International Business Machines Corporation

Patent Trials and Appeals Board

Jan 10, 2022

2021002439 (P.T.A.B. Jan. 10, 2022)

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. 14/930,840 11/03/2015 Laxmi P. Parida YOR920150339US1 7053 48915 7590 01/10/2022 CANTOR COLBURN LLP-IBM YORKTOWN 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER CLOW, LORI A ART UNIT PAPER NUMBER 1631 NOTIFICATION DATE DELIVERY MODE 01/10/2022 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LAXMI P. PARIDA and FILIPPO UTRO Appeal 2021-002439 Application 14/930,840 Technology Center 1600 BEFORE DONALD E. ADAMS, JEFFREY N. FREDMAN, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 15, which constitute all the claims pending in this application. Claims 2-14 and 16-20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as International Business Machines Corporation. Appeal Br. 3. Appeal 2021-002439 Application 14/930,840 2 CLAIMED SUBJECT MATTER “A filial-I (F1) hybrid is the first filial generation of offspring of distinctly different parental types. Accordingly, crossing two genetically different plants produces an F1 hybrid seed. This can happen naturally and includes hybrids between species. . . . The F1 hybrid offspring of distinctly different parental types produce a new, uniform phenotype with a combination of characteristics from the parents.” Spec. ¶ 4. The claims are directed to “systems and methodologies for analyzing the known genotypes of a sparse number of hybrid F1 progeny in order to reliably estimate the unknown genotypes of their parents.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-based system comprising: A memory; and a processor system communicatively coupled to the memory; the processor system configured to perform processor operations that analyze genotype data of a set of multiple F1hybrid progeny to generate and output a crossing matrix comprising estimated information about unknown parents of the multiple F1 hybrid progeny, the processor operations comprising: receiving data representing chromosome pairs of each genotype of a target subset of the multiple F1 hybrid progeny, wherein the target subset comprises about 10 percent to about 30 percent of the multiple F1 hybrid progeny; organizing the data into a matrix M, wherein each row of the matrix M corresponds to one F1 hybrid progeny of the target subset, wherein each column of the matrix M corresponds to a chromosome pair, wherein each entry of the matrix M corresponds to a chromosome pair of the corresponding F1 hybrid progeny of the target subset; Appeal 2021-002439 Application 14/930,840 3 for each entry of the matrix Min which each chromosome of the entry's chromosome pair is the same, encoding the entry with a first notation indicating that each parent contributed the same chromosome to that chromosome pair; for each entry of the matrix Min which each chromosome of the entry's chromosome pair is different, encoding the entry with a second notation indicating an unknown function; solving for the unknown entries by: comparing each row of the matrix M to identify and group together the rows in which the row entries do not conflict; for the grouped rows in which the entries do not conflict, and in which an entry with the first notation is adjacent to an entry with the second notation, replacing the second notation with the first notation; labeling at least some of the grouped rows in which the row entries do not conflict as having at least one parent in common; labeling at least some of the grouped rows entries as having at least one parent not in common; labeling at least some of the rows that are not grouped as having at least one parent not in common with any of the grouped rows; determining a first set of haploids contributed by the at least one parent in common; determining a second set of haploids contributed by the at least one parent not in common; comparing the first and second sets of haploids to identify and group together the haploids that do not conflict; Appeal 2021-002439 Application 14/930,840 4 merging the haploids that do not conflict in order to identify heterozygous chromosome pairs; and extracting the estimated parents from the identified heterozygous chromosome pairs; and defining, generating, and outputting the crossing matrix comprising the estimated parents and the target subset of the multiple F1 hybrid progeny. REJECTION The Examiner has rejected claims 1 and 15 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter.2 OPINION The Examiner rejected claims 1 and 15 under 35 U.S.C. § 101 as directed to patent ineligible subject matter. See Final Act. 3-7. An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excepted category, we are guided by the Supreme Court’s two-step framework, described in Alice (see id. at 217-18), and Mayo Collaborative Services v. Prometheus Labs., Inc., 2 The claims were rejected for non-statutory obviousness-type double patenting over claim 1 of US Application No. 14/965,350. Final Act. 12. The Examiner withdrew this rejection in view of the abandonment of US Application No. 14/965,350. Ans. 6. Appeal 2021-002439 Application 14/930,840 5 566 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. Concepts that are abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (id. at 219-20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts that are 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 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If a claim is “directed to” an abstract idea, we turn 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. “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). Under the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), we first look to whether a claim recites (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of Appeal 2021-002439 Application 14/930,840 6 organizing human activity such as a fundamental economic practice, or mental processes) (“Guidance Step 2A, Prong One”), and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)) (“Guidance Step 2A, Prong Two”). 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 is 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 (“Guidance Step 2B”). Judicial Exception - Guidance Step 2A, Prong One As indicated above, under Guidance Step 2A, Prong One, we consider whether the claims recite a judicial exception to the statutory categories of patent-eligible subject matter, including one of the following groupings of abstract ideas: (1) mathematical concepts, e.g., mathematical relationships, mathematical formulas or equations, and mathematical calculations; (2) mental processes, e.g., concepts performed in the human mind, including observations, evaluations, judgments, and opinions; and (3) certain methods of organizing human activity. See Guidance, 84 Fed. Reg. at 52. The Examiner determined that under the broadest reasonable interpretation (BRI), the instant claims recite the following steps which, but for the recitation of said computer-based system, could be performed in the mind or via pen and paper and are therefore directed to the judicial exception that is an abstract idea in the grouping of “mental process”. Appeal 2021-002439 Application 14/930,840 7 Final Act. 3. Appellant does not contest the Examiner’s conclusions with respect to Step 2A. See Appeal Br. 14-17. We agree with the Examiner that the claims are directed to a mental process. As the Examiner points out, each of the recited steps are capable of being performed mentally using a pen and paper. Final Act. 3-4. Integration into a Practical Application - Guidance Step 2A, Prong Two According to the Guidance, even if a claim recites any one of the three groupings of abstract ideas, the claim is still not “directed to” a judicial exception (abstract idea), and thus is patent eligible, if “the claim as a whole integrates the recited judicial exception into a practical application of that exception.” Guidance, 84 Fed. Reg. at 53. Limitations that are indicative of “integration into a practical application” include: (1) improvements to the functioning of a computer, or to any other technology or technical field (see MPEP § 2106.05(a)); (2) applying the judicial exception with, or by use of, a particular machine (see id. § 2106.05(b)); (3) effecting a transformation or reduction of a particular article to a different state or thing (see id. § 2106.05(c)); and (4) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see id. § 2106.05(e)). See Guidance, 84 Fed. Reg. at 54-55 (“Prong Two”). In contrast, limitations that are not indicative of “integration into a practical application” include: (1) adding the words “apply it” (or an equivalent) with the judicial exception, merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform Appeal 2021-002439 Application 14/930,840 8 an abstract idea (see MPEP § 2106.05(f)); (2) adding insignificant extra-solution activity to the judicial exception (see id. § 2106.05(g); and (3) generally linking the use of the judicial exception to a particular technological environment or field of use (see id. § 2106.05(h)). See Guidance, 84 Fed. Reg. at 54-55 (“Prong Two”). The Examiner determined that the claims do not integrate the exception into a practical application. See Ans. 9. The Examiner contends that the steps that Appellant identifies as additional steps that integrate the exception into a practical application are part to the mental process and cannot serve as additional steps that integrate the exception into a practical exception. Id. Appellant contends that there several elements of the claims which limit the claims to a practical application including the computer-based system is limited to the practical application of analyzing genotype data of a set of multiple F1 hybrid progeny to generate and output a crossing matrix comprising estimated information about unknown parents of the multiple F1 hybrid progeny: the data received at the processor system is limited to the practical application of data representing chromosome pairs of each genotype of a target subset of the multiple F1 hybrid progeny, wherein the target subset comprises about 10 percent to about 30 percent of the multiple F1 hybrid progeny: the matrix M is limited by the requirement that each row of the matrix M corresponds to one F1 hybrid progeny of the target subset, that each column of the matrix M corresponds to a chromosome pair, and that each entry of the matrix M corresponds to a chromosome pair of the corresponding F1 hybrid progeny of the target subset; for each entry of the matrix M in which each chromosome of the entry's chromosome pair is the same, encoding the entry Appeal 2021-002439 Application 14/930,840 9 with a first notation, wherein the first notation is limited to a notation that indicates that each parent contributed the same chromosome to that chromosome pair; for each entry of the matrix M in which each chromosome of the entry's chromosome pair is different, encoding the entry with a second notation, wherein the second notation is limited to a notation that indicates an unknown function; and defining, generating, and outputting the crossing matrix, wherein the crossing matrix is limited to include the estimated parents and the target subset of the multiple F1 hybrid progeny. Appeal Br. 15-16. Appellant contends that these claims limitations “limit the alleged mental process in multiple ways to the specific practical application of providing a format (the cross-matrix) for communicating a known set of progeny and their estimated parents.” Id. at 16. Appellant also contends that the Examiner has failed to properly analyze the pending claims. Id. Appellant contends that the Examiner has not properly supported the assertions that the additional elements cited by Appellant are part of the judicial exception and do not render the claims patentable. Id. at 16-17. We have considered the arguments presented by the Examiner and Appellant and conclude that the additional elements cited by Appellant do not incorporate the judicial exception into a practical application. As the Examiner points out, steps of the claims which comprise the judicial exception include: "organize data into a matrix", which is a step that can be performed mentally by operations using a pen and paper to establish, for example, a spread sheet; "solving" entries by "comparing" is a step performed, for example, visually, by observation of said rows and columns in a Appeal 2021-002439 Application 14/930,840 10 matrix and identification of entries that do not conflict with one another; "labeling" and "determining" are further mental operations; "comparing" is a further comparison step that requires no more than a human operator to make an observation about data and compare it; "merging the haploids that do not conflict" is also an operation that can be mentally performed, using pen and paper when armed with the appropriate data, such as by using a spreadsheet to identify those data that do not conflict and organize the data accordingly; and "extracting" the estimated parents from identified data; and defining and generating a crossing matrix of the estimated parents" and "defining", "generating" are steps that also can be mentally performed. Ans. 8-9. These mental operations define the judicial exception and cannot be used to show integration into a practical application. See Genetic Techs. V. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2019) (“The inventive concept necessary at step two of the Mayo/Alice analysis cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.”). The remaining steps recited in the claims involve computer implementation of the claims and receiving data. We agree with the Examiner that these additional steps do not integrate the exception into a practical application as both step of steps are described at a high level of generality. Ans. 9. For example, the computer is used merely as a tool for performing mental operations. Id. There is nothing that suggests that the operation of the computer is altered by the performance of the recited steps. Id. Appeal 2021-002439 Application 14/930,840 11 With respect to the Examiner’s analysis, we do not agree with Appellant that it is conclusory or unsupported. As shown, the Examiner has pointed out that basis for the finding that the “additional” steps are part of the judicial exception and do not show integration into a practical application. See Ans. 8-10. In addition, the Examiner has provided citation the MPEP and decisions by our reviewing court which support the Examiner’s position. Id. Inventive Concept - Guidance Step 2b Under Guidance Step 2B, we determine whether the claim provides an “inventive concept,” i.e., whether the additional elements beyond the judicial exception, individually and in combination, amount to “significantly more” than the judicial exception itself. Guidance, 84 Fed. Reg. at 56. According to the Guidance, “simply append[ing] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality,” is indicative that an inventive concept is absent. Id. We agree with the Examiner that the present claims do not present limitations which amount to something significantly more than the judicial exception. See Ans. 17-18. The claims only recite generic computer elements such as a processor and a memory and do not add anything significantly more that the judicial exception. See Appeal Br. 19 (Claims App.). Appellant’s arguments with respect to inventive concept are the same as those for integration into a practical application. See Appeal Br. 15-16. Here again, Appellant is relying of elements of the judicial exception to show an inventive concept. Id. Like the issue of integration discussed above, Appeal 2021-002439 Application 14/930,840 12 the judicial exception cannot be the basis of showing an inventive concept. Genetic Techs., 818 F.3d at 1376. Appellant contends that the additional claim limitations cited by Appellant limit the claims such that they do not monopolize the mental process and thus fall within the catch-all example of the Guidelines. Appeal Br. 16. We ae not persuaded by this argument. Our reviewing court has expressly rejected similar contentions regarding preemption, stating that a patentee’s “attempt to limit the breadth of the claims by showing alternative uses . . . outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The court explained that, “[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. . . . Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework . . . preemption concerns are fully addressed and made moot.” Id. Based on the foregoing, we agree with the Examiner that the claims are directed to an abstract idea, specifically mental operations and, as presently drafted, do not incorporate the exception into a practical application. Therefore, we affirm the Examiner’s finding that the claims are directed to patent ineligible subject matter. CONCLUSION The Examiner’s rejection is affirmed More specifically, Appeal 2021-002439 Application 14/930,840 13 The rejection of claims 1 and 15 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 15 101 Eligibility 1, 15 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED