Ex Parte Linssen et al

Patent Trial and Appeal Board

Oct 26, 2018

12888821 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/888,821 09/23/2010
757 7590 10/26/2018
BGL
P.O. BOX 10395
CHICAGO, IL 60610
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Jo Linssen
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.
11333/370 5172
EXAMINER
MARTINEZ, REBECCA L
ART UNIT PAPER NUMBER
1641
MAIL DATE DELIVERY MODE
10/26/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JO LINSSEN and MICHAEL SCHAEFER
Appeal2017-002470
Application 12/888,821 1
Technology Center 1600
Before DONALD E. ADAMS, RYAN H. FLAX and DAVID COTTA,
Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a blood
cell counter. The Examiner rejected the claims on appeal under 35 U.S.C.
§ 101 as not directed to patent eligible subject matter. We have jurisdiction
under 35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
1 According to Appellants, the real party in interest is Sysmex Corporation.
App. Br. 2.
Appeal2017-002470
Application 12/888,821
STATEMENT OF THE CASE
According to the Specification, "Systemic Inflammatory Response
Syndrome (SIRS) is a state where a subject is experiencing a serious
inflammatory response in the whole body due to infection, injury, surgery,
acute pancreatitis, or the like." Spec. ,r 3. "Septicemia is a disease that, if
not appropriately treated at an early stage, the symptoms thereof can
progress to serious septicemia, septic shock, and multiple organ dysfunction
syndrome (MOD), ultimately leading to death." Id. ,r 4. One method of
diagnosing septicemia is "by confirming the presence of infecting bacteria
though culturing the blood of the subject," however when this method is
used "a lot of work and costs are required in order to determine whether the
inflammatory response of the subject is an infectious inflammatory response
or a noninfectious inflammatory response." Id. ,r 6. To address this
problem, the Specification discloses a "blood cell counter" that outputs
"diagnosis support information for supporting determination of whether an
inflammatory response of the subject is an infectious inflammatory response
or a noninfectious inflammatory response." Id. ,r 9.
Claims 1, 5, 10, 21-32 and 36 are on appeal. Claim 1 is illustrative
and reads as follows:
1. A blood cell counter comprising:
a detection unit for detecting blood cells in blood of a
subject; and
a data processing unit coupled to the detection unit and
compnsmg:
a memory comprising an inflammatory response
diagnosis support program;
a controller operable to execute the inflammatory
response diagnosis support program to perform
instructions comprising:
obtaining, based on a detection result by the
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App. Br. 15.
detection unit, first analytical information about
hemoglobin amount in the blood and second analytical
information about a number of neutrophils in the blood,
the first analysis information being information about
hemoglobin amount of reticulocytes or information about
a difference between hemoglobin amount of reticulocytes
and hemoglobin amount of mature red blood cells;
obtaining a first score by comparing the first
analytical information with a first threshold value and a
second score by comparing the second analytical
information with a second threshold value;
obtaining an index by calculating the first and
second scores;
determining whether an inflammatory response of
the subject is an infectious inflammatory response or a
noninfectious inflammatory response by comparing the
obtained index and a determination threshold value; and
outputting a diagnosis support information
including a determination result.
The Examiner rejected claims 1, 5, 10, 21-32 and 36 under 35 U.S.C.
§ 101 as directed to patent ineligible subject matter.
ANALYSIS
Determination of subject matter eligibility involves a two-step test.
First one must determine if the claimed subject matter is directed to a
judicially recognized exception. Mayo Collaborative Serves, v. Prometheus
Lab., Inc. 566 U.S. 66, 77-78 (2012). If the claims address a judicially
recognized exception, the next step is to determine if the claims recite
additional elements that transform the nature of the claim. Id.
Appellants argue claims 1, 5, 10, 21-32, and 36 together. We
designate claim 1 as representative.
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In rejecting claim 1 as directed to patent-ineligible subject matter, the
Examiner determined that the steps of "obtaining scores by comparing
analytical information with a respective threshold value, obtaining an index
by calculating scores and determining a response by comparing an obtained
index and a threshold value" were "based on mathematical relationships and
thus are abstract ideas." Ans. 2. The Examiner explained that these steps
"are simply utilizing obtained data for conducting comparisons and
performing calculations, which amount to no more than calling on a
computing device with basic functionality for comparing stored and
retrieved data." Id. at 3.
The Examiner then considered whether the additional elements recited
by the claims - i.e., a "detection unit, data processing unit comprising a
memory and controller, and the steps performed by the controller of
obtaining the desired analytical information and outputting diagnosis support
information" - amounted to significantly more than the abstract idea itself.
Ans. 3--4. The Examiner found that "the detection unit as claimed is well-
known in the art and routinely coupled with processing units as claimed
because in order to perform mathematical calculations, data must be
retrieved from a sample." Id. at 4. In addition, the Examiner found that the
additional steps of obtaining data and outputting relevant information were
"conventional, routine and well-understood to those skilled in the art." Id.
The Examiner thus concluded that these additional elements "amount to
insignificant extra solution activity" and were not sufficient to "amount to
significantly more than the judicial exception." Id.
We agree with the Examiner that the claims are directed to patent
ineligible subject matter. We address Appellants' arguments below.
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Application 12/888,821
Appellants argue that the Examiner did not "identify the claimed
concept that is considered to be an abstract idea." App. Br. 11. Appellants
contend that the Examiner failed to consider the claim limitations as a whole
and oversimplified the claimed invention by describing it generally as
"based on mathematical relationships." Reply Br. 1. We are not persuaded.
The Examiner specifically identified the claim steps that were found
to comprise the abstract idea and explained that these steps do nothing more
than articulate a mathematical relationship. Ans. 2. The Examiner also
specified that the steps involve "utilizing obtained data for conducting
comparisons and performing calculations." Id. at 3. This was sufficient to
identify the subject matter that the Examiner considered to be directed to a
judicial exception. Nothing more was required to put Appellants on notice
of the basis for the Examiner's rejection.
Appellants argue that "merely employing mathematical relationships
does not render the claimed invention an abstract idea." App. Br. 10. We
agree. A claim does not become patent ineligible simply because it employs
a mathematical relationship. Diamond v. Diehr, 450 U.S. 175, 187 (1981)
(recognizing that "claim drawn to subject matter otherwise statutory does
not become nonstatutory simply because it uses a mathematical formula,
computer program"). However, a mathematical relationship, by itself, is an
abstract idea. Diehr, 450 U.S. at 192 ("A mathematical formula as such is
not accorded the protection of our patent laws."). When a claim contains a
mathematical relationship, patent eligibility rests on whether the steps in
addition to the mathematical relationship represent "insignificant post-
solution activity" or whether they instead "implement or apply the
[ mathematical] formula in a structure or process which, when considered as
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a whole, is performing a function which the patent laws were designed to
protect." Id. at 191-192; see also, Mayo 566 U.S. at 77-78. Claim 1 is not
patent ineligible just because it employs a mathematical relationship, it is
ineligible because, considered individually and as an ordered combination,
the claim elements in addition to the mathematical relationship are not
sufficient to transform the nature of the claim.
Appellants argue that improvements in computer related-technology
are not inherently abstract and thus "the fact that the claimed blood cell
counter includes a data processing unit and involves improvements to
software does not necessarily mean that the claimed blood cell counter is
directed to an abstract idea." App. Br. 11-12. We are not persuaded
because the Examiner's rejection is not based on the assertion that the
claimed blood cell counter is abstract because it relates to improved
software. Rather, as discussed above, claim 1 is patent ineligible because
the claim, considered as a whole, is directed to a mathematical relationship.
Appellants argue that they are not "simply claiming an abstract idea in
an attempt to lay claim to a building block of future research and
development, and thus there is no genuine risk of preempting future research
and development." App. Br. 12. We are not persuaded because even if
claim 1 does not preempt use of the mathematical relationship recited in the
claim, "the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015).
Appellants argue that the claim elements requiring "obtaining, based
on a detection result by the detection unit ... analytical information ... ,
determining whether an inflammatory response of the subject is an
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infectious inflammatory response ... , [ and] outputting a diagnosis support
information including a determination result" amount to significantly more
than the recited abstract idea and provide "sufficiently inventive concepts
[to] make the claimed invention patentable." App. Br. 13. We are not
persuaded.
The "determining" step is part of the mathematical relationship
identified by the Examiner. Therefore, it cannot add significantly more to
the patent ineligible subject matter, i.e., the mathematical relationship. As to
the remaining two steps - the "obtaining" and "outputting" steps - we
agree with the Examiner that these involve "well-understood, routine and
conventional techniques." Ans. 7. Indeed, Appellants do not allege that
either step is, by itself, unconventional. Because these additional steps
involve nothing more that the use of conventional technologies to gather
data and display an analysis of that data, they are insufficient to confer
patent eligibility on the claimed subject matter. Mayo, 566 U.S. at 79-80
(finding that claim limitation that "simply tell[ s] doctors to gather data from
which they may draw an inference in light of correlations .... add[ s]
nothing significant"); see also, Intellectual Ventures I LLC v. Capital One
Financial Corp, 850 F.3d 1332, 1340 (Fed. Cir. 2017) ("[A]n invention
directed to collection, manipulation, and display of data [is] an abstract
process."); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016) ("A process of gathering and analyzing information of a
specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions [is] directed
to an abstract idea.").
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Appellants argue that "the claimed invention significantly improves
existing technology by determining whether an inflammatory response of the
subject is an infectious inflammatory response or a noninfectious
inflammatory response using a blood cell counter without requiring
additional apparatus for culturing of the blood, thereby saving work and
costs." App. Br. 14. Thus, according to Appellants, "the claimed invention
provides improvements to the technical field of a blood cell counter and
diagnosing Systematic Inflammatory Response Syndrome (SIRS)." Id. We
are not persuaded.
Our reviewing court has made clear that a difference exists between
patent ineligible claims, as here, that focus "on asserted advances in uses to
which existing computer capabilities could be put" and patent eligible claims
that focus "on a specific improvement ... in how computers could carry out
one of their basic functions of storage and retrieval of data." Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016),
discussing Eefzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed.
Cir. 2016); see also Research Corp. Technologies Inc. v. Microsoft Corp.,
627 F.3d 859, 865 (Fed. Cir. 2010) ("higher quality halftone images [ were
produced] while using less processor power and memory space."). We do
not find, and Appellants do not identify, such a technological advance - e.g.,
"using less processor power and memory space" - in Appellants' claimed
invention. Research Corp. 627 F.3d at 865.
Our reviewing court has further made clear that the relative
importance of an alleged invention is not determinative of whether the
subject matter claimed is patent-eligible. For example, the Federal Circuit
rejected an argument similar to that raised by Appellants in Ariosa
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Diagnostics, Inc. v. Sequenom Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2004).
In that case, the Federal Circuit found that the importance of the method
embodied in claims directed to noninvasive pre-natal screening did not
justify its patentability, explaining:
Sequenom also notes that "the method reflects a significant
human contribution in that [Drs.] Lo and Wainscoat combined
and utilized man-made tools of biotechnology in a new way
that revolutionized prenatal care." Id. We agree but note that
the Supreme Court instructs that "[g]roundbreaking, innovative,
or even brilliant discovery does not by itself satisfy the § 101
inquiry." Myriad Genetics, Inc., 133 S.Ct. at 2117. The
discovery of the BR CAI and BRCA2 genes was a significant
contribution to the medical field, but it was not patentable. Id.
at 2117. While Drs. Lo and Wainscoat's discovery regarding
cfIDNA may have been a significant contribution to the
medical field, that alone does not make it patentable. We do not
disagree that detecting cfIDNA in maternal plasma or serum
that before was discarded as waste material is a positive and
valuable contribution to science. But even such valuable
contributions can fall short of statutory patentable subject
matter, as it does here.
Ariosa, 788 F.3d at 1379--1380. Thus, even accepting Appellants' assertion
that the claimed cell counter "significantly improves existing technology"
(App. Br. 14), this alone does not render the method to be patentable subject
matter.
Accordingly, we affirm the Examiner's rejection of claim 1 as
directed to patent ineligible subject matter. Because they were not argued
separately, claims 5, 10, 21-32, and 36 fall with claim 1.
DECISION
For these reasons and those set forth in the Examiner's Answer and Final
Office Action, we affirm the Examiner's rejection of claims 1, 5, 10, 21-32,
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and 36 under 35 U.S.C. § 101 as not directed to patent eligible subject
matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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