Bassett, Douglas E. et al.Download PDFPatent Trials and Appeals BoardMar 2, 202014356846 - (R) (P.T.A.B. Mar. 2, 2020) Copy Citation 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. 14/356,846 05/07/2014 Douglas E. Bassett JR. 3225.0230002 1708 26111 7590 03/02/2020 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER DEJONG, ERIC S ART UNIT PAPER NUMBER 1631 NOTIFICATION DATE DELIVERY MODE 03/02/2020 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): e-office@sternekessler.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DOUGLAS E. BASSETT JR. and DANIEL R. RICHARDS ____________ Appeal 2018-007839 Application 14/356,846 Technology Center 1600 ____________ Before DONALD E. ADAMS, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of the Decision mailed November 27, 2019 (“Decision”) affirming the rejection of claims 1, 2, 5, 7, 9, 11–14, and 16–23 under 35 U.S.C. § 101 as is directed to patent-ineligible subject matter. We have jurisdiction over the Request under 35 U.S.C. § 6(b). ANALYSIS Appellant contends that the Board misapprehended and overlooked: (1) “[T]he process of claim 1 is different from the existing manual process for filtering genetic variants” (Req. Reh’g 3; see id. at 3–4); (2) “the ‘existing manual process’ for filtering genetic variants cannot be performed on a computer” (id. at 4); (3) “Appellant’s arguments with respect to McRO Appeal 2018-007839 Application 14/356,846 2 v. Bandai, 837 F.3d 1299 (Fed. Cir. 2016)” (Req. Reh’g 4; see id. at 4–6); and (4) “neither the Final Office Action on which this Appeal was based, nor the Examiner’s Answer, argued that the claims recited a mathematical concept or a mental concept, and so the Board’s deciding these points in the first instance without Appellant having the opportunity to address such allegations constitutes an undesignated new ground of rejection” (id. at 7; see id. at 7–8). Notwithstanding Appellant’s contention to the contrary, the Decision addressed Appellant’s contentions regarding their filtering process, including its relationship to a manual process (see Decision 10–12 and 15– 16; cf. Req. Reh’g 3–4) and McRO (see Decision 15; cf. Req. Reh’g 4–6). Therefore, we are not persuaded by Appellant’s first three contentions. A Request for Rehearing is not an opportunity to reargue points merely because Appellant does not agree with the result of the Board’s Decision. See 37 C.F.R. § 41.52. With respect to Appellant’s fourth contention, we note that although Examiner did find that Appellant’s claims “implement the mathematical/algorithmic analysis of test value data using a processor of a computer system” (see Ans. 7–8), Examiner did not expressly identify a mental process aspect of Appellant’s claimed invention. Therefore, Appellant is correct in that a “mental concept” was raised for the first time in the Decision and, thus, the affirmance of the rejection under 35 U.S.C. § 101 should have been designated a new ground of rejection (see Req. Reh’g 7– 8). Therefore, recognizing that our affirmance of the rejection under 35 U.S.C. § 101 raised new issues not previously addressed on this record, we Appeal 2018-007839 Application 14/356,846 3 modify our Decision to designate our affirmance of the rejection under 35 U.S.C. § 101, as it appears in the Decision, a NEW GROUND OF REJECTION so as to afford Appellant a fair and full opportunity to respond. Because the status of the claims has not changed, however, this rehearing is DENIED. Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Basis Denied Granted 1, 2, 5, 7, 9, 11–14, 16–23 101 Subject Matter Eligibility 1, 2, 5, 7, 9, 11–14, 16– 23 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed New Ground 1, 2, 5, 7, 9, 11–14, 16–23 112 ¶ 1 Written Description 1, 2, 5, 7, 9, 11–14, 16–23 1, 2, 5, 7, 9, 11–14, 16–23 112 ¶ 2 Indefiniteness 1, 2, 5, 7, 9, 11–14, 16–23 1, 2, 5, 7, 9, 11–14, 16–23 101 Subject Matter Eligibility 1, 2, 5, 7, 9, 11–14, 16–23 1, 2, 5, 7, 9, 11–14, 16–23 Overall Outcome 1, 2, 5, 7, 9, 11–14, 16–23 1, 2, 5, 7, 9, 11–14, 16–23 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to Appeal 2018-007839 Application 14/356,846 4 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED; 37 C.F.R. §41.50(b) Copy with citationCopy as parenthetical citation