Jingwen Yao

Patent Trials and Appeals Board

Jan 10, 2020

14471825 - (D) (P.T.A.B. Jan. 10, 2020)

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.
14/471,825 08/28/2014 Jingwen YAO Q213475 6744
23373 7590 01/10/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
01/10/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JINGWEN YAO
Appeal 2018-006926
Application 14/471,825
Technology Center 1600
Before RICHARD M. LEBOVITZ, RYAN H. FLAX, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–7, and 9–12 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “Shimadzu
Corporation.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a mass spectrometric apparatus and method
for identifying a target peptide in a test sample. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A mass spectrometric apparatus that identifies a target
peptide in a test sample based on MSn spectrum data,
comprising:
a mass spectrometer that performs an MSn analysis (n is
an integer equal to or larger than 2) on the test sample to
provide the MSn spectrum data, which indicates dissociated
ions of the test sample; and
a data analyzing section including a sequence tag
database and configured for:
a) establishing the sequence tag database in advance
obtaining, from an amino acid sequence of a known peptide and
MSn spectrum information, a sequence tag, which is a partial
amino acid sequence, and spectrum peak information
corresponding to the sequence tag;
b) acquiring a sequence tag of the target peptide by
collating peak information extracted from a measured MSn
spectrum obtained for the test sample with information in the
sequence tag database; and
c) identifying a peptide by performing a database search
in the sequence tag database or in a protein database using, as
search conditions, the sequence tag for the target peptide
obtained by the acquiring the sequence tag and mass of a
precursor ion deriving from the target peptide.
See Response to Notification of Non-Compliant Appeal Brief, filed Jan. 31,
2018 (“Response”), at Claims Appendix.
REJECTION
Claims 1, 3–7, and 9–12 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 3.
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OPINION
There are two independent claims, claims 1 and 7. Appellant made
the same arguments for both independent claims. Appeal Br. 4–7; Reply Br.
2–6. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
Examiner’s Findings
The Examiner acknowledged that the claims recite the use of a mass
spectrometer and performing MSn analysis to generate and analyze spectrum
data. Final Act. 3. Nevertheless, the Examiner found that the claims
“embrace[] an[] abstract series of purely algorithmically driven data analysis
steps.” Final Act. 4. The Examiner stated that “the claims do not recite any
improvement or alteration to the manner in which a mass spectrometer is
used or any improvement to the spectrometer itself.” Final Act. 4. The
Examiner further stated that the claims “fail[] to alter the contents of a
sample, prior to or following spectroscopic testing,” and thus “practicing the
claimed invention does not involve any particular or practical application of
the newly recognized identity of a samples contents.” Final Act. 5. The
Examiner concluded: “Since the claims do not add anything significantly
more than conventional and routine approaches to collecting MSn
spectroscopic data, then the claims remain essentially directed to a method
of calculating, using a mathematical formula, even if the solution is for a
specific purpose.” Final Act. 5–6.
Appellant’s Contentions
In response, Appellant argued that “although the present invention
includes computer-based data analysis, the claim is directed to [] physical
structures: including a mass spectrometer and a data analyzing section, and
is not a mere algorithm.” Appeal Br. 5. Appellant further argued that the
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claims are “not directed to any mathematical formula,” and “not merely
directed to manipulation of data,” but rather require “‘identifying a peptide’
in a sample.” Appeal Br. 5. Appellant additionally argued that “the claims
are ‘significantly more’ than a mere abstract idea because they are directed
to a specific solution to a technical problem in the technical field of mass
spectrometry, i.e., the improvement of the ability of a mass spectrometric
apparatus to identify a target peptide in a test sample.” Appeal Br. 5–6.
Analysis
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. See, e.g., Alice Corp. v. CLS Bank Int’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. Alice, 573 U.S. 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.”
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. Kappos, 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 by the courts to be abstract ideas, and thus
patent ineligible, include certain methods of organizing human activity, such
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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 (Gottschalk v. Benson, 409 U.S. 63, 67
(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 182 n.7 (quoting Corning v.
Burden, 56 U.S. 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 187, 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 also 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 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-
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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.
In January 2019, the United States Patent and Trademark Office
published revised guidance on the application of section 101. See USPTO’s
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7. 2019) (“Guidance”). Under the Guidance, in determining what
concept a claim is “directed to” (“Step 2A”), 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)).
See Guidance, 84 Fed. Reg. at 54–55.
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 contains an “‘inventive concept’ sufficient to ‘transform’”
the claimed judicial exception into a patent-eligible application of the
judicial exception (“Step 2B”). Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 82); Guidance, 84 Fed. Reg. at 56. In so doing, we thus consider
whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine and 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 Guidance, 84 Fed. Reg. at 56.
Guidance Step 2A, Prong 1
Pursuant to the Guidance, we begin by determining whether the
claims recite any judicial exception(s) to patent eligibility. Guidance, 84
Fed. Reg. at 54. The Examiner found that the claims recite an “abstract
series of purely algorithmically driven data analysis steps” and are
“essentially directed to a method of calculating, using a mathematical
formula.” Final Act. 4, 6. On the record before us, we determine that the
Examiner has not established that Appellant’s claims recite a judicial
exception. Thus, we determine that the Examiner has not carried the burden
of establishing a prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
First, the Examiner has not alleged, and there is no evidence of record,
that the claims recite any method of organizing human activity, such as
fundamental economic practices, commercial or legal interactions, or
managing personal behavior or relationships or interactions between people.
See Guidance, 84 Fed. Reg. at 52. Second, the Examiner has not alleged,
and there is no evidence of record, that the claims recite mental processes, or
concepts that can be performed in the human mind. See id.; see also, e.g.,
SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir.
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2010) (claims found patent eligible, despite reciting a method for
calculating, where claims were “not dealing with . . . a method that [could]
be performed without a machine,” and there was “no evidence . . . that the
calculations [could] be performed entirely in the human mind”).
The final category of abstract ideas identified by the courts is
mathematical concepts, which is the focus of the Examiner’s rejection. See
Guidance, 84 Fed. Reg. at 52. Contrary to the Examiner’s assertions, we
find that the claims do not explicitly recite any mathematical concept, such
as a specific mathematical algorithm or formula. See, e.g., Flook, 437 U.S.
at 586; Diehr, 450 U.S. at 187. While some of the steps of Appellant’s
claims may be based on mathematical concepts, the mathematical concepts
are not recited in the claims. Accordingly, in light of the Guidance, we find
that the Examiner has not established that the claims recite an abstract idea
that would make them patent-ineligible under 35 U.S.C. § 101. See
Guidance, 84 Fed. Reg. at 54 (“If the claim does not recite a judicial
exception, it is not directed to a judicial exception (Step 2A: NO) and is
eligible.”); see also Ex parte Linden, Appeal No. 2018-003323, at 10 (PTAB
Apr. 1, 2019) (informative) (reversing examiner’s eligibility rejection of a
method for transcribing speech, where the Board found that step of using
“predicted character probabilities” to decode a transcription did not recite a
mathematical algorithm or formula). Pursuant to the Guidance, because the
claims do not recite an abstract idea or other judicial exception, this
concludes the eligibility analysis. See Guidance, 84 Fed. Reg. at 54.
CONCLUSION
We reverse the rejection of claims 1, 3–7, and 9–12 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7, 9–12 101 Eligibility 1, 3–7, 9–12
REVERSED