the process claimed in Diehr, which was directed to a specific industrial process, i.e., "a physical and chemical process for molding precision synthetic rubber products" (id. at 184), claim 1 merely recites a process for generating information. Claim 1 is, thus, closer to Flook than it is to Diehr. Appellants argue that the claimed method defines significantly more than the claims in Digitech (758 F.3d 1344), Electric Power Group, LLC v. Alstom, S.A (830 F.3d 1350 (Fed. Cir. 2016)), RecogniCorp, LLC v. Nintendo Co., Ltd. (855 F.3d 1322 (Fed. Cir. 2017)), TDE Petroleum Data Sols., Inc. v. AKM Enter., Inc. (657 F. App'x 991 (Fed. Cir 2016)), Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A. (776 F.3d 1343 (Fed. Cir. 2014)), In re TL! Commc 'ns LLC Pat. Litig. (823 F.3d 607 (Fed. Cir. 2016)), and SmartGene (555 F. App'x 950). App. Br. 40-53. Appellants attempt to distinguish these cases by arguing that unlike these cases, the present claims recite a technological solution that: ( 1) applies a prediction algorithm to a reference species database structured in a novel manner, as vectors bijectively representing the position of the microorganism in the hierarchy, and/or as a classification model of classes corresponding to nodes of the tree-like hierarchical representation, and (2) additionally applies loss functions quantifying a proximity between the tree nodes. App. Br. 40 ( emphasis omitted). We are not persuaded because, as the Examiner explains, "[a] specific abstract idea is still an abstract idea and is not eligible for patent protection without significantly more recited in the claim." Ans. 7. 19 Appeal2018-001026 Application 14/387,777 At the oral hearing Appellants argued that claim was similar to Example 39 of the Subject Matter Eligibility Examples. Tr. 3-5. The claim provided in Example 39 reads as follows: A computer-implemented method of training a neural network for facial detection comprising: collecting a set of digital facial images from a database; applying one or more transformations to each digital facial image including mirroring, rotating, smoothing, or contrast reduction to create a modified set of digital facial images; creating a first training set comprising the collected set of digital facial images, the modified set of digital facial images, and a set of digital non-facial images; training the neural network in a first stage using the first training set; creating a second training set for a second stage of training comprising the first training set and digital non-facial images that are incorrectly detected as facial images after the first stage of training; and training the neural network in a second stage using the second training set. Subject Matter Eligibility Examples: Abstract Ideas, 8-9. We acknowledge that claim 39 is similar to the present claim 1 in that both claims involve machine learning. However, the commentary accompanying Example 39 indicates that the claim is patent eligible because it does not recite a judicial exception. Id. More specifically, the commentary indicates that the claim "does not recite any mathematical relationships, formulas or calculations" and the steps cannot "practically [be] performed in the human mind." Id. Here, as discussed above, claim 1 recites mathematical calculations and can be performed in the human mind. See supra 10-13; see also Tr. 3 (Appellants' counsel: "And I think the claims fall well within the revised 20 Appeal2018-001026 Application 14/387,777 guidance, in the sense that there is heavy math used in the invention and some claims recite equations. But we integrate that math in a practical application."). Accordingly, we are not persuaded that claim 1 is patent eligible because it is similar to Example 39. 3. The claims do not provide an inventive concept that amounts to significantly more than the judicial exception itself Having determined that the judicial exception is not "integrated into a practical application," the Guidance directs us to "evaluate the additional elements individually and in combination ... to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself)." Here, we find that additional elements do not amount to significantly more than the exception itself because they simply append well understood, routine, and conventional activities to the recited judicial exception. See Tr. 3 ("JUDGE NEW: Can we stipulate right now for the record that the initial steps here of taking this spectrogram of bacteria is basically routine laboratory procedures, is a common procedure, there is nothing new about this? It would be -- MR. SECKEL: Yes."); Tr. 5 (Appellants' counsel: "the collection of data with the spectrometer, that's a conventional step"); id. at 7 (Appellants' counsel: "the spectrogram, which has been taken by a conventional spectrometer, we are comparing it to a restructured set of data. And so it's not the conventional set of data."). Appellants argue the claimed method "defines an improvement to a technological process by resolving a technological problem using a technological solution." App. Br. 55. Appellants contend that the "concrete 21 Appeal2018-001026 Application 14/387,777 benefits of the specific technological solution are clearly demonstrated in the examples described in the application." Id. More specifically, Appellants assert that using the claimed method, the total number of errors is similar to the total number of errors obtained using conventional methods, but the number of severe errors is significantly reduced. Id. at 63. We are not persuaded because, as the examiner explained "merely returning the information result of the prediction of a microorganism does not arise to an improved technological product because information in itself is abstract." Ans. 8. According, we affirm the Examiner's rejection of claim 1 as directed to patent ineligible subject matter. Because they were not argued separately, claims 2-5 and 7-17 fall with claim 1. DECISION For the reasons set forth herein, and those set forth in the Examiner's Answer and Final Office Action, we affirm the Examiner's rejection of claims 1-5 and 7-17 under 35 U.S.C. § 101 as directed to patent ineligible subject matter. 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 ). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 22 Copy with citationCopy as parenthetical citation