Joannes Baptist Van Zon et al.

Patent Trials and Appeals Board

May 26, 2020

2020001485 (P.T.A.B. May. 26, 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.
13/515,853 06/20/2012 Joannes Baptist Adrianus Dionisius Van Zon 2009P01480WOUS 4363
24737 7590 05/26/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
HOLLINDEN, GARY E
ART UNIT PAPER NUMBER
1641
NOTIFICATION DATE DELIVERY MODE
05/26/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOANNES BAPTIST ADRIANUS DIONISIUS VAN ZON,
TOON HENDRIK EVERS, and MAATJE KOETS
____________

Appeal 2020-001485
Application 13/515,853
Technology Center 1600
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–10, 13, 14, and 16 (see Final Act.2 2). 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 “Koninklijke
Philips N.V.” (Appellant’s February 4, 2019 Appeal Brief (Appeal Br.) 1).
2 Examiner’s August 27, 2018 Final Office Action.
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STATEMENT OF THE CASE
Appellant’s disclosure
relates to a substance determining apparatus and substance
determining method for determining a substance within a fluid.
The invention relates further to a binding device and an
analyzing device for cooperating with each other for
determining a substance within a fluid, to an analyzing method
for determining a substance within a fluid, and an analyzing
computer program for determining a substance within a fluid.
(Spec. 1:6–11.) Appellant’s independent claims 1, 13, and 14 are
reproduced below:
1. An apparatus for determining a substance within a fluid, the
apparatus comprising:
a cartridge having a channel including a sensing location
having a sensing cavity and a binding surface for binding a
plurality of particles having magnetic properties, wherein the
binding surface is structured such that particles of the plurality
of particles that bind to the binding surface bind with one of
two types of binding with a first type of binding being a
specific predetermined type of binding and a second type of
binding being a non-specific type of binding;
a particle detector configured to receive the cartridge and
to generate a temporal position signal indicative of
corresponding positions of the plurality of particles over a given
temporal period;
at least one light detector configured to receive and detect
a reflection of radiation from a detection plane defined by the
binding surface; and
a processor and a processor storage medium having
instructions stored thereon, the processor configured by the
instructions stored on the processor storage medium to perform
acts of
[(a)] determining a particle release curve indicative
of a release of the bound particles from the binding
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surface based on the generated temporal position signal
over the given temporal period,
[(b)] separating a part of the particle release curve
caused by particles bound to the binding surface that are
indicative of the first type of binding from the second
type of binding based on a temporal behavior of the
particle release curve over the given temporal period, and
[(c)] determining a substance within the fluid
based only on the part of the particle release curve which
is indicative of the first type of binding.
(Appeal Br. 21–22 (annotation added for reference purposes).)
13. A method for determining a substance within a fluid on a
cartridge, the method comprising acts of:
attaching a portion of a plurality of particles having
magnetic properties to the substance within the fluid;
structuring a binding surface of the cartridge such that
particles of the plurality of particles that bind to the binding
surface bind with one of two types of binding with a first type
of binding being a specific predetermined type of binding and a
second type of binding being a non-specific type of binding;
binding the plurality of particles to the binding surface of
the cartridge;
generating a temporal position signal indicative of
corresponding positions of the plurality of particles;
receiving and detecting a reflection of radiation from a
detection plane defined by the binding surface;
[(a)] determining a particle release curve indicative of a
release of the bound particles from the binding surface using the
generated temporal position signal over a given temporal
period;
[(b)] separating a part of the particle release curve caused
by particles bound to the binding surface that are indicative of
the first type of binding from the second type of binding based
on a temporal behavior of the particle release curve over the
given temporal period; and
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[(c)] determining the substance within the fluid based
only on the part of the particle release curve which is indicative
of the first type of binding.
(Id. at 25–26 (annotation added for reference purposes).)
14. An analyzing method for determining a substance within a
fluid, the analyzing method comprising:
generating a temporal position signal indicative of
corresponding positions of a portion of a plurality of particles
having magnetic properties being attached to the substance
within the fluid and bound on a binding surface of a cartridge
including the fluid, wherein the binding surface is structured
such that particles of the plurality of particles bound to the
binding surface bind with one of two types of binding with a
first type of binding being a specific predetermined type of
binding and a second type of binding being a non-specific type
of binding;
receiving and detecting a reflection of radiation from a
detection plane defined by the binding surface;
[(a)] determining a particle release curve indicative of the
release of the bound particles from the binding surface based on
the generated temporal position signal over a given temporal
period;
[(b)] separating a part of the particle release curve caused
by particles bound to the binding surface that are indicative of
the first type of binding from the second type of binding based
on a temporal behavior of the particle release curve over the
given temporal period; and
[(c)] determining the substance within the fluid based
only on the part of the particle release curve which is indicative
of the first type of binding.
(Id. at 26 (annotation added for reference purposes).)

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Claims 1–10, 13, 14, and 16 stand rejected under 35 U.S.C. § 101.

ISSUE
Does the preponderance of evidence of record support Examiner’s
finding that Appellant’s claimed invention is directed to patent-ineligible
subject matter?
PRINCIPLES OF LAW
A. Section 101
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 U.S. 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 Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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. 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 to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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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 (1854))); 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
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; 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 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. (citation omitted)
(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 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 (internal 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. (alterations in original) (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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).3 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
Under the Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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, 84 Fed. Reg. at 52–56.
ANALYSIS
(Step 1)
We first consider whether the claimed subject matter falls within the
four statutory categories set forth in § 101, namely “[p]rocess, machine,
manufacture, or composition of matter.” Guidance, 84 Fed. Reg. at 53–54;
see 35 U.S.C. § 101. Appellant’s claims 1–10 and 16 are directed to an
apparatus, i.e. machine. Appellant’s claims 13 and 14 are directed to
methods, i.e. processes, and, therefore, squarely fall within the statutory

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance — Section III(A)(2), 84 Fed. Reg. at
54–55.
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categories set forth in § 101. Therefore, we proceed to the next steps of the
analysis.
(Step 2A, Prong 1)
Examiner finds that Appellant’s claims recite an abstract idea,
wherein an analyte is determined by steps (a)–(c), which
compris[e] calculating a particle release curve over a given
temporal period, performing a series of calculations on the
particle release curve to differentiate the raw temporal signal
based upon the type of binding to obtain a particle release curve
based only on the predefined type of binding and then
comparing the obtained particle release curve to known particle
release curves to determine the binding substance.
(Ans. 4; see also id. at 8 (Examiner finds that “each of the ‘determining’ and
‘separating’ processes is indistinguishable from a mental process even if
they are, or are intended to be, carried out by a computer”).) Stated
differently, because steps (a)–(c) can be performed in the human mind, the
claimed steps of determining and selecting are mental steps that constitute
abstract ideas. See Guidance, 84 Fed. Reg. at 52 (abstract ideas include
“[m]ental processes––concepts performed in the human mind (including an
observation, evaluation, judgment, opinion)” (footnote omitted); cf. Appeal
Br. 7–8 (Appellant contends that its claims do not recite an abstract idea)).
Thus, Appellant’s claims recite a judicial exception.
(Step 2A, Prong 2)
Having determined that Appellant’s claims recite a judicial exception,
the Guidance requires an evaluation as to whether the claim as a whole
integrates the recited judicial exception into a practical application of the
exception. See 84 Fed. Reg. at 54.

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On this record, we find that Appellant’s claims recite additional
elements that integrate the judicial exceptions into practical applications.
Specifically, in addition to reciting an abstract idea in steps (a)–(c),
Appellant’s claims comprise, inter alia, a cartridge, binding surface, and
particles having magnetic properties (see Appeal Br. 8–11 (Appellant
contends that “each [of its] independent claim[s] recites additional elements
that integrate the alleged exception into a practical application of that
exception”); see also id. at 8–11). The particle cartridge is arranged in a
particular way to provide for different kinds of binding and the detector is
configured in such a way as to receive the cartridge and generate a temporal
sensing signal depending on the bound particles over a given temporal
period so as to be able to differentiate kinds of binding and thus provide for
a substance to be able to be determined based on the particular kind of
binding (see, e.g., Spec. 5–6; Reply Br. 4 (“The processor is configured by
the instructions stored on the processor storage medium to perform acts as
recited in claim 1, which acts are tied to and use the temporal position signal
generated by the particle detector.”)). See, e.g., Versata Development Group
v. SAP America, 793 F.3d 1306, 1335 (Fed. Cir. 2015) (explaining that in
order for a machine to add significantly more, it must “play a significant part
in permitting the claimed method to be performed, rather than function
solely as an obvious mechanism for permitting a solution to be achieved
more quickly”). The additional elements recited in Appellant’s claims
implement the “judicial exception with, or uses [the] judicial exception in
conjunction with, a particular machine or manufacture that is integral to
[Appellant’s] claim[s]” and, thus, integrates the judicial exception into a
practical application (see Guidance, 84 Fed. Reg. at 55).
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We recognize Examiner’s assertion that the “steps of collecting data
for a particle release curve are well-understood, routine, and conventional
activities, as are the components required for these activities” (see Ans. 5–6
(citing Tibbe,5 Prins,6 and Van Lankvelt7)). We find, however, that although
Appellant’s claimed invention may include conventional elements, for the
reasons set forth above, the additional elements set forth in Appellant’s
claims integrate the exception into a practical application and, thereby,
satisfy the subject matter eligibility requirement. See Guidance, 84 Fed.
Reg. at 55 (“[A] claim that includes conventional elements may still
integrate an exception into a practical application, thereby satisfying the
subject matter eligibility requirement of Section 101.”).
In sum, for the reasons discussed, we conclude that although
Appellant’s claims recite mental processes, the claims recite additional
elements sufficient to integrate the mental processes into a practical
application. Therefore, we find that Appellant’s claims are not directed to
subject matter that is ineligible for patenting and reverse Examiner’s
rejection on that ground.
CONCLUSION
The preponderance of evidence of record fails to support Examiner’s
finding that Appellant’s claimed invention is directed to patent ineligible
subject matter. The rejection of claims 1–10, 13, 14, and 16 under 35 U.S.C.
§ 101 is reversed.

5 Tibbe et al., US 2006/0024756 A1, published Feb. 2, 2006.
6 Prins et al., WO 2009/013662 A1, published Jan. 29, 2009.
7 Van Lankvelt et al., WO 2009/072045 A1, published June 11, 2009.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 13, 14,
16
101 Eligibility 1–10, 13,
14, 16

REVERSED