Ex Parte Aume et al

Patent Trials and Appeals Board

Jun 11, 2019

13596374 - (D) (P.T.A.B. Jun. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/596,374 08/28/2012 Laura L. Aume
92395 7590 06/13/2019
Thomas E. Lees LLC
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BAT 026 USUAl 2952
EXAMINER
90 Rhoads Center Drive CASEY, LIAM R
Dayton, OH 45458
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
06/13/2019 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):
blees@lees-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURAL. AUME, THEODORE J. RONNINGEN,
STEVE RUST, and JENNIFER L. WIGHTMAN
Appeal2018-008445
Application 13/596,374
Technology Center 2800
Before GRACE KARAFFA OBERMANN, DONNA M. PRAISS, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-5, 7-15, 17, and 21-23 2. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants claim a computer-implemented method of locating and
removing spike noise from spectral data (independent claim 1 ), a method of
1 Appellants identify Battelle Memorial Institute as the real party in interest.
Appeal Brief filed March 19, 2018 ("App. Br."), 1.
2 Final Office Action entered October 20, 2017 ("Final Act.").
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Application 13/596,374
locating and removing noise spikes from spectral data (independent
claim 15), and a system for spectral analysis of data (independent claim 22).
Claim 1 illustrates the subject matter on appeal and is reproduced below
with contested language italicized:
1. A computer-implemented method of locating and
removing spike noise from spectral data comprising:
collecting, by a spectrometer of an imaging system, a
plurality of replicates of spectral data, wherein:
each collected replicate comprises a plurality of
pixels read from a charge coupled device of the
spectrometer, each pixel having an associated intensity
value; and
the plurality of replicates represents discrete
instances of spectral data obtained sequentially, from a
sample under interrogation;
communicating the plurality of replicates of spectral data
to a processing device;
performing, by a processor of the processing device,
replicate processing to condition the intensity values of the
collected replicates by compensating pixel intensity values in at
least a subset of the plurality of pixels of a corresponding one
of the plurality of replicates, that are invalid for subsequent
pixel processing and spike noise filtering;
performing, by the processor of the processing device,
pixel processing to identify outliers corresponding to noise
spikes within the plurality of replicates by collectively
evaluating the conditioned intensity values of the plurality of
replicates as a function of pixel position by:
computing for each pixel, a residual for each
replicate; and
identifying whether an outlier exists for each pixel
by:
identifying the replicate having the
maximum residual value for each pixel location;
and
declaring the pixel location for the replicate
having the maximum residual value at each pixel
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location an outlier if the value of that maximum
residual is greater than a predetermined threshold;
wherein performing pixel processing further
includes transforming the replicates by adjusting the
intensity values of the plurality of replicates based upon a
predetermined function;
performing, by the processor of the processing device,
spike noise filtering by removing each identified outlier from its
replicate and by replacing the removed outlier value with a
computed approximation of an intensity value based on
intensity values of other replicates of the plurality of replicates
for the pixel of the replicate associated with the outlier at that
removed outlier pixel position;
consolidating, after performing the spike noise filtering,
the plurality of replicates into a consolidated spectrum; and
performing spectral analysis on the consolidated
spectrum.
App Br. 39--40 (Claims Appendix) (emphasis added).
The Examiner maintains the following rejections in the
Examiner's Answer entered June 21, 2018 ("Ans."):
I. Claims 1-5, 7-15, 17,and21-23under35U.S.C. § 112,first
paragraph as failing to comply with the written description requirement; and
II. Claims 1-5, 7-15, 17, and 21-23 under 35 U.S.C. § 101 as
directed to subject matter judicially excepted from patenting without
significantly more.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' timely contentions, 3 we affirm the Examiner's rejection
3 We do not consider any new argument Appellants raise in the Reply Brief
that Appellants could have raised in the Appeal Brief. 37 C.F.R.
§ 4I.37(c)(l)(iv); 37 C.F.R. § 4I.41(b)(2) (arguments raised for the first
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of claims 1-5, 7-14, and 21-23 under 35 U.S.C. § 112, first paragraph, and
rejection of claims 1-5, 7-15, 17, and 21-23 under 35 U.S.C. § 101, for
reasons set forth in the Final Action, the Answer, and below. We reverse the
Examiner's rejection of claims 15 and 17 under 35 U.S.C. § 112, first
paragraph, for reasons set forth in the Appeal Brief and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellants provide for each ground of rejection
Appellants contest. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (Explaining that even if the Examiner
had failed to make a prima facie case, "it has long been the Board's practice
to require an applicant to identify the alleged error in the examiner's
rejections.")).
Rejection I
Claims 1-5, 7-15, 17, and 21-23: "spectral analysis"
The Examiner finds that Appellants' Specification does not provide
written description support for "performing spectral analysis on the
consolidated spectrum" as recited in independent claim 1, "performing
spectral analysis on the single spectrum that is free of cosmic noise spikes"
as recited in independent claim 15, and "performing spectral analysis on the
consolidated set of spectral data" as recited in independent claim 22. Final
Act. 8-9. The Examiner finds that the Specification discloses that cosmic
spikes can interfere with analysis, and removing cosmic spike noise renders
a filtered spectrum suitable for implementing spectral analysis, but "does not
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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teach actually performing that spectral analysis." Final Act. 8. The
Examiner finds that "analysis" is a broad term, and "simply teaching to
perform analysis without any guidelines does not adequately convey what
steps are to be performed to a person of ordinary skill." Id. The Examiner
finds that because the claims are "computer implemented," the disclosure is
insufficient because "the step of 'performing spectral analysis' does not have
any associated algorithm in the specification." Id.
Appellants argue that the Specification provides written description
support for "performing spectral analysis" on a consolidated spectrum, a
single spectrum free of cosmic noise spikes, and a consolidated set of
spectral data, obtained as recited in independent claims 1, 15, and 22,
respectively, in view of the following disclosures in the Specification. App.
Br. 15-20; Reply Br. 2-6.
The Background section of the Specification explains that "various
spectroscopic methods, including Raman spectroscopy, can be
advantageously employed in the practical identification of particulates."
Spec. ,r 3. In dispersive Raman spectroscopy, as the Background further
explains, a laser is used as an excitation source to focus light onto a particle,
and the light interacts with chemical bonds of the particle to produce Raman
lines having a wavelength shifted relative to that of the wavelength of the
excitation laser light. Id. After filtering light from the sample area of the
particle to block the excitation wavelength, and using a grating to disperse
the filtered light, the Specification explains that the dispersed, filtered light
travels to an optical detector, such as a charge coupled device camera
(CCD), which captures spectral data representative of the Raman spectrum
of the particle. Spec. ,r 3--4. The Specification indicates that "data captured
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by the CCD can be utilized as a signature, which is typically compared to a
library of previously determined signatures to identify the material excited
by the laser." Spec. ,r 4.
The Detailed Description section of the Specification discloses that
"detection of biological and chemical materials can be accomplished
according to various aspects of the present invention, using an imaging
system 10," as shown in Figure 1. Spec. ,r 32. Figure 1 illustrates "a system
for collecting and filtering spectral data for subsequent analysis of the
filtered spectral data." Spec. ,r 8. As Appellants argue, one of ordinary skill
in the art would recognize from these disclosures that Appellants' invention
involves using an imaging system to collect spectral data from a sample,
filtering the spectral data (as discussed below), and, as described in the
Background section of the Specification, identifying biological and chemical
materials by comparing the filtered data to spectral data of known
materials----or performing "spectral analysis." App. Br. 15. One of ordinary
skill in the art would thus understand that performing spectral analysis is
implicit in the detection of biological and chemical materials using spectral
data obtained from an imaging system, as Appellants further argue. App.
Br. 15-16.
Appellants also point to the Specification's disclosure that cosmic
spike noise can distort spectral data, and can therefore interfere with spectral
analysis and classification. App. Br. 16-17 ( citing Spec. ,r,r 41, 42, 67). The
Specification describes locating and eliminating such spike noise according
to Appellants' invention, which the Specification indicates "render[ s] the
filtered spectrum suitable for implementing spectral analysis." Spec. ,r 68.
As Appellants argue, "[b]ecause the Appellant's system is purposefully for
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the detection of biological and chemical materials, one of skill in the art will
readily understand that if a biological sample is collected and interrogated
(e.g., using the imaging system 10 of FIG. 1), then the spectrum collected
from the collection and interrogation is analyzed." App. Br. 17.
"[T]he test for sufficiency [ of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en bane). "[H]ow the specification accomplishes this is not
material." In re Herschler, 591 F.2d 693, 700--01 (CCPA 1979) (internal
citations omitted) ("The claimed subject matter need not be described in
haec verba to satisfy the description requirement. It is not necessary that the
application describe the claim limitations exactly, but only so clearly that
one having ordinary skill in the pertinent art would recognize from the
disclosure that appellants invented processes including those limitations.")
What is conventional or well known to one of ordinary skill in the art
need not be disclosed in detail. Hybritech Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986); see also Capon v. Eshhar, 418
F.3d 1349, 1358 (Fed. Cir. 2005) ("The 'written description' requirement
must be applied in the context of the particular invention and the state of the
knowledge .... As each field evolves, the balance also evolves between
what is known and what is added by each inventive contribution.").
As discussed above, the Specification explains that spectroscopic
methods, such as Raman spectroscopy, are well-known methods used in the
art to identify----or classify-a given material by comparing spectral data
obtained from the material to that of known materials. Such "spectral
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analysis" for the "detection of biological and chemical materials" thus
constitutes a well-known and conventional technique in the art.
Accordingly, "spectral analysis" as applied to a consolidated spectrum, a
single spectrum free of cosmic noise spikes, and a consolidated set of
spectral data produced as recited in claims 1, 15, and 22, need not be
described in detail in the Specification to satisfy the written description
requirement. Consequently, contrary to the Examiner's assertion, the
Specification need not disclose the details of "performing spectral analysis"
in order to provide written description support for this phrase as it is used in
claims 1, 15, and 22. Hybritech, 802 F. 2d at 1384.
Furthermore, although the Examiner finds that "analysis" is a broad
term, and "simply teaching to perform analysis without any guidelines does
not adequately convey what steps are to be performed to a person of
ordinary skill," claims 1, 15, and 22 do not recite "analysis" in isolation as
the Examiner implies. Rather, claims 1, 15, and 22 recite "performing
spectral analysis" on a consolidated spectrum, a single spectrum free of
cosmic noise spikes, and a consolidated set of spectral data, produced
according to the numerous steps recited in the claims. When one of ordinary
skill in the art considers "performing spectral analysis" in the context in
which this phrase occurs in the independent claims, in view of the
description provided in the Specification as a whole, including the
disclosures discussed above, and in light of the knowledge and
understanding of one of ordinary skill in the art at the time of filing, the
ordinarily skilled artisan would recognize that Appellants were in possession
of "performing spectral analysis" on a consolidated spectrum, a single
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spectrum free of cosmic noise spikes, and a consolidated set of spectral data,
obtained as described in the Specification and recited claims 1, 15, and 22.
Furthermore, although the Examiner asserts that because the claims
are "computer implemented," the disclosure is insufficient because "the step
of 'performing spectral analysis' does not have any associated algorithm in
the specification," as discussed above, the details of a known, conventional
technique-including any associated algorithm-need not be provided in the
Specification to satisfy the written description requirement. Hybritech, 802
F. 2d at 1384.
We accordingly do not sustain the Examiner's rejection of
independent claims 1, 15, and 22, and also claims 2-5, 7-15, 17, and 21,
which each depend from either claim 1, 15, or 22, for lack of written
description support for "spectral analysis."
Claim 23: "classification"
Claim 23 depends from claim 22 and recites performing
"classification of the consolidated spectrum." The Examiner finds that this
step is "not supported by the written description, which only teaches that
cosmic spikes can interfere with classification." Final Act. 9.
As discussed above for claims 1, 15, and 22, however, the
Specification explains that spectroscopy is a well-known method used in the
art to identify----or classify-a given material by comparing spectral data
obtained from the material to that of known materials. Such "classification"
for the detection of biological and chemical materials thus constitutes a well-
known and conventional technique in the art. Consequently, "classification"
of a consolidated spectrum need not be described in detail in the
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Specification to satisfy the written description requirement. Hybritech, 802
F. 2d at 1384.
We accordingly do not sustain the Examiner's rejection of claim 23
for lack of written description support for "classification of the consolidated
spectrum."
Claims 1-5, 7-14, and 21-23: "consolidating"
Appellants present arguments for claim 1, and assert that the
arguments "show support in the specification" for the subject matter at issue
in the remaining claims. App. Br. 15-21. We accordingly select claim 1 as
representative, and decide the appeal as to claims 1-5, 7-14, and 21-23
based on claim 1 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 recites "consolidating, after performing the spike noise
filtering, the plurality of replicates into a consolidated spectrum."
The Specification describes two embodiments of Appellants'
invention, referred to as "Two-Replicate Cosmic Spike Filter for Raman
Spectra," ("the first embodiment") and "Cosmic Spike Filter Based Upon
Multiple Replicate Spectra" ("the second embodiment"). Compare Spec.
,r,r 43-96, with Spec. ,r,r 97-130 ( emphasis added). The Examiner finds that
the Specification only describes "consolidating, after performing the spike
noise filtering, the plurality of replicates into a consolidated spectrum" in
connection with the first embodiment (the two-replicate cosmic spike filter
embodiment). Final Act. 8. The Examiner finds that although claim 1 is
drawn to the second embodiment (the cosmic spike filter based upon
multiple replicate spectra embodiment), the claim nonetheless recites
"consolidating, after performing the spike noise filtering, the plurality of
replicates into a consolidated spectrum." Id. The Examiner finds that the
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Specification, therefore, does not provide written description support for the
"consolidating" element of claim 1. Id.
Appellants argue that "the second embodiment provides support for
the claim element at issue," and Appellants quote paragraph 128 of the
Specification to support this argument. App. Br. 18 (citing Spec. ,r 128).
Appellants also argue that "FIG. 20 shows that the data is averaged to derive
a final, consolidated spectrum." App. Br. 18-19 (citing Fig. 2).
Appellants' arguments are unpersuasive of reversible error in the
Examiner's rejection, however, for reasons that follow.
In the context of describing the first embodiment of Appellants'
invention-two-replicate cosmic spike filter for Raman spectra-the
Specification indicates that after filtering ( or removing) cosmic spikes from
two replicates, "the two resultant locally re-smoothed replicates are summed,
combined or otherwise merged to yield a single spectrum that is free of
cosmic spikes." Spec. ,r,r 43, 53. The Specification, again in the context of
describing two-replicate cosmic spike filtering, refers to this process as
"consolidating" the two replicates "to yield a single set of spectral data that
is free from cosmic spikes." Spec. ,r 82.
In the context of describing the second embodiment----cosmic spike
filter based upon multiple replicate spectra-the Specification describes
acquiring "clean" spectral data free of noise spikes for an array of six pixels
"read out eight times in sequence to derive Replicate 1 through Replicate 8
for each pixel." Spec. ,r 98. The Specification describes averaging the
signal values for the eight replicates at each of the six pixels to obtain an
average signal value for each pixel, and plotting the averaged signal values
against the pixel numbers, as illustrated in Figure 15. Spec. ,r 99. The
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Specification further describes obtaining "noisy" spectral data for six pixels
acquired for eight replicates, and locating and removing noise spikes from
the spectra to obtain filtered and processed signal values for the six pixels of
each replicate. Spec. ,r,r 104--126; Figs. 16-18. The disclosure identified by
Appellants describes averaging the filtered and processed signal values for
each pixel, and plotting the averaged values against the pixel numbers, as
illustrated in Figure 20. Spec. ,r 128. The Specification indicates that
Figure 20 demonstrates that after processing the "noisy" spectral data, the
average signal values for each pixel correspond closely with the average
signal values of the ideal "clean" signal represented in Figure 15 ( discussed
above). Id.
Thus, in a first embodiment, the Specification describes
"consolidating" two filtered replicates into a single spectrum by summing,
combining, or otherwise merging the two filtered replicates, while in a
separate, second embodiment, the Specification describes averaging the
signal values of eight replicates of six pixels to obtain an average signal
value for each pixel. "Consolidating" two filtered replicates as described in
the Specification into a single spectrum by summing, combining, or
otherwise merging the two filtered replicates appears to differ from
averaging the signal values of eight replicates of six pixels. We find no
description in the Specification indicating that this pixel signal averaging
process is the same as, similar to, or encompassed by, "consolidating" two
replicates into a single spectrum as described in the Specification.
Appellants' conclusory arguments do not identify any such disclosure in the
Specification, or explain why one of ordinary skill in the art would consider
these two processes to be analogous, such that describing one process would
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provide written description support for the other process. Consequently,
because "consolidating" is only described in the Specification in connection
with two-replicate cosmic spike filtering (the first embodiment), and because
claim 1 is drawn to cosmic spike filtering based on multiple replicate spectra
( the second embodiment), Appellants' arguments are unpersuasive of
reversible error in the Examiner's finding that the Specification does not
provide written description support for "consolidating, after performing the
spike noise filtering, the plurality of replicates into a consolidated spectrum"
as recited in claim 1.
We accordingly sustain the Examiner's rejection of claims 1-5, 7-14,
and 21-23 under 35 U.S.C. § 112, first paragraph for lack of written
description support for "consolidating" a plurality of replicates into a
consolidated spectrum. We note that claims 15 and 17 relate to two-
replicate cosmic spike filtering (the first embodiment), and, therefore, do not
stand rejected for lack of written description support for "consolidating, after
performing the spike noise filtering, the plurality of replicates into a
consolidated spectrum." Final Act. 8-9.
In summary, we do not sustain the Examiner's rejection of claims 1-
5, 7-15, 17, and 21-23 for lack of written description support for "spectral
analysis" and rejection of claim 23 for lack of written description support for
"classification of the consolidated spectrum." We sustain the Examiner's
rejection of claims 1-5, 7-14, and 21-23 for failing to provide written
description support for "consolidating, after performing the spike noise
filtering, the plurality of replicates into a consolidated spectrum." We thus
affirm the rejection of claims 1-5, 7-14, and 21-23 under 35 U.S.C. § 112,
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first paragraph, and reverse the rejection of claims 15 and 17 under 35
U.S.C. § 112, first paragraph.
Rejection II
We next tum to the Examiner's rejection of claims 1-5, 7-15, 17, and
21-23 under 35 U.S.C. § 101 as directed to subject matter judicially
excepted from patenting without significantly more. Final Act. 9.
Although Appellants present separate arguments for claims 1, 15, and
22, Appellants' arguments for claims 15 and 22 are not substantively distinct
from the arguments Appellants provide for claim 1. Compare App. Br. 21-
31, 35-37, with App. Br. 31-35. We accordingly select claim 1 as
representative, and decide the appeal as to claims 1-5, 7-15, 17, and 21-23
based on claim 1 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
35 U.S.C. § 101 states that "[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof may obtain a patent therefor, subject to
the conditions and requirements of this title." This section of the statute,
however, must be read within the confines of the U.S. Constitution, which
states that Congress's power is limited to laws that "promote the Progress of
... useful Arts." U.S. Const. art. I, § 8, cl. 8. According to the Supreme
Court, "[p ]henomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work." Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70-72 (2012) (quoting Diamond v.
Diehr, 450 U.S. 17 5, 185 (1981) ( quoting Gottschalk v. Benson, 409 U.S.
63, 67 (1972)). "And monopolization of those tools through the grant of a
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patent might tend to impede innovation more than it would tend to promote
it." Id.
As stated in Alice:
Accordingly, in applying the§ 101 exception, we must
distinguish between patents that claim the building blocks of
human ingenuity and those that integrate the building blocks
into something more, thereby transforming them into a patent-
eligible invention. The former would risk disproportionately
tying up the use of the underlying ideas and are therefore
ineligible for patent protection. The latter pose no comparable
risk of pre-emption, and therefore remain eligible for the
monopoly granted under our patent laws.
Alice, 573 U.S. at 217 (internal quotations and citations to Mayo omitted).
In Alice, the Court extended a framework that had been used in Mayo for
distinguishing claims pre-empting laws of nature, natural phenomena, and
abstract ideas from claims amounting to patent-eligible applications of those
concepts. As stated in Alice:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask, what
else is there in the claims before us? To answer that question,
we consider the elements of each claim both individually and as
an ordered combination to determine whether the additional
elements transform the nature of the claim into a patent-eligible
application. We have described step two of this analysis as a
search for an "inventive concept"-i.e., an element or
combination of elements that is sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the ineligible concept itself.
Alice, 573 U.S. at 217-18 (internal quotations and citations omitted).
In 2014, the Office provided Interim Guidance on Patent Subject
Matter Eligibility (79 Fed. Reg. 74618 (Dec. 15, 2014)), which added a first
step of determining whether the claim is directed to one of the statutory
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classes of invention (process, machine, manufacture or composition of
matter) enunciated in§ 101. The Examiner applies the 2014 Interim
Guidance in rejecting claim 1 under 35 U.S.C. § 101. Final Act. 10-11.
The Examiner finds that the steps of "performing ... replicate
processing ... ,""performing ... pixel processing ... ,""performing ...
spike noise filtering ... ," and "consolidating ... the plurality of replicates
into a consolidated spectrum" recited in claim 1 pertain to mathematical
operations and mathematical processing, which are abstract ideas, while the
step of "performing spectral analysis ... " "is a broadly defined analysis
operation, which is abstract consistent with Electric Power Group, LLC v.
Alstom, 830 F.3d 1350 (Fed. Cir. 2016)." Final Act. 10-11 (parallel citation
omitted).
The Examiner finds that the additional steps recited in claim 1 of
"collecting ... a plurality of replicates of spectral data ... " and
"communicating the plurality of replicates of spectral data to a processing
device" describe "nothing more than data gathering necessary to perform the
abstract method by a conventional device and in a conventional manner,"
and, therefore, "do[] not amount to significantly more than the abstract
idea." Final Act. 11. The Examiner finds that the recitation in claim 1 that
the replicate processing, pixel processing, and spike noise filtering are
performed by a processor of a processing device "is equivalent to indicating
that the method is performed by a computer which does not elevate the claim
to significantly more than the abstract idea." Id. The Examiner concludes
that "the claim as a whole does not amount to significantly more than the
abstract idea itself." Id.
Appellants argue that the claimed invention relates to the field of
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using Raman spectroscopy for the analytical identification and classification
of materials, and addresses the technical problem in this field of corruption
of the spectral output of a charge coupled device (CCD) within a Raman
imaging system by random noise spikes, most typically attributable to
cosmic interference. App. Br. 27 ( citing Spec. ,r,r 41, 42). Appellants argue
that the method of claim 1 provides a technical solution to this problem by
removing large noise spikes from spectral data that can distort the true
spectrum of a material being analyzed, which improves the accuracy of the
results of analyzing the material's spectrum (spectral analysis), and the
accuracy of classification and identification of the material based on the
spectrum, and thus improves a technical process. App. Br. 27, 29, 37-38.
Appellants argue that claim 1, therefore, "sits squarely on Diehr." App. Br.
29 (referring to Diamond v. Diehr, 450 U.S. 175 (1981)).
Appellants' arguments are unpersuasive of reversible error in the
Examiner's rejection, however, for reasons discussed below.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("2019 Guidance"). Under the 2019 Guidance, we
first look to whether a claim recites:
(1) any judicial exceptions, including certain groupmgs 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)).
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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.
2019 Guidance 54--57.
Applying step 1 of the 2019 Guidance, we determine that claim 1
recites mathematical concepts. The step in claim 1 of "performing ...
replicate processing ... " involves conditioning the intensity values of
collected replicates. We look to the Specification to inform our
understanding of this claim element, and note that the Specification indicates
that "replicates" are spectra collected at least two discrete times, from a
given sample at a given sample location. Spec. ,r 46. The Specification
describes "replicate processing" as smoothing each replicate using "a
quadratic least-squares procedure," which is a mathematical calculation.
Spec. ,r,r 49, 54--56.
As for the step in claim 1 of "performing ... pixel processing ... ,"
the Specification indicates that each replicate comprises a plurality of pixels,
and each pixel has an associated intensity value. Spec. ,r 105. The
Specification describes identifying outliers corresponding to noise spikes
within a plurality of replicates by collectively evaluating the conditioned
intensity values of the plurality of replicates as a function of pixel position.
Spec. ,r,r 107, 111-112. The Specification describes performing this
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operation by calculating a first standardized residual for the difference
between a first raw replicate and a smoothed version of the first replicate,
and identifying pixel numbers corresponding to potential outliers in the first
raw replicate where the standardized residual value exceeds a predetermined
cutoff value, which involves mathematical calculations. Spec. ,r 58. The
Specification describes comparing the first raw replicate with a second raw
replicate at least at the identified pixel numbers corresponding to potential
outliers, to identify true outliers where the comparison exceeds a
predetermined threshold value. Spec. ,r 59.
The Specification further describes performing pixel adjustments "to
transform the replicates by adjusting the intensity values of the plurality of
replicates based upon a predetermined function" by computing the logarithm
base-e of the intensity ("log(intensity)") for each pixel, implementing "an
exponential to linear curve transformation over each replicate" ( Spec.
,r 112), and "mean centering the pixel values, such as by subtracting the
mean log(intensity) from the ( optionally compensated) log(intensity) values
for each pixel of the subset" (Spec. ,r 114), which involves mathematical
calculations.
Consistent with this description in the Specification, the limitations in
claim 1 of "performing ... replicate processing ... " and "performing ...
pixel processing ... , " recite mathematical concepts, and thus constitute
abstract ideas.
Claim 1 also recites "performing ... spike noise filtering .... " We
again look to Appellants' Specification to inform our understanding of
whether this element of claim 1 recites a judicial exception. The
Specification describes eliminating cosmic noise spikes by recalculating the
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quadratic functions used in the original smoothing process without using the
outlier pixel intensity values, which involves mathematical calculations.
Spec. ,r,r 51, 77-81. Consistent with this description in the Specification, the
step in claim 1 of "performing ... spike noise filtering ... " recites
mathematical concepts, and thus constitute an abstract idea.
Claim 1 also recites "consolidating ... the plurality of replicates into a
consolidated spectrum." We again look to Appellants' Specification to
inform our understanding of whether this element of claims 1 recites a
judicial exception. The Specification explains that after elimination of
cosmic spike noise, the replicates "are prepared for spectral analysis" by
consolidating the replicates into a single spectrum by summing, combining,
or otherwise merging the replicates "to yield a single spectrum that is free of
cosmic spikes," which involves mathematical calculations. Spec. ,r,r 52-53,
82. Consistent with this description in the Specification, the step in claim 1
of "consolidating ... the plurality of replicates into a consolidated spectrum"
recites mathematical concepts, and thus constitutes an abstract idea.
Claim 1 also recites "performing spectral analysis on the consolidated
spectrum." As discussed above for the written description rejection, the
Specification explains that spectroscopic methods, such as Raman
spectroscopy, are well-known methods used in the art to identify----or
classify-a given material by comparing spectral data obtained for the
material to that of known materials. Spec. ,r,r 3--4. As also discussed above,
the Specification explains that such "spectral analysis" of spectral data
collected and filtered to remove cosmic noise spikes according to
Appellants' invention can be used for the "detection of biological and
chemical materials." Spec. ,r 32; see also Spec. ,r,r 43--45 ( describing
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filtering of spectral data to remove noise spikes to prepare the data for
spectral analysis).
Consistent with these disclosures in the Specification, "spectral
analysis" as recited in claim 1 thus relates to a conventional process of
analyzing spectral data by comparing the data to known spectral data, and
identifying similarities and differences between the data sets. Performing
"spectral analysis" as recited in claim 1 is therefore a mental process, which
is an abstract idea. In re BRCAJ & BRCA2-Based Hereditary Cancer Test
Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (concluding that concept of
"comparing BRCA sequences and determining the existence of alterations"
is an "abstract mental process"); see also Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (claim involving "the
idea of collecting and comparing known information," without more, is
directed to an abstract idea).
We next determine whether claim 1 as a whole integrates the recited
mathematical concepts and mental process into a practical application. 2019
Guidance, 84 Fed. Reg. 54--55. In so doing, we look to whether an
additional element or combination of elements recited in the claim-beyond
the mathematical concepts and mental process-integrate the mathematical
concepts and mental process into a practical application. Id.
Claim 1 recites "collecting ... a plurality of replicates of spectral data
... " and "communicating the plurality of replicates of spectral data to a
processing device." These elements of claim 1 relate to data gathering using
conventional equipment, and therefore add only insignificant extra-solution
activity to the recited mathematical concepts and mental process.
CyberSource. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed Cir. 2011).
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The further recitation in claim 1 of "a processor of a processing
device" is merely directed to a generic processor. Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (holding that merely implementing a mathematical
principle on a general purpose computer is a patent ineligible abstract idea).
The elements of claim 1 in their entirety, therefore, recite data
gathering using conventional equipment, manipulating the data through
processes that involve mathematical concepts using a generic processor, and
the mental process of analyzing the manipulated data by comparing it to
known data. Claim 1 as a whole, therefore, does not apply, rely on, or use
the recited mathematical concepts and mental process in a manner that
imposes a meaningful limit on the mathematical concepts and mental
process, and thus does not integrate the mathematical concepts and mental
process into a practical application. 2019 Guidance, 84 Fed. Reg. 54; Diehr,
450 U.S. 192 n.14 ( explaining that the process in Flook was ineligible not
because it contained a mathematical formula, but because it did not integrate
the formula into the process as a whole in a way that transformed the process
into an inventive application of the formula).
As discussed above, Appellants argue that the claimed invention
provides a technical solution to the problem of random noise spikes in
spectral data by removing the noise spikes, which improves the accuracy of
spectral analysis performed on the data, and therefore "sits squarely on
Diehr." The technical solution achieved by Appellants' claims, however, is
embodied in the recited mathematical concepts and mental process
themselves, and relates to an improved algorithm for processing and
analyzing spectral data. Unlike the situation in Diehr where the claimed
process transformed raw, uncured synthetic rubber into precision-molded
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synthetic rubber products by using a mathematical formula to control
operation of a mold, the method of claim 1 does not effect a transformation
of an article to a different state or thing. Diehr, 450 U.S. 184. Rather, claim
1 is similar in nature to the patent ineligible claims at issue in Parker v.
Flook, 437 U.S. 584 (1978), which required (1) collecting data (i.e.,
"[d]etermining the present value of [a] process variable" such as
temperature), (2) subjecting the data to a mathematical operation to
"[ d]etermin[ e] a new alarm base," and (3) on the basis of the result of that
operation, making a determination. Flook, 437 U.S. at 585, 597. Like the
claims in Flook, claim 1 requires (1) collecting data ( collecting or obtaining
spectral data), (2) subjecting the data to mathematical operations
(performing replicate processing, pixel processing, spike noise filtering, and
consolidating), and (3) on the basis of the results of that operation, making a
determination (performing spectral analysis).
Appellants argue that the "claimed invention is analogous to McR04,
i.e., the claimed invention utilizes a specific claimed algorithm that is
different than that applied in the prior art." App. Br. 24. Appellants argue
that "the claimed invention explicitly recites a fundamentally different way
to evaluate spectral data by providing a new and unique process of
identifying and eliminating cosmic spike noise that cannot otherwise be
avoided due to the nature of CCD devices in imaging systems." App.
Br. 24--25.
Unlike McRO, however, where the court held that the claims at issue
were not directed to an abstract idea, but were directed to an improvement in
4 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed.
Cir. 2016).
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computer-related technology, the method of claim 1 recites abstract ideas
(including mathematical concepts and a mental process) as discussed above,
and is not directed to an improvement in computer-related technology
(discussed more fully below). McRO, 837 F.3d at 1316. Claim 1 recites
mathematical concepts in combination with a conventional step of
performing spectral analysis-a step that itself is an abstract mental process,
and cannot be characterized as improving any computer-related technology.
In other words, even if we view claim 1 as directed to a new combination of
abstract ideas-the combination remains abstract and, thus, not patent
eligible. Here, we find controlling clear Federal Circuit precedent that a
"claim for a new abstract idea is still an abstract idea." Synopsis, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
Appellants argue that "unlike Electric Power Group, and analogous to
Enfish5, the claimed invention improves the computer as a tool in a technical
process for collecting and analyzing a spectrum of a sample being evaluated,
e.g., using Raman spectroscopy." App. Br. 30-31. The court in Electric
Power, however, explained that "the claims at issue [in Enfish] focused not
on asserted advances in uses to which existing computer capabilities could
be put, but on a specific improvement-a particular database technique-in
how computers could carry out one of their basic functions of storage and
retrieval of data." Electric Power, 830 F.3d at 1354 (citing Enfish, 822 F.3d
at 1335-36). The court in Electric Power further explained that "[t]he
present case is different: the focus of the claims is not on such an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools." Electric Power, 830 F.3d at 1354.
5 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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Like the claims in Electric Power, and unlike the claims at issue in
Enfish, the focus of claim 1 is not on a specific improvement in how
computers carry out their basic functions, but, rather, the focus is on
mathematical concepts that use computers as tools. More specifically, as
discussed above, claim 1 recites the mathematical concepts of "performing .
. . replicate processing ... ," "performing ... pixel processing ... ,"
"performing ... spike noise filtering ... ," and "consolidating ... the
plurality of replicates into a consolidated spectrum." Claim 1 further recites
using "a processor of the processing device" to perform the replicate
processing, pixel processing, and spike noise filtering. Claim 1 thus recites
using a computer to perform mathematical calculations and operations,
which does not improve how the computer carries out its basic functions.
Consequently, like the claims in Electric Power, claim 1 is not directed to an
improvement in computers as tools.
Although Appellants also argue that "claim 1 cannot reasonably be
construed as purely, a mental process," even if this were the case, claim 1
nonetheless recites mathematical concepts, as discussed above. App. Br. 29.
Appellants' further argument that the Examiner improperly distills the
claims into a "gist" (App. Br. 23-24) ignores the Examiner's detailed
analysis at pages 10 to 11 of the Final Action.
Appellants' arguments, therefore, do not persuade us that claim 1
integrates the recited mathematical concepts into a practical application.
We now look to whether claim 1 adds a specific limitation beyond the
mathematical concepts and mental process that is not well-understood,
routine, or conventional in the field, or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
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at a high level of generality, to the mathematical concepts and mental
process. 2019 Guidance, 84 Fed. Reg. 56-57.
As discussed above, the recitations in claim 1 of "collecting ... a
plurality of replicates of spectral data ... " and "communicating the plurality
of replicates of spectral data to a processing device" relate to data gathering
using conventional equipment. As also discussed above, the further
recitation in claim 1 of a processor of a processing device is merely directed
to a generic processor. Further, as discussed above, the claim appends to the
method a conventional step ("performing spectral analysis") that is
accomplished by an activity routine in the art.
Claim 1 therefore, does not add specific limitations beyond the recited
mathematical concepts and mental process that are not well-understood,
routine, or conventional in the field, and simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the mathematical concepts and mental
process. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).
Because claim 1 recites subject matter judicially excepted from patent
eligibility, does not integrate the judicially excepted subject matter into a
practical application, and simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicially excepted subject matter, we sustain the
Examiner's rejection of claims 1-5, 7-15, 17, and 21-23 under 35 U.S.C.
§ 101.
DECISION
We affirm the Examiner's rejection of claims 1-5, 7-14, and 21-23
under 35 U.S.C. § 112, first paragraph, and rejection of claims 1-5, 7-15,
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17, and 21-23 under 35 U.S.C. § 101, and reverse the Examiner's rejection
of claims 15 and 17 under 35 U.S.C. § 112, first paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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