Ex Parte Gallagher

Patent Trials and Appeals Board

Jul 9, 2019

14059315 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/059,315 10/21/2013
29540 7590
DAY PITNEY LLP
One Canterbury Green
201 Broad Street
Stamford, CT 06901
07/11/2019
FIRST NAMED INVENTOR
Steven J. Gallagher
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.
170865.005700 6007
EXAMINER
LAU,TUNGS
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
07/11/2019 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):
Patents@daypitney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEVEN J. GALLAGHER
Appeal2018-007077
Application 14/059 ,315
Technology Center 2800
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-5 and 7-20 under 35 U.S.C. § 101 as
directed to patent ineligible subject matter. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision refers to the Specification ("Spec.") filed October 21, 2013,
the Examiner's Final Office Action ("Final Act.") dated November 13, 2017,
Appellant's Appeal Brief ("Appeal Br.") filed March 27, 2018, the
Examiner's Answer ("Ans.") dated April 19, 2018, and Appellant's Reply
Brief ("Reply Br.") filed June 19, 2018.
2 Appellant is the Applicant, Caliper Life Sciences, Inc., which is identified
in the Appeal Brief as the real party in interest (Appeal Br. 2).
Appeal2018-007077
Application 14/059 ,315
STATEMENT OF THE CASE
The invention relates to the graphical display of chromatographic
separation data in the form of a series of measurements indicating presence
of constituents in a sample at a scanning location over time as a series of
bands. Spec. 1: 19-21; 4: 19-21. Such chromatographic data obtained in the
form of optical intensity, e.g., fluorescence, UV absorbance, as a function of
time yielding a chromatogram, can be displayed in a band format, such as a
vertical ladder. Id. at 4: 11-14.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A method of acquiring and displaying chromatographic
separation data, comprising:
acquiring, using a device that analyses a plurality of
samples, first a series of measurements indicating presence of
constituents and at least one marker in a first sample at a
detection system and then a series of measurements indicating
presence of constituents and at least one marker in a second
sample at the detection system;
displaying the series of measurements for the first sample
as a first series of bands;
identifying at least one peak in the series of
measurements for the first sample the corresponds to the at least
one marker;
identifying at least one peak in the series of
measurements for the second sample that corresponds to the at
least one marker;
transforming the measurements for the second sample by
scaling the series of measurements for the second sample based
on the identified at least one peak in the first and second
samples, so that the displayed bands that correspond to the at
least one marker in the first and second samples are aligned
when displayed; and
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displaying the series of measurements for the second
sample as a second series of bands adjacent to the first series of
bands.
Appeal Br. 13
ANALYSIS
Appellant argues the rejected claims together as a group.
Accordingly, we select claim 1 as the representative claim on which we
focus in deciding this appeal.
After review of the Examiner's and Appellant's opposing, articulated
positions, the claims and the Specification, we determine that the
Appellant's arguments are insufficient to identify reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated rejection for substantially the fact findings
and the reasons set forth in the Final Office Action and the Examiner's
Answer. We offer the following for emphasis only.
The Examiner determines that the claims are directed to the abstract
idea of a method of acquiring and displaying chromatographic separation
data, "an idea of itself," and a mathematical relationship/formula. Final Act.
2, 4-5, 6, 7. The Examiner finds that the claims do not recite additional
elements sufficient to amount to significantly more than the judicial
exception because the steps of the recited method are recited at a high level
of generality, and are routine or conventional elements necessary to facilitate
the application of the abstract idea. Id. In particular, the Examiner finds that
the steps of acquiring, displaying, identifying, and transforming do not add a
meaningful limitation to the abstract idea because they are recited at a high
level of generality and because they represent extra-solution activity to
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provide data necessary for the abstract idea. Id. at 3. The Examiner
concludes that, when considered individually and in combination, the
additional elements do not add significantly more to the abstract idea. Id.
The Examiner further finds that because claim 1 fails to identify a
particular use or application, it does not qualify as an improvement to a
particular technology or technical field. Final Act. 7. Instead, the Examiner
finds that claim 1 only generally and broadly links the method to a
technological environment. Id. The Examiner also finds that the method
does not amount to an improvement in the functioning of a computing
device itself because it only recites a device generically. Id. at 7-8.
Appellant argues that claim 1 is not directed to an abstract idea under
Enfzsh. Appeal Br. 4-7, citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016). Appellant contends that claim 1 represents an
improvement to computer functionality which is supported in the
Specification. Id. at 6. Appellant expresses a belief that claim l's
"transforming step alone involves much more than simply 'acquiring and
displaying chromatographic separation data."' Id. at 5. Appellant urges that
displaying the data such that at least one marker in the first and second
samples are aligned distinguishes further from a simple display. Id. at 5-6.
Appellant asserts that among the benefits the recited method provides is an
ability to display serially collected data in a more conventional format using
a single standard ladder, thereby saving time and expense. Id. at 6. In
addition, Appellant asserts that another advantage of the recited method is
the ability to automatically align the various constituents represented in two
or more samples to markers. Id. at 7. Therefore, invoking Enfzsh, Appellant
contends that the rejection impermissibly describes the claims at a high level
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of abstraction untethered from the claim language. Id. at 6; see also Reply
Br. 8-10.
Given the above, Appellant considers that analysis of the second step
of the test for subject matter eligibility, the identification of significantly
more than a judicial exception, is not required. Appeal Br. 7. However,
Appellant argues that even if claim 1 recites an abstract idea, this claim
recites elements that amount to significantly more than the abstract idea. Id.
Appellant contends that there is no support for the Examiner's finding that
claim 1 is directed to a mathematical relationship or formula. Id. at 8.
Appellant also contends that the Examiner determination that claim 1 fails to
identify a particular use or application and does not qualify as an
improvement to a particular technology or technical field is wrong. Id.,
citing generally to Spec. 1: 19-4:4 and the claim 1 preamble.
Appellant next argues that claim 1 is not directed to an abstract idea
under McRO. Appeal Br. 9-10, citing McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016); see also Reply Br. 10-
11. Appellant contends that McRO, like claim l's scaling step, recited claim
elements for alignment of auditory data with visual data based on certain
rules. Appeal Br. 10. Appellant urges that claim 1 recites claim elements
for alignment of display of a first sample with a second sample based on at
least one marker. Id. Appellant further urges that McRO provided for
achieving results similar to those achieved manually, and claim 1 "provides
a computer implemented method of displaying chromatographic separation
data." Id.
Appellant next attempts to distinguish the claims from Electric Power
Group, arguing that claim 1 is directed to a new source of information and
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recites new techniques for analyzing it. Appeal Br. 10-11. Appellant urges
that claim 1 has been examined and, in view of the prior art, been found to
contain novelty. Id. at 11; see also Reply Br. 7-8. Appellant also urges that
claim 1 contains technology that does more than merely make use of a
computer as a tool to implement conventional techniques. Appeal Br. 11.
Rather, according to Appellant, claim 1 recites improvements to computer
technology. Id.
Legal Framework
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 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'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, our
inquiry focuses on the Supreme Court's two-step 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. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk.").
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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 (Gottschalkv. Benson, 409 U.S. 63, 69 (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 (1853))); 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
Supreme 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 176; 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 Supreme 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. ( 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.").
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If the claim is "directed to" an abstract idea, we tum 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-
eligible application." Alice, 573 U.S. at 221 ( 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. (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.
The Office recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"), 84 Fed. Reg. 50.
Under that guidance, 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim recites a judicial exception and 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.
See generally Memorandum.
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Analysis
Applying the guidance set forth in the Memorandum, we sustain the
Examiner's rejection under§ 101 that claims 1-5 and 7-20 do not recite
patent-eligible subject matter.
Revised Step 2A, Prong One-Directed to a Judicial Exception
The Memorandum instructs us first to determine whether each claim
recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The
Memorandum identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. Id. at 52.
The Examiner identifies that claim 1 recites an abstract idea-a
method of acquiring and displaying chromatographic separation data-but
does not indicate in which of the above groupings this abstract idea fits. The
Examiner does indicate that claim 1 is directed both to the above abstract
idea and a mathematical relationship or formula, but does not indicate which
steps correspond to the mathematical relationship or formula or how the
claim otherwise recites a mathematical relationship or formula. For the
reasons given below, as well as in the Final Office Action and the Answer,
we determine that claim 1 recites an abstract idea that encompasses either or
both mental processes and mathematical concepts.
Claim 1 includes steps of identifying at least one peak in each of the
series of measurements for the first and second samples that corresponds to
at least one marker. As the Examiner recognizes, these steps are recited at a
high level of generality such that they can be performed in the human mind
by merely observing the displayed first series of bands and then finding a
similar location for the marker in the second series of measurements. Both
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these identifying steps require judgment and may be performed in the human
mind. As such, claim 1 recites a mental process of identifying peaks in a
pair of series of measurements.
Claim 1 also includes steps of displaying the series of measurements
for the first and second samples as first and second series of bands, and a
step of transforming the measurements for the sample by scaling these
measurements based on the identified peaks in the first and second samples,
so that the displayed bands corresponding to the marker in are aligned when
displayed. In the Specification, Appellant discloses that the position and
intensity of the standard marker is determined so that the position and
intensity of each band for each detected constituent in a sample may be
scaled or appropriately calculated. Spec. 34: 12-17; Fig. 12. This scaling
process is described as normalizing the display of the series of
measurements. Spec. 28: 1-29:5 and 30:3-17; Figs. 7 and 9. This
normalization calculates according to the scaling determined using the
standard marker position and intensity, the position and intensity of each of
the series of bands in each displayed sample. Thus, the steps of displaying
and transforming recited in claim 1 recite a mathematical concept.
The remaining step of claim 1, acquiring series of measurements for
first and second samples using a device that analyses a plurality of samples,
is recited at a high level of generalization and merely provides information
to be used in the process. As Appellant acknowledges, claim 1 is directed to
a method providing a new way to display chromatographic data. Although
Appellant urges that the source of that data is new, Appellant fails to direct
our attention to any evidence that the chromatographic separation data
acquired in the first step of claim 1 is a new source of this information. To
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the contrary, Appellant discloses that the chromatographic separation data is
that which was obtained in the prior art by known techniques and apparatus.
Spec. 4:7, 12-13; 6:3-7:12; 9:6-11; and 10:5-9.
The Federal Circuit noted that "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," and "merely
presenting the results of abstract processes of collecting and analyzing
information, without more" is abstract and thus the claims focused on the
combination of these abstract ideas. Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016). The Federal Circuit has
summarized such a situation in this way:
We have explained that claims focused on "collecting
information, analyzing it, and displaying certain results of the
collection and analysis" are directed to an abstract idea.
Electric Power, 830 F.3d at 1353. "Information as such is an
intangible," hence abstract, and "collecting information,
including when limited to particular content (which does not
change its character as information), [i]s within the realm of
abstract ideas." Id. ( citing cases). So, too, is "analyzing
information ... by mathematical algorithms, without more." Id.
at 1354 (citing cases, including Parker v. Flook, 437 U.S. 584,
98 S. Ct. 2522, 57 L. Ed. 2d 451 (1978), and Gottschalk v.
Benson, 409 U.S. 63, 93 S. Ct. 253, 34 L. Ed. 2d 273 (1972)).
And "merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis." Id. ( citing
cases). The claims here are directed [to] abstract ideas under
those principles.
SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
Like the claims in Electric Power Group and SAP America, "[t]he
claims in this case are directed to abstract ideas. The focus of the claims, as
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is plain from their terms, quoted above, is on selecting certain information,
analyzing it using mathematical techniques, and reporting or displaying the
results of the analysis. That is all abstract." SAP America, 898 F.3d at 1167.
Thus, in accordance with the PTO's policy guidance, we identify claim 1 as
reciting both mental processes and mathematical concepts.
Revised Step 2A, Prong Two - Practical Application
Having determined that claims 1-15 and 26 recite the abstract concept
of a mental process, we next look to determine whether the claims recite
"additional elements that integrate the judicial exception into a practical
application." MPEP § 2106.05(a)-(c), (e)-(h); Memorandum, 84 F.3d at
53-54. Integration into a practical application requires an additional element
or a combination of additional elements in the claim to "apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the exception." Memorandum, 84 Fed. Reg. at 53-54; see
also id. at 55 (setting forth exemplary considerations indicative that an
additional element or combination of elements may have integrated the
judicial exception into a practical application).
Here, we find none. We find that the additional elements claim 1
recites, both individually and as an ordered combination, do not integrate the
judicial exception into a practical application. Although Appellant argues
that the claims recite an improvement to the functioning of a computer, we
disagree. Initially, we note that claim 1 does not recite that the method is
computer-implemented. Nor does claim 1 recite that the method is
performed using a computer, processor, or similar computing device. The
only apparatus recited in claim 1 are the "device that analyses a plurality of
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samples" and the "detection system," neither of which expressly or
necessarily implicate a computer. The Specification discloses a variety of
such devices and systems, none of which are or necessarily include a
computer. Spec. 4:7, 12-13; 6:3-7:12; 9:6-11; and 10:5-9. We
acknowledge that Appellant discloses that the invention provides a computer
implemented method of displaying chromatographic separation data. Id.
4:18-19, 5:3-4, 16-17; Fig. 2. However, while we construe claims in light
of the Specification, we do not import limitations from the Specification into
the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed.Cir. 2005) (en
bane). Thus, there is no computer in claim 1 that would have improved
functionality.
Further, the transforming and display steps of claim 1 are not used to
improve the performance or any capability of a computer. Instead, these
steps merely enable the display of the same data in a different, albeit
improved, manner to improve an observer's ability to visually compare
chromatographic data for a plurality of samples. Although the claimed
method permits the use of a single standard over a plurality of samples,
Appellant does not explain how this single standard improves the
functioning of a computer. Indeed, any time and expense savings would be
not because a computer has been improved, but because the performance of
a standard run does not have to be repeated over a variety of samples, though
standard markers must still be included in every sample. Therefore,
Appellant's argument that the claimed invention represents an improvement
to the functioning of a computer is unsupported on the record. For this
reason and for the reasons given by the Examiner (see Ans. 3-6), we agree
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with the Examiner that the claims before us in this appeal distinguish from
those in Enfish.
We next tum to the question as to whether claim 1 represents an
improvement to another technology or technical field. As the Examiner
indicates, claim 1 recites a method of acquiring and displaying
chromatographic data. The acquisition step is merely a step for gathering
and providing data to be used in the process. This step is recited at a high
level of generality and merely includes known techniques for obtaining the
chromatographic data. This step, therefore, represents insignificant extra-
solution activity. The process of claim 1 converts this data into a series of
bars each representing a different constituent in a sample, wherein each bar
represents a peak in the data associated with a particular constituent. This
conversion of data is implicit and is recited at a high level of generality.
Claim 1 recites transforming the data for the second sample based on
identifying the peak in the data for a marker and scaling the data based on
the identified peak. Claim 1 does not recite, in any detail, how this scaling is
done, though the Specification indicates that scaling normalizes the position
and intensity of each constituent peak based on the position and intensity of
the marker peak. But claim 1 is not so limited. Thus, claim 1 merely takes
conventionally obtained data and converts that data from one form of display
to another form of display.
Claim 1 is not, nor are any of its elements, directed to a particular
machine or transformation. The device and detection system are generically
recited and the transformation step converts the information from one form
to another, and is not a physical transformation. As such, these recited
structures do not integrate the mental processes or mathematical concept
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recited or implicated in claim 1 into a practical application. See
Memorandum, 84 Fed. Reg. at 55 (setting forth examples in which a judicial
exception has not been integrated into a practical application).
We further note that these steps are similar to other concepts the
courts have identified as abstract mental processes. See Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016) (methods of logic
circuit design, comprising converting a functional description of a level
sensitive latch into a hardware component description of the latch); Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014) (organizing information through mathematical correlations). In
Electric Power Group, our reviewing court explained that concepts of
collecting and analyzing information, when broadly claimed, fall within the
"realm of abstract ideas":
Information as such is an intangible. See Microsoft Corp. v. AT
& T Corp., 550 U.S. 437,451 n.12 (2007); Bayer AG v. Housey
Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003).
Accordingly, we have treated collecting information, including
when limited to particular content (which does not change its
character as information), as within the realm of abstract ideas.
See, e.g., Internet Patents, 790 F.3d at 1349; OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015);
Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). In a similar vein,
we have 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. See, e.g., TL! Commc'ns, 823 F.3d at 613; Digitech,
758 F.3d at 1351; SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F. App'x 950, 955 (Fed. Cir. 2014); Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687
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F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRF
Tech., Inc. v. Int'! Trade Comm 'n, 601 F.3d 1319, 1333 (Fed.
Cir. 2010); see also Mayo, 132 S. Ct. at 1301; Parker v. Flook,
437 U.S. 584, 589-90 (1978); Gottschalkv. Benson, 409 U.S.
63, 67 (1972). And we have recognized that merely presenting
the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool
for presentation), is abstract as an ancillary part of such
collection and analysis. See, e.g., Content Extraction, 776 F.3d
at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014).
Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1353-54
(Fed. Cir. 2016).
In McRO, the Federal Circuit disagreed with a district court's
determination that claims were "drawn to the [abstract] idea of automated
rules-based use of morph targets and delta sets for lip-synchronized three-
dimensional animation." McRO, 837 F.3d at 1313 (quoting McRO, Inc. v.
Sony Computer, Entm 't Am., LLC, 55 F.Supp.3d 1214, 1226 (C.D. Cal.
2014)). Instead, the Federal Circuit determined that "the claims are limited
to rules with specific characteristics." Id. More specifically, the Federal
Circuit stated:
[a]s the district court recognized during claim construction, "the
claims themselves set out meaningful requirements for the first
set of rules: they 'define[] a morph weight set stream as a
function of phoneme sequence and times associated with said
phoneme sequence."'
Id. The Federal Circuit determined "[t]he specific, claimed features of these
rules allow for the improvement realized by the invention." Id. Moreover,
the Federal Circuit recently stated: "[ o Jur recent abstract idea exception
decisions likewise have stressed that a claimed invention must embody a
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concrete solution to a problem having 'the specificity required to transform a
claim from one claiming only a result to one claiming a way of achieving
it."' Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir.
2018) (citing SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021-22
(Fed. Cir. 2018) (collecting cases)).
A comparison of claim 1 here to claim 1 of McRO demonstrates
substantial differences between the facts of this appeal and the facts of
McRO. Claim 1 of McRO recites a method for automatically animating lip
synchronization and facial expression of 3-D characters comprising, among
other things, "obtaining a first set of rules that define output morph weight
set stream as a function of phoneme sequence and time of said phoneme
sequence." McRO, 837 F.3d at 1307-08. As noted above, the Federal
Circuit determined "the claims are limited to rules with specific
characteristics." Id. at 1313.
In contrast, Appellant's claims 1 does not recite any rules with
specific characteristics. Although mathematical relationships and algorithms
are implicated in the recitations of claim 1, this claim does not actually recite
any particular rules. Claim 1 generally recites acquiring a series of
chromatographic measurements for first and second samples; displaying the
series of measurements for the first sample as a first series of bands;
identifying a peak in the series of measurements for the first sample that
corresponds to a marker; identifying the peak in the series of measurements
for the second sample that corresponds to the marker; transforming the
measurements for the second sample by scaling based on the identified peak
in the first and second samples, to align the bands when displayed; and
displaying the series of measurements for the second sample as a second
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Application 14/059 ,315
series of bands adjacent to the first series of bands. Such a level of
generality does not limit the claims to rules with specific characteristics, as
inMcRO.
Accordingly, we are not persuaded that claim 1 recites "additional
elements that integrate the judicial exception into a practical application."
Step 2B-Inventive Concept
Because we determine that claim 1 is directed to an abstract idea and
does not include additional elements that integrate the abstract idea into a
practical application, we look to whether this claim provides an inventive
concept, i.e., adds a specific limitation beyond the judicial exception that is
not "well-understood, routine, conventional" in the field. Memorandum, 84
Fed. Reg. at 56. Again, we find none. As we've determined above, claim 1
merely recites acquiring chromatographic data for a plurality of samples
each containing at least one marker, using a "device that analyses a plurality
of samples" and a "detection system." The Examiner finds that this
acquisition step using these apparatus is recited at a high level of generality
and are well-understood, routine, and conventional in the industry.
Appellant does not challenge this finding. In addition, this finding is
supported by Appellant's disclosure which teaches the acquisition of
chromatographic data using such a device and detection system was known
in the industry, thus recognizing the well-understood, routine, and
conventional nature of this step. See Spec. 4:7, 12-13; 6:3-7:12; 9:6-11;
and 10:5-9.
Accordingly, we conclude that method claim 1-5 and 7-20 are
directed to patent ineligible subject matter under 35 U.S.C. § 101. They
ensnare the basic idea of acquiring and manipulating data for display based
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Application 14/059 ,315
on abstract mental processes and a mathematical concept, and do not recite
additional elements that integrate those mental processes into a practical
application. Further, acquiring that data using a device and detection system
that analyze a plurality of samples does not transform the method into a
patentable process; the idea remains a pre-empted mental process and
mathematical concept. Alice, 573 U.S. 208,216 (2014) ("We have
described the concern that drives this exclusionary principle as one of pre-
emption.") (citing Bilski v. Kappas, 561 U.S. 593, 612 (2010) ("[U]pholding
the patent 'would pre-empt use of this approach in all fields, and would
effectively grant a monopoly over an abstract idea."')). Here, the
manipulation and display steps of the claims are abstract ideas, and the use
of a generically recited analytical device does not transform the nature of the
abstract decision-making process design output into something that is patent
eligible.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner's Answer, the decision of the
Examiner rejecting claims 1-5 and 7-20 under 35 U.S.C. § 101 as directed
to patent ineligible subject matter is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
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