Ex Parte GALINSKY

Patent Trial and Appeal Board

Nov 6, 2018

13545077 (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/545,077
62439 7590
SINORICA, LLC
20251 Century Blvd.
Suite 140
FILING DATE
07/10/2012
11/08/2018
Germantown, MD 20874
FIRST NAMED INVENTOR
Vitaly L GALINSKY
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.
TP-GAL V-MRA2 5687
EXAMINER
BRUSCA, JOHNS
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
11/08/2018 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):
SINORICA@GMAIL.COM
sinorica@outlook.com
pair@sinorica.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VITAL Y L. GALINSKY
Appeal2017-003297
Application 13/545,077 1
Technology Center 1600
Before ERIC B. GRIMES, JOHN E. SCHNEIDER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of rapidly assessing similarity between genomic sequences, which have been
rejected as being directed to patent ineligible subject matter. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
"Searching databases for sequences similar to a given sequence is
probably one of the most fundamental and important tools for predicting
structural variations and functional properties in the modem biology."
(Spec. 1.) "The rapidly increasing amounts of genetic sequence information
1 Appellant identifies himself as the real party in interest. (Br. 2.)
Appeal2017-003297
Application 13/545,077
available represent a constant challenge to developers of hardware and
software database searching and handling." (Id.) "[T]he invention relates to
a method ... for rapid screening of local sequence similarity." (Id.)
Claims 1-19 are on appeal. Claim 1 is representative and reads as
follows:
1. A method of fast and accurate alignment of genomic
sequences compnsmg:
building indices for reference sequence;
recording all local hits between a reference index and a
query sequence in a local hit table;
identifying candidate entries in said local hits table for
final alignment of said query sequence to said reference
sequence;
decoding unmasked location of said hits in said reference
sequence;
glueing said hits together by filling holes (no local hits)
in said local hit table; and
reporting alignment result;
wherein said genomic sequences are human genomic
sequences; said method is implemented in a computational
system; and said method is implemented with graphics
processing unit (GPU) or Field Programmable Gate Array
(FPGA).
(Br. 8.)
The following ground of rejection by the Examiner is before us on
review:
Claims 1-19 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
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Application 13/545,077
DISCUSSION
The Examiner finds that claim 1 is directed to an abstract idea of
determining similarity between genomic sequences by indexing a reference
sequence and aligning a query sequence to the reference sequence using a
local hit table. (Final Action 3.) The Examiner notes that the additional
limitations of the claims "constitute conventional steps appended to the
abstract idea" as a computer-mediated process using a graphics processing
unit or a field programmable gate array that "do not comprise an inventive
concept that transforms the claimed abstract idea into a patent eligible
application of the abstract idea." (Final Action 5; Ans. 3-5.)
We agree with the Examiner's factual findings and conclusion that
claim 1 is directed to patent ineligible subject matter.
Section 101 provides 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."
35 U.S.C. § 101. In Alice, the Supreme Court articulated a two-step test for
examining patent eligibility under § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347 (2014). Step one involves determining whether the
claims at issue are directed to a patent ineligible concept, and step two,
reached only if the determination in step one is yes, considers the elements
of each claim both individually and "'as an ordered combination"' to
determine whether additional elements "'transform the nature of the claim"'
into a patent eligible application. Id. at 2355.
"The Supreme Court has not 'delimit[ ed] the precise contours of the
'abstract ideas' category."' Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1346 (Fed. Cir.
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Application 13/545,077
2014) (quoting Alice, 134 S. Ct. at 2357). However, our reviewing Court
has held "[i]nformation as such is an intangible" and thus, has "treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (collecting cases); see also SAP America, Inc. v. InvestPic LLC,
898 F.3d 1161, 1162 (Fed. Cir. 2018). Likewise it has "treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category." Elec. Power Grp. 830 F.3d at 1354 (collecting
cases). Claim 1 is directed at abstract ideas under those principles.
The focus of the claim is on organizing information in a particular
way and using that information to perform a computerized search of a
database for sequence alignment, i.e., collection, storage, and comparison of
data. As explained in the Specification the indices are organized as a sorted
array of base pairs (Spec. 5) and then local similarities are found between a
query and reference sequence using a computer that has been appropriately
programmed by comparing the data and the similarity hits are recorded
(Spec. 6-7). Once the entire query sequence has been processed, and hits
have been identified, the computer performs further processing to decode
and piece together the hits (Spec. 8-9.) As the Specification explains, any
conventional computer system can be used to perform the method. (Spec.
10.)
The claimed method does not improve computer technologies as such,
see, e.g., McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016) ( claims reciting rules that improve how a physical
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Application 13/545,077
display operated through computer automation to produce "accurate and
realistic lip synchronization and facial expressions in animated characters"),
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1305 (Fed. Cir.
2018) ( claims were directed to employing a new kind of file that enables a
computer security system to do things it could not do before), or recite steps
or rules that solve a technological problem in the use of computers in a
particular way, see, e.g., Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327,
1335-36 (Fed. Cir. 2016) (claims recite employing a particular database
technique to improve how computers carry out storage and retrieval of data,
i.e., a software method that improves the way the computers themselves
operate); Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1348--49 (Fed. Cir. 2016) (inventive concept in the non-
conventional and non-generic arrangement of known, conventional pieces,
including installation of a filtering tool at a specific location, remote from
the end-users, with customizable filtering features specific to each end user,
giving "the filtering tool both the benefits of a filter on a local computer and
the benefits of a filter on the ISP server"). The Specification explains that
the use of the "alignment tool" allows rapid assessment of a similarity
between genomic sequences. (Spec. 3.) While the rules implicit in building
the indices recited in the claims and the manner of comparing the data speed
up the sequencing analysis, they do not improve computer technology per se.
The claim instead invokes computers in the collection and arrangement of
data. Claims with such character do not escape the abstract idea exception
under Alice step one. See, e.g., Smart Sys. Innovations, LLC v. Chicago
Transit Authority, 873 F.3d 1364, 1372-73 (Fed. Cir. 2018); RecogniCorp
LLP v. Nintendo Co. Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017). That the
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Application 13/545,077
claimed method results in faster identifications does not take the claim out of
the realm of the abstract. Our reviewing court has held that speed and
accuracy increases stemming from the ordinary capabilities of a general
purpose computer "do[] not materially alter the patent eligibility of the
claimed subject matter." Bancorp Servs., L.L. C. v. Sun Life Assurance Co.
of Canada, 687 F.3d 1266, 1278 (Fed. Cir. 2012).
Turning to Alice step-two, while the Examiner indicated in the Final
Rejection that the claim recites additional elements beyond the abstract idea
that are conventional (Final Action 5), in the Answer, the Examiner
explained that the only additional element to the judicial exception is that
"the process is computer mediated" (Ans. 3). We agree that claim 1 does
not recite steps that are additional elements beyond the abstract idea. The
steps of the method are simply collecting information, organizing it, and
comparing it, which are abstract ideas. Indeed, Appellant does not argue
that claim 1 includes unconventional steps beyond the abstract idea of
collection, storage, and comparison of data that is the indexing and aligning
using a hit table. Instead, Appellant simply argues that neither DNA nor
RNA (recited in claims 18 and 19) is an abstract idea and that because the
method is directed to rapidly assessing similarity between genomic
sequences, the method of these claims is more than a pure abstract idea. (Br.
4) For the reasons discussed above, however, we disagree that the claim is
not directed to an abstract idea even though it concerns sequence analysis of
DNA and/or RNA. The fact that claims 1, 18, and 19 are limited to a
particular field in which the data is organized and analyzed "does not render
the claims any less abstract." Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1259 (Fed. Cir. 2016) (that "merely limiting the field of use
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of the abstract idea to a particular ... environment does not render the
claims any less abstract."); see also Smart Sys., 873 F.3d at 1373; Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014) (
Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. "If a claim
is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific
purpose, the claimed method is nonstatutory." Parker v.
Flook, 437 U.S. 584, 595 ... (1978) (internal quotations
omitted)).
Indeed, "the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015). "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the [two-step] framework, as
they are in this case, preemption concerns are fully addressed and made
moot." Id.; see also Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1321 (Fed. Cir. 2016) ("A narrow claim directed to an abstract
idea, however, is not necessarily patent-eligible .... "); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the
claims do not preempt all [inventions in the field] or may be limited to
[certain processes in the field] do[es] not make them any less abstract.").
Appellant also asserts that the claimed invention is "a process for
solving technical problems in the technical field of biotechnology." (Br. 5.)
We disagree that the claimed invention solves a technical problem of the
type that is patent-eligible. While the claims may be directed to an
improvement in the processing of information, e.g., providing for "rapid
assessment of a similarity between genomic sequences in a linear time
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O(M)" (id.at 5-6), collecting and processing information without more is
within the realm of abstract ideas, as explained above. Moreover, even if the
way in which the data is compiled were new, the compilation of data and its
additional manipulation and storage in a particular way, which is the
"writing alignment tool" (Br. 5) that provides for the rapid assessment (see,
e.g., Spec. 5-7), is still just a manipulation of information as such. "[A]
claim for a new abstract idea is still an abstract idea." Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Similarly, a
claim for a beneficial abstract idea is still an abstract idea. See Ariosa, 788
F.3d at 1379-80.
Consequently, for the reasons discussed above, we sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 2-19 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1-19 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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