Ex Parte Lesburg et al

Board of Patent Appeals and Interferences

May 31, 2007

10170131 (B.P.A.I. May. 31, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHARLES A. LESBURG, MICHAEL CABLE, ZHI HONG,
ANTHONY F. MANNARINO, and PATRICIA C. WEBER
__________

Appeal 2007-1164
Application 10/170,131
Technology Center 1600
__________

Decided: May 31, 2007
__________

Before TONI R. SCHEINER , ERIC GRIMES, and
RICHARD M. LEBOVITZ , Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
computer comprising specific data. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). Because we agree
with the Examiner that the patentability of a computer does not depend on
the data stored in it, we affirm.
Appeal 2007-1164
Application 10/170,131

BACKGROUND
The Specification discloses “crystals of a hepatitis C virus RNA
dependent RNA polymerase called NS5B” (Specification 1). The
Specification also describes experiments in which the crystals were used to
determine the three-dimensional structure of the NS5B polymerase (pages
19-24) and the spatial coordinates of its constituent atoms (Table 1, pages
25-53).
DISCUSSION
1. CLAIMS
Claims 24 and 26 are pending and on appeal. The claims have not
been argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). Claim 24 is the only independent claim and reads as
follows:
24. A computer for producing a three-dimensional representation of
a molecule, wherein said molecule comprises an hepatitis C virus (HCV)
NS5B polypeptide, wherein said NS5B polypeptide comprises SEQ ID
NO: 1 with valine at position 335, alanine at position 344, and glutamine
at position 550 and is defined by structure coordinates set forth in Table
1, and wherein said computer comprises:

(a) a machine-readable data storage medium comprising a data
storage material encoded with machine-readable data, wherein
said data comprises the structure coordinates of Table 1;

(b) a working memory for storing instructions for processing
said machine-readable data;

(c) a central-processing unit coupled to said working memory
and to said machine-readable data storage medium for
processing said machine readable data into said three-
dimensional representation; and
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Application 10/170,131

(d) a display unit coupled to said central-processing unit for
displaying said three-dimensional representation.

The storage medium, working memory, central processing unit, and
display recited in claim 24 are components of any run-of-the-mill computer.
The only potential differences between claim 24 and other computers reside
in the preamble and in the data contained in the storage medium.
The preamble of claim 24 states that the computer is “for producing a
three-dimensional representation of . . . an hepatitis C virus (HCV) NS5B
polypeptide . . . defined by structure coordinates set forth in Table 1.” This
preamble language does not further limit the claim, however, because the
body of the claim states that the storage medium of the claimed computer
contains “data compris[ing] the structure coordinates of Table 1.” “If the
preamble adds no limitations to those in the body of the claim, the preamble
is not itself a claim limitation and is irrelevant to proper construction of the
claim.” IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422,
1434, 54 USPQ2d 1129, 1137 (Fed. Cir. 2000).
The other distinction between the computer of claim 24 and other
computers is the focus of this appeal: does the limitation that the claimed
computer “comprises . . . a data storage material encoded with . . . data
compris[ing] the structure coordinates of Table 1” patentably distinguish the
claimed computer from those in the prior art?
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Appeal 2007-1164
Application 10/170,131

2. PRIOR ART
The Examiner relies on the following reference:
Kim US 6,183,121 B1 Feb. 6, 2001

3. OBVIOUSNESS
Claims 24 and 26 stand rejected under 35 U.S.C. § 103 as obvious in
view of Kim. The Examiner points to Kim’s disclosure of “a computer
comprising a machine-readable data storage medium, a working memory, a
central processing unit, and a display for generating a three-dimensional
representation of HCV helicase. See particularly claim 1 and Figure 2”
(Answer 4). The Examiner acknowledges that Kim “does not teach
machine-readable data comprising the structure coordinates of Table 1,” but
concludes that “the machine-readable data required by the claimed computer
is given no patentable weight as it is considered to be non-functional
descriptive material” under In re Gulack, 703 F.2d 1381, 217 USPQ 401
(Fed. Cir. 1983) (Answer 4).
We agree with the Examiner’s analysis and conclusion.
Appellants do not dispute that Kim’s computer differs from that of
claim 24 only in the contents of the stored data. Appellants argue, however,
that under In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994), the
data recited in claim 24 should be considered functional descriptive material:
[T]he Lowry panel noted that since Gulack and other printed
matter cases related to “‘arrangements of printed lines or
characters, useful and intelligible only to the human mind’”,
these cases had “no factual relevance” to a claimed invention in
which the information is “‘processed not by the mind but by a
machine, the computer.’”
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Application 10/170,131

As in Lowry, the structural coordinates stored within the
presently claimed computer are processed by the computer;
indeed, they are essentially unintelligible to the human mind,
and should not be considered as mere printed matter. Thus,
under the logic of In re Lowry, the Patent Office improperly
relies on In re Gulack, in not according the structural
coordinates patentable weight.
(Br. 6-7, footnote omitted.)
We disagree with Appellants’ reading of Lowry. We agree instead
with the Examiner that
Lowry is not analogous to the instant case. . . . [T]he Court held
that . . . “Lowry’s ADOs do not represent merely underlying
data in a database.” In other words, because Lowry’s ADOs
were functionally interrelated with the memory of the computer
to increase computer efficiency, the data were not held to be
merely non-functional descriptive material. In contrast to
Lowry, the data of Table 1 have no such functional relationship
with the computer.
(Answer 8-9.)
Appellants also argue that the data recited in claim 24 is functional
descriptive matter under In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed.
Cir. 2004):
The machine readable structural coordinates enable the
computer to display a three-dimensional representation of the
HCV NS5B protein. . . . The encoded structural coordinates,
being unintelligible to the human mind, could not achieve this
utility without the computer, and the computer would similarly
be unable to achieve this utility without the structural
coordinates. Thus, since the computer and structural
coordinates have an interdependent functional relationship, the
reasoning of In re Ngai compels a finding that the structural
coordinates can not be ignored in an obviousness rejection
simply because they do not perform the specific function of
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“imposing a change in the processing steps performed by the
computer.”
(Br. 7-8.)
Again, we think the Examiner’s view of the case law is the better one:
The structural coordinates as recited in claim 24 are analogous
to the instructions in In re Ngai. The Ngai Court held that “the
printed matter in no way depends on the kit, and the kit does
not depend on the printed matter.” Similarly, the recited
structural coordinates are not functionally related to the
computer because the computer functions the same way
regardless of whether the machine readable medium of the
computer comprises the structural coordinates of Table 1 or not.
(Answer 11.)
Finally, Appellants argue that “there are strong public policy reasons
for reversing the obviousness rejection” (Br. 8). Specifically, Appellants
argue that the rejection “would prevent the Appellants from realizing the full
benefit of the exclusionary rights” to their invention (id.) and “the present
rejection would also place in question the validity of any patents . . . granted
by the Patent Office before it published its present policy” (id. at 9).
Neither of Appellants’ policy-based rationales compel reversing the
rejection. As to the first point, the limits of an inventor’s patent rights are
determined by the patent laws, as interpreted by the courts. The USPTO’s
role is to administer those laws, as interpreted, as accurately as it can. As we
read the court’s interpretation of the law, Appellants’ “exclusionary rights”
to their invention do not extend to the computer defined by claim 24.
As to the second point, the USPTO’s mission to accurately apply the
patent laws requires it to review and adjust its examination standards now
and then. Sometimes, that will result in rejections of subject matter that
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previously may have been allowed. In the end, the standards applied by the
USPTO can be reviewed by the U.S. Court of Appeals for the Federal
Circuit (and, potentially, the U.S. Supreme Court). Any patent applicant
who is dissatisfied with the USPTO’s examination standards can request the
Federal Circuit to reverse a rejection made under those standards. Thus, any
uncertainty caused by changes in an examination standard can be promptly
dispelled by an appeal to the Federal Circuit.
SUMMARY
We agree with the Examiner that the data recited in claim 24 do not
patentably distinguish the claimed computer from the computer disclosed by
Kim. We therefore affirm the rejection of claim 24. Claim 26 falls with
claim 24.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2005).

AFFIRMED

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