Bassett, Douglas E. et al.

Patent Trials and Appeals Board

Mar 2, 2020

14356846 - (R) (P.T.A.B. Mar. 2, 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.
14/356,846 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
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Application 14/356,846

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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
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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)