Ex Parte Regberg et al

Patent Trials and Appeals Board

Jul 9, 2019

14365532 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/365,532 06/13/2014
34477 7590 07/11/2019
ExxonMobil Upstream Research Company
22777 Springwoods Village Parkway
(EMHC-Nl.4A.607)
Spring, TX 77389
FIRST NAMED INVENTOR
Aaron B. Regberg
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.
2012EM029 8865
EXAMINER
SISSON, BRADLEY L
ART UNIT PAPER NUMBER
1634
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):
urc-mail-formalities@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON B. REGBERG, A. LUCIE N'GUESSAN,
and AMELIA C. ROBINSON1
Appeal 2018-004831
Application 14/365,532
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify ExxonMobil Upstream Research Company as the real
party-in-interest. App. Br. 4.
Appeal 2018-004831
Application 14/365,532
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner'sFinalRejectionofclaims 1, 9-13, 16, 17, and20-22.
Specifically, claims 1 and 16 stand rejected as unpatentable under 35 U.S.C.
§ 112, second paragraph, as being indefinite.2
Claims 1, 9-13, 16, 17, and 20-22 stand rejected as unpatentable
under 35 U.S.C. § 112, first paragraph, as lacking enablement.
Claims 1, 9-13, 16, 17, and 20-22 also stand rejected as unpatentable
under 35 U.S.C. § 112, first paragraph, as failing to supply written
descriptive support for the claims.
Claims 1, 9-13, 16, 17, and 20-22 stand further rejected as
unpatentable under 35 U.S.C. § 101 as being directed to nonstatutory subject
matter.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' claimed invention is directed to methods of determining
the presence of an active hydrocarbon system, and specifically, to
ascertaining the presence, temperature, pressure, salinity and volume of a
hydrocarbon reservoir. Spec. ,-J 2.
2 The Examiner also rejected claims 10 and 11 on this ground. Final Act. 4.
The Examiner has withdrawn this rejection. Ans. 37.
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REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A method of identifying the presence and conditions of a
hydrocarbon reservoir, comprising:
obtaining a sample, wherein the sample is a sediment
sample collected from a seafloor sediment of a hydrocarbon seep
or a water sample collected from the water column above a
hydrocarbon seep;
analyzing the sample to determine a community structure
of the sample, wherein the community structure refers to the
relative abundance of the type of microorganisms in the sample,
and wherein the analyzing includes one or more of DNA
analysis, RNA analysis, metagenomics, proteomics,
transcriptomics, and lipid analysis;
analyzing the sample to determine a community function
of the sample, wherein the community function refers to the
metabolic processes of the microorganisms in the sample, and
wherein the analyzing includes one or more of DNA analysis,
metagenomics, proteomics, transcriptomics, phenotypes,
metabolites, organic geochemistry, inorganic geochemistry, and
lipid analysis;
determining an ecology of the sample from the community
structure and the community function of the sample;
comparing the ecology of the sample with a characteristic
ecology of a hydrocarbon reservoir; and
when the ecology of the sample matches the characteristic
ecology of a hydrocarbon reservoir, identifying the sample as
part of a hydrocarbon reservoir and identifying a condition of the
hydrocarbon reservoir, wherein the condition of the hydrocarbon
reservoir is one of pressure, temperature, salinity, reservoir
volume, and hydrocarbon type.
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App. Br. 15.
ISSUES AND ANALYSES
We decline to adopt the Examiner's findings, reasoning, and
conclusion that claims 1 and 16 are indefinite, and that all of the claims on
appeal are, respectively, not enabled or lacking in written descriptive
support. We adopt the Examiner's conclusion that the claims on appeal are
directed to nonstatutory subject matter. We address the arguments raised by
Appellants below.
A. Rejection of claims 1 and 16 as indefinite
Issue 1: Claim 16
Claim 16 recites: "The method of claim 1, wherein the hydrocarbon
reservoir is connected to the seafloor by a hydrocarbon seep to a seafloor via
a fault or fracture zone." App. Br. 16 (emphasis added). Appellant argues
that the Examiner erred in finding that the claim is indefinite, because it is
confusing as to which seafloor is being referred to in the claim. Id. at 7.
Analysis
The Examiner finds that claim 16 is indefinite in reciting that: "the
hydrocarbon reservoir is connected to the seafloor by a hydrocarbon seep to
a seafloor," because it is unclear as to whether the seafloor referenced in line
2 is the same sea floor as a seafloor recited subsequently. Final Act. 7.
Appellants point to Figure 6A of their Specification, which illustrates
a seep 602 that is connected to a hydrocarbon reservoir 604 through a fault
606. App. Br. 7. Appellants contend that, when claim 16 is read in light of
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the Specification (and in particular in view of Figure 6A), a person of
ordinary skill in the art would understand what is being claimed. Id.
The Examiner responds that Figure 6A does not clarify whether or not
the indefinite article, "a" as used in the expression "a seafloor" in claim 1 is
to mean that it is the same as, or different from "the seafloor" as recited in
line 2.
The test for definiteness under the second paragraph of 35 U.S.C.
§ 112 is: "whether those skilled in the art would understand what is claimed
when the claim is read in light of the specification." Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). With
reference to its Figure 6A, Appellants' Specification discloses: "Figure 6A is
similar to Figure 1, and shows a seep 602 directly connected to an
economically viable hydrocarbon reservoir 604 through a fault 606.. . . Each
of these seeps in Figures 6A-6D have different ecologies associated with the
physical and chemical conditions unique to each system." Spec. ,-J 55.
We agree with Appellants. We construe the antecedent use of the
claim term "the seafloor" to mean the seafloor generally, as in "the ocean's
bottom," meaning that it encompasses the seafloor overall. The subsequent
use of the claim term "a seafloor," employing the definite, singular article
"a" could reasonably be construed by a person of ordinary skill in the art to
refer to a specific region of the seafloor, as indicated by Figure 6A: i.e., a
locus on the ocean bed where a fault or fracture connects that locus to a
hydrocarbon reservoir.
Although we note that the drafting of the claim is inelegant, we
conclude that it is not indefinite, such that a person of ordinary skill, reading
claim 16 in light of Appellants' Specification, would not understand what is
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claimed. We consequently reverse the Examiner's rejection of claim 16 on
this ground.
Issue 2: claim 1
The Examiner similarly rejects independent claim 1, because claim 1
encompasses the embodiments of claim 16. Final Act. 7. The Examiner
explains that an independent claim must encompass all limitations of those
claims that depend therefrom. Ans. 3 8
We disagree. First, as we have explained supra, we do not conclude
that claim 16 is indefinite in light of the disclosures of Appellants'
Specification. The Examiner's conclusion, on that basis, that claim 1 is also
indefinite cannot stand.
Second, the second paragraph of Section 112 requires that the claims:
"particularly point[ ] out and distinctly claim[ ] the subject matter which the
inventor or a joint inventor regards as the invention." 35 U.S.C. § 112.
"The primary purpose of this requirement of definiteness of claim language
is to ensure that the scope of the claims is clear so the public is informed of
the boundaries of what constitutes infringement of the patent." MPEP
§ 2173 ( emphasis added). Therefore, our indefiniteness analysis considers
whether a person of ordinary skill in the art would understand what is
claimed by the language of the claim, when read in view of the
Specification. Orthokinetics, 806 F.2d at 1576. A broader claim is not
indefinite solely because a narrower dependent claim is found to be
indefinite.
Consequently, even were we to affirm the Examiner's rejection of
claim 16 (which we do not), the Examiner has pointed to no language recited
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in claim 1 that is allegedly indefinite. Given the absence of any such
finding, or evidence supporting such a finding, we cannot sustain a
conclusion of indefiniteness against claim 1.
We therefore reverse the Examiner's rejection of claim 1 on this
ground.
B. Rejection of claims 1, 9-13, 16, 17, and 20-22 as lacking enablement
Issue
Appellants argue that the Examiner erred in finding that the claims are
not enabled because Appellants' Specification fails to provide guidance as to
how to: "generate a probe system contemplated by the intended breadth of
the claimed method." App. Br. 9. Appellants also argue that the Examiner
erred in finding that practicing the claims would require undue
experimentation by a person of ordinary skill in the art. Id.
Analysis
Appellants argue that the Examiner believes that it is required that the
claims identify specific probes and primers, which the Examiner considers to
be required to identify DNA/RNA sequences. App. Br. 9. Appellants
contend that, to the contrary, at the time the application was filed,
metagenomics techniques were known in the art that utilized non-target,
non-PCR based sequencing techniques, where specific targets, probes, and
primers are not required. Id. In support of this contention, Appellants point
to A. Nocker et al., Genotypic Microbial Community Profiling: A Critical
Technical Review, 54 MICROBIAL ECOL. 276-89 (2007) ("Nocker") and S.G.
Tringe et al., Comparative Metagenomics of Microbial Communities,
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308 SCIENCE 554-57 (2005) ("Tringe"), both of which are prior art to
Appellants' application. Id.
With respect to the Examiner's conclusion that practicing the claims
would require undue experimentation, Appellants argue that the amount of
experimentation permissible may be extensive, as long as it is not undue.
App. Br. 9 (citing In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)).
Specifically, Appellants point to Ex parte Kubin as holding that, although:
"[t]he amount of experimentation to practice the full scope of the claimed
invention might have been extensive, ... [but] it would have been routine [as]
[t]he techniques to do so were well known to those skilled in the art." Id.
(quoting Kubin, Appeal No. 2007-0819 at 14 (B.P.A.I. 2007) (precedential).
Appellants contend that, at the time their application was filed,
metagenomics techniques were known in the art that utilized non-targeted,
non-PCR based sequencing techniques to determine information about the
community structure/community function of microbial communities. App.
Br. 10 ( citing, generally, Nocker and Tringe ). As such, Appellants argue,
and contrary to the Examiner's findings, a person of ordinary skill in the art
would be able to practice the claimed invention even though specific
sequence listings and primer listings are not disclosed by Appellants'
Specification. Id.
Appellants argue further that, as disclosed by Appellants'
Specification, and as taught by Nocker and Tringe, high-throughput
sequencing technology (including massive parallel pyrosequencing) can be
used to speed the time needed for sequencing samples. App. Br. 10 ( citing,
e.g., Spec. ,-J 39). Therefore, Appellants argue, a person of ordinary skill in
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the art would not find that the quantity of experimentation required to
practice the invention would not be undue. Id.
Appellants argue further that (as suggested by Nocker and Tringe) the
relative skill in the art of using multiple types of analyses to determine a
community structure or community function of a sample is high. App. Br.
10 (see Wands, 858 F.2d at 737). By way of example, Appellants point to
the "Barcode of Life" project, which began in 2003, and which has defined
standardized gene regions that can be used to identify different species.
App. Br. 10-11 (citing, e.g., M.L. Blaxter, The Promise of a DNA
Taxonomy, 359(1444) PHIL. TRANS. ROYAL Soc. B: BIOL. SCI. 669-79
(2004); M.L. Blaxter et al., Defining Operational Taxonomic Units using
DNA Barcode Data, 360(1462) PHIL. TRANS. ROYAL Soc. B: BIOL. SCI.
1935-43 (2005); S. Ratnasingham et al., bold: The Barcode of Life Data
System, 7(3) MOL. ECOL. NOTES, 355-64 (2007); A. Valentini et al., DNA
Barcodingfor Ecologists, 24(2) TRENDS ECOL. & EVOL. 110-17 (2009)). 3
Finally, Appellants argue that many known primers for amplifying
these regions were known in the art at the time the application was filed.
App. Br. 11 ( citing M.L. Sogin et al., Microbial Diversity in the Deep Sea
and the Underexplored "Rare Biosphere", 103(32) PROC. NAT. ACAD. SCI.
12115-120 (2006); S.M. Huse et al., Exploring Microbial Diversity and
3 Appellants' application was filed on June 13, 2014 as a national stage entry
of PCT/US2013/021258 published as WO 2013/119350 Al, filed January
11, 2013, which claims the priority benefit of US Ser. No. 61/595,394,
filed February 06, 2012. The references cited in this section, therefore, all
qualify as prior art to Appellants' application.
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Taxonomy Using SSU rRNA Hypervariable Tag Sequencing, 4(110) PLoS
GENET, el0002555 (2008).4 Appellants therefore assert that the level of skill
in the art at the time of invention was high, and that many known techniques
were in the art for DNA and RNA sequencing ( even in the absence of
knowing a particular sequence listing or primer). Id. As such, conclude
Appellants, the amount of experimentation needed to practice the full scope
of the claimed invention would not be undue. Id.
The Examiner responds that Appellants' argument is predicated on the
assertion that it is impossible to meet the test for undue experimentation if
the methods to be practiced are routine. Ans. 39. However, the Examiner
points out, our reviewing court has repeatedly held that routine
experimentation is "not without bounds." Id. at 40 ( citing Wyeth and Cordis
Corp. v. Abbott Labs., 720 F.3d 1380, 1386 (Fed. Cir. 2013); Cephalon, Inc.
v. Watson Pharms., Inc., 707 F.3d 1330, 1339 (Fed. Cir. 2013). The
Examiner finds that the method of claim 1 requires performance of various
forms of analysis of the sample, and lists broad categories of analysis, which
include "DNA analysis" as well as "RNA analysis." Id. The Examiner
points to paragraphs [0041] and [0042] of Appellants' Specification, which
discloses that such analyses encompass any technique that can be used to
achieve amplification and sequencing. Id.
The Examiner finds that, as presently worded, the claimed method
arguably encompasses the amplification of STR that are to be found in the
genome of any microorganism that is found in any sample collected. Ans.
41. The Examiner finds that, as the Federal Circuit held in Promega Corp.
4 See fn.3
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v. Life Techs. Corp., 773 F.3d 1338, (Fed. Cir. 2014): "the claims at issue
here similarly cover potentially thousands of undisclosed embodiments in an
unpredictable field and similar to Wyeth, the specification of the Pro mega
patents provides only a starting point." Id. (quoting Promega, 773 F.3d at
1349).
The Examiner also finds that, with respect to Appellants' arguments
concerning the "Barcode of Life project" and how "standardized gene
regions [] can be used to identify different species," the claims do not recite
identify, or require the use of such sequences. Ans. 41. The Examiner
points that narrowing limitations disclosed by Appellants' Specification
cannot be incorporated into the claims. Id.; see In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (holding that, although the claims are
interpreted in light of the specification, limitations from the specification
may not be read into the claims).
Appellants reply that, at the time the application was filed,
metagenomics techniques were known in the art that utilized non-target,
non-PCR based sequencing techniques in which specific targets, probes, and
primers ( such as those described by the Examiner) are not required, as taught
by the prior art ofNocker and Tringe. Reply Br. 5. Indeed, Appellants
assert, their Specification even recommends against using the
oligonucleotide-type probes cited by the Examiner, because they are
"restricted to finding organisms that have some genetic similarity to known
organisms." Id. ( quoting Spec. ,i 13). Rather, Appellants argue,
pyrosequencing and metagenomics techniques that do not require such
probes are preferred. Id.
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Appellants therefore contend that, at the time the application was
filed, metagenomics techniques were known in the art that utilized non-
targeted, non-PCR based sequencing techniques to determine information
about the community structure/community function of microbial
communities. Reply Br. 6. As such, argue Appellants, and contrary to the
Examiner's findings, a person of ordinary skill in the art would be able to
practice the claimed invention even though specific sequence listings and
primer listings are not delineated in the application. Id. Appellants contend
further that, "as described in the submitted references, and described in the
Specification high-throughput sequencing technology (including massive
parallel pyrosequencing) can be used to speed the time needed for
sequencing samples." Id. ( citing, e.g., ,i 39).
Section 112 requires:
[T]hat the patent specification enable "those skilled in the art to
make and use the full scope of the claimed invention without
'undue experimentation"' in order to extract meaningful
disclosure of the invention and, by this disclosure, advance the
technical arts. Koito Mfg., 381 F.3d 1142, 1155 (quoting
Genentech, Inc. v. Novo NordiskA/S, 108 F.3d 1361, 1365 (Fed.
Cir. 1997) ( citation omitted)). Because such a disclosure
simultaneously puts those skilled in the art on notice of the
enforceable boundary of the commercial patent right, the law
further makes the enabling disclosure operational as a limitation
on claim validity. "The scope of [patent] claims must be less than
or equal to the scope of the enablement. The scope of
enablement, in tum, is that which is disclosed in the specification
plus the scope of what would be known to one of ordinary skill
in the art without undue experimentation." Nat'! Recovery, 166
F.3d at 1196; see also In re Goodman, 11 F.3d 1046, 1050 (Fed.
Cir. 1993) ("[T]he specification must teach those of skill in the
art 'how to make and how to use the invention as broadly as it is
claimed."); In re Fisher, 57 C.C.P.A. 1099, 427 F.2d 833, 839
(1970) ("[T]he scope of the claims must bear a reasonable
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correlation to the scope of enablement provided by the
specification to persons of ordinary skill in the art.").
Invitrogen Corp. v. Clontech Labs. Inc., 429 F.3d 1052, 1070-71 (Fed. Cir.
2005) (footnote omitted and emphases added).
We are not persuaded by the Examiner's analysis. Claim 1 recites, in
relevant part:
and:
analyzing the sample to determine a community structure
of the sample, wherein the community structure refers to the
relative abundance of the type of microorganisms in the sample,
and wherein the analyzing includes one or more of DNA
analysis, RNA analysis, metagenomics, proteomics,
transcriptomics, and lipid analysis;
analyzing the sample to determine a community function
of the sample, wherein the community function refers to the
metabolic processes of the microorganisms in the sample, and
wherein the analyzing includes one or more of DNA analysis,
metagenomics, proteomics, transcriptomics, phenotypes,
metabolites, organic geochemistry, inorganic geochemistry, and
lipid analysis.
Appellants have submitted examples of prior art, including the review
articles by Nocker, Tringe and others, named supra, showing that the
methods recited in the claim, including e.g., metagenomics, proteomics,
transcriptomics, are known in the art and would be understood by a person
of ordinary skill in the art. See also Spec. ,-J,-J 41-45. Although Appellants'
claims are undeniably broad, we find that they recite analytic techniques that
were known in the art and were not so diffuse or poorly described that a
person of ordinary skill in the art would not be able to practice them, or
would be unaware of their several advantages and weaknesses. See, e.g.,
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Nocker 283-84, Table 1. Given, therefore, that there are techniques that
would be understood by, and are capable of being performed by a person of
ordinary skill in the art practicing Appellants' invention, we are persuaded
by Appellants' arguments and we reverse the Examiner's rejection upon this
ground.
C.
Issue
Rejection of claims 1, 9-13, 16, 17, and 20-22 as lacking written
descriptive support
Appellants argue that the Examiner erred in finding that the claims
lack written descriptive support. App. Br. 11.
Analysis
The Examiner notes that, although Appellants are not required to
teach each and every possible embodiment encompassed by the claims, the
Specification must still provide a full, clear, and concise description of the
genus encompassed by the claims so that one would be readily able to
determine if a species fell within the claims' scope, and to also reasonably
suggest that applicant had possession of the invention at the time of filing.
Final Act. 30 (citing In re Shokal, 242 F.2d 771, 774 (C.C.P.A. 1957)).
The Examiner finds that a review of Appellants' Specification
discloses no sequence listing that provides the nucleotide sequence for any
RNA or DNA, much less any probes and primers that are to be used in the
DNA and RNA amplification and detection protocols encompassed by the
claimed method. Final Act. 31. Similarly, the Examiner finds, the
Specification fails to disclose any description of any protein, lipid,
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phosphor-lipid, metabolite, etc., found in any organism, be it in a water
column sample, in a core sample, in a reservoir fluid, etc. Id.
Appellants repeat their argument supra, that, at the time the
application was filed, metagenomic techniques were known in the art that
did not require sequence targets or sequence probes to determine
information about the community structure/function of microbial
communities. App. Br. 11. As such, Applicants argue, sequence listings or
identification of specific probes or primers is not required to fulfill the
written description requirement. Id. By way of example, Appellants point
to paragraph [0039] of their Specification, which discloses that nucleic acid
sequencing can be conducted using high-throughput sequencing techniques.
Id. Similarly, Appellants assert, paragraph [0041] discloses using
pyrosequencing techniques to map the hyper-variable region of the 16S
rDNA to do species identification (which can then be used to make a
community structure determination). Id. at 11-12. Appellants therefore
contend that the information contained within the Specification would have
reasonably suggested to one of ordinary skill in the art that Applicant had
possession of the invention at the time of filing. Id. at 12.
The Examiner responds that the method recited in the claims
encompasses the performance of "DNA analysis," and "RNA analysis."
Ans. 43. The Examiner finds that the Specification discloses that DNA and
RNA analysis encompass "any technique used to amplify and/or sequence"
DNA and RNA present in any sample. Id. (citing Spec. ,i,i 41-42). The
Examiner finds that such methods require knowledge of the target DNA and
RNA sequences so that primers can be produced. Id. The Examiner also
finds that dependent claim 21 recites specific microorganisms, whereas
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dependent claim 20 effectively encompasses virtually any "bacteria and
archaea." Id. The Examiner concludes that Appellants' failure to disclose
any nucleotide sequence, be it DNA or RNA, be it target or primer, much
less the nucleotide sequence of specifically-identified microorganisms (i.e.,
as recited in claim 21) has not been found to satisfy either element of the test
for written description set forth in In re Alonso, 545 F.3d 1015 (Fed. Cir.
2008). 5
In reply, Appellants point out that the written description requirement
is separate and distinct from the enablement requirement. Reply Br. 7.
According to Appellants, all that is required to meet the written description
requirement, is that: "the specification must describe [the] invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed." Id. ( quoting Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
Appellants argue that their application is directed to obtaining a
sample and analyzing the sample to determine a community structure and
community function. Reply Br. 7. By way of example, Appellants point to
paragraph [0052] of their Specification, which, they argue, discloses
obtaining a sample, such as a water sample or a sediment sample. Id.
5 The test set forth by the Federal Circuit in Alonso states that:
A genus can be described by disclosing: ( 1) a representative
number of species in that genus; or (2) its "relevant identifying
characteristics," such as "complete or partial structure, other
physical and/or chemical properties, functional characteristics
when coupled with a known or disclosed correlation between
function and structure, or some combination of such
characteristics.
Alonso, 545 F.3d at 1019.
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Appellants also point to paragraphs [0039] and [0053] as disclosing
analyzing the sample to determine a community structure and function. Id.
Appellants also cite paragraph [0041] as disclosing that the hyper-variable
region of the l 6S rDNA gene may be used for species identification ( and
thus, determining community structure), and paragraph [0053] discloses
using genetic information about the species to determine whether the
community has a function of reducing sulfate, oxidizing methane to CO2, or
reducing CO2 to methane. Appellants also cite paragraphs [0054] and
[0058] of their Specification as disclosing the sample ecology (determined
from the community structure and community function) to determine
whether the samples indicate the presence of a reservoir. Id.
As such, argue Appellants, the claimed subject matter is described in
their Specification in a sufficient manner to indicate that the inventors
invented the claimed invention. Reply Br. 7.
We agree with Appellants. The Examiner finds that Appellants have
failed to disclose any nucleotide sequence, be it DNA or RNA or nucleotide
sequence of specifically-identified microorganisms, and have therefore
failed to satisfy the written description requirement. See Ans. 43.
Appellants' Specification discloses that:
As used herein, "DNA analysis" refers to any technique used to
amplify and/or sequence DNA within the samples. DNA
amplification can be accomplished using PCR techniques or
pyrosequencing. As a non-limiting example, sequencing the
hyper-variable region of the l 6S rDNA (ribosomal DNA) may
be used for species identification via DNA.
Spec. ,-J 41. Similarly, Nocker teaches that:
Except for direct hybridization of sample DNA with probes,
DNA-based methods generally employ polymerase chain
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reaction (PCR) amplification of genetic markers using universal
primers capable of amplifying the target genes from a wide
variety of different organisms. The predominant target for the
assessment of microbial diversity has been the gene coding for
16S rRNA.
Nocker 276. Nocker also teaches that:
Amplified ribosomal DNA restriction analysis, also known as
restriction fragment length polymorphism (RFLP) analysis of
l 6S rRNA genes, is a simple method based on restriction
digestion of the PCR-amplified ribosomal community DNA
followed by electrophoretic separation of restriction fragments
on high percent agarose or acrylamide gels. Because one single
restriction enzyme sometimes does not provide sufficient
genotypic resolution ( different species can yield identical
patterns), multiple restriction enzymes are used either separately
or in combination. Moyer et al. evaluated the selection of
tetrameric restriction enzymes for l 6S rRNA gene analysis.
Id. at 278 (internal references omitted). And Tringe teaches:
A variety of environmental sequencing projects targeted at l 6S
ribosomal RNA (rRNA) has offered a glimpse into the
phylogenetic diversity of uncultured organisms. The direct
sequencing of environmental samples has provided further
valuable insight into the lifestyles and metabolic capabilities of
uncultured organisms occupying various environmental niches.
Tringe 554. We agree with Appellants that their Specification discloses
analysis of the highly variable l 6S rRNA as a means of analyzing the
structure of microbial communities and, further, that such methods were
well known in the art at the time of Appellants' filing. We are consequently
not persuaded by the Examiner's finding and conclusion, and we reverse the
Examiner's rejection of the claims on this ground.
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D. Rejection of claims 1, 9-13, 16, 17, and 20-22 as being directed to
nonstatutory subject matter.
Issue
Appellants argue that the Examiner erred in finding that the claims are
unpatentable as being directed to an abstract idea, a judicial exception to
Section 101. App. Br. 12.
Analysis
Appellants first argue that the Examiner has allegedly confused the
issue of whether the claims are enabled with the issue of whether a claim
comprises patent eligible subject matter. App. Br. 12. According to
Appellants, in attempting to explain the rejection under 35 U.S.C. § 101,
much of the Examiner's findings and reasoning address whether the claims
are enabled, not whether the claims are directed to patent ineligible subject
matter. Id. Rather, Appellants argue, a rejection under Section 101 looks
only to whether or not a claim contains patent eligible subject matter and not
whether the claims is enabled. Id.
Appellants next argue that the fact that the present claims utilize
naturally-occurring samples, and can include using DNA or RNA analysis to
determine a community function or community structure of the natural-
occurring sample, does not render the claims as being directed towards
patent ineligible subject matter. App. Br. 13. Rather, Appellants argue, the
pending claims are directed towards new and useful methods for identifying
hydrocarbon reservoirs and for identifying conditions of the hydrocarbon
reservoir (e.g., pressure, temperature, salinity, reservoir volume, and
hydrocarbon type). Id. As such, Appellants contend, the pending claims are
not directed to a patent-ineligible concept, but rather are directed to an
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improvement in the field of hydrocarbon exploration as they provide a new
and useful way of identifying whether or not an area of interest contains a
hydrocarbon seep that is connected to a hydrocarbon reservoir. Id. As such,
Appellants submit that under step one of the framework set forth by the
Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208
(2014), that the pending claims are not "directed to" a patent-ineligible
concept, such as: "to preclude the patenting of an invention simply because
it touches on something natural would 'eviscerate patent law."' Id. (quoting
Rapid Litigation Mgmt. Ltd. v. Cellzdirect, Inc., 827 F.3d 1042, 1049 (Fed.
Circ. 2016) (quoting Mayo Collaborative Serves. v. Prometheus Labs., Inc.,
566 U.S. 66, 70 (2012)).
Appellants argue further that Appellants submit that the claims do
amount to "something more," than just the abstract idea, i.e., the judicial
exception. App. Br. 13. Appellants contend that there is nothing in the
record to signify that the ecology of a sample was routinely or
conventionally used to determine an aspect of a hydrocarbon reservoir (such
as pressure, temperature, salinity, reservoir volume, or hydrocarbon type).
Id. at 13-14. Thus, Appellants submit that the steps of using the ecology of
the sample to identify the sample as being from a hydrocarbon reservoir, and
then using the ecology of the sample to identify aspects of the hydrocarbon
system involved, constitutes "significantly more" than an abstract idea.
In performing an analysis of patentability under Section 101, we
follow the framework set forth by the Supreme Court in Mayo Collaborative
Serve 's v. Prometheus Labs., Inc., 566 U.S. 66 (2012). We are also mindful
of, and guided by, the United States Patent and Trademark Office's 2019
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Revised Patent Subject Matter Eligibility Guidance, 84(4) Fed. Reg. 50-57
(January 7, 2019) (the "2019 Guidance").
Appellants' claim 1 recites: "A method of identifying the presence
and conditions of a hydrocarbon reservoir, comprising .... " Following the
first step of the Mayo analysis, we find that the claims are directed to a
method or "process" and therefore fall into one of the broad statutory
categories of patent-eligible subject matter under 35 U.S.C. § 101.
In the next step of the Mayo analysis, we determine whether the
claims at issue are directed to a nonstatutory, patent-ineligible concept, i.e., a
law of nature, a phenomenon of nature, or an abstract idea. Mayo, 566 U.S.
at 70-71. If the claims are so directed, we next consider 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 78-79; see also Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015). Specifically, the
Supreme Court considered this second step as determining whether the
claims recite 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." Mayo, 566 U.S. at 72-73.
More specifically, in this second step of the Mayo analysis, we look to
whether the claim recites one of the judicially-created exceptions to Section
101, i.e., an abstract idea, a law of nature, or a natural phenomenon. See
2019 Guidance 54 (step 2A, prong 1). In the case of claims reciting an
abstract idea, these exceptions comprise mathematical concepts, certain
methods of organizing human activity, and mental processes. Id. If we
determine that the claim is directed to a judicial exception, we then
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determine whether the limitations of the claim reciting the judicial exception
are integrated into a practical application. Id. (Step 2A, Prong 2).
Finally, if we determine that the claim is directed to a judicially-
created exception to Section 101, we evaluate the claims under the next step
of the Mayo analysis, considering 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. Mayo, 566 U.S. at 78-79; 2019 Guidance at 56 (Step 2B).
Claim 1 recites, in relevant part:
[ 1] obtaining a sample, wherein the sample is a sediment
sample collected from a seafloor sediment of a hydrocarbon seep
or a water sample collected from the water column above a
hydrocarbon seep;
[2] analyzing the sample to determine a community structure
of the sample, wherein the community structure refers to the
relative abundance of the type of microorganisms in the sample,
and wherein the analyzing includes one or more of DNA
analysis, RNA analysis, metagenomics, proteomics,
transcriptomics, and lipid analysis;
[3] analyzing the sample to determine a community function
of the sample, wherein the community function refers to the
metabolic processes of the microorganisms in the sample, and
wherein the analyzing includes one or more of DNA analysis,
metagenomics, proteomics, transcriptomics, phenotypes,
metabolites, organic geochemistry, inorganic geochemistry, and
lipid analysis;
[ 4] determining an ecology of the sample from the community
structure and the community function of the sample;
[5] comparing the ecology of the sample with a characteristic
ecology of a hydrocarbon reservoir ....
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Appellants' claimed method thus comprises: (1) obtaining a sample
[l]; analyzing and determining the community structure of the sample's
microbial infauna by any genetic means, including both those known in the
art and those not yet invented [2]-[4]; and (3) comparing that community
structure profile so generated against the community structure profile of
communities known to be associated with seeps from hydrocarbon reservoirs
[5]. As such, the claims, in steps [2]-[ 4] are directed to a judicially-created
exception to Section 101, viz., a description of a natural phenomenon (the
microbial community structure of the sampled region of seafloor that existed
prior to a practitioner's sampling and remains so afterward. Appellants'
method does not purport to manipulate or alter the microbial community
existing in the sampled area, but merely to analyze and characterize it by any
means known to the art. In simpler terms, Appellants' claims are
characterizing the nature of an existing microbial community, i.e., a
"phenomenon of nature" and are therefore directed to nonstatutory subject
matter.
Furthermore, the "comparison" step [5], in which the community
structure profile of the sample is compared by the practitioner to the profile
of communities that are known to be associated with hydrocarbon reservoirs
under certain physicochemical conditions, represents another judicial
exception: a "mental step" or abstract idea that could be performed mentally,
or with pencil and paper. See Parker v. Flook, 437 U.S. 584, 586 (1978);
2019 Guidance 54. Because this final step is itself directed to no more than
another judicial exception, it cannot "transform the nature of the claim" into
a patent-eligible application. Mayo, 566 U.S. at 78-79.
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Having found that the claims are directed, at least in part, to a natural
phenomenon or a mental process (see 2019 Guidance, step 2A, prong 1 ), we
must then determine whether the limitations of the claim reciting the judicial
exception are integrated into a practical application. Id. (Step 2A, Prong 2).
We determine that they are not.
We acknowledge that, in one sense, every application is directed to an
invention claiming a practical utility, whether patentable or not: applications
that fail to claim some sort of practical utility are rare indeed. However, we
are required to inquire as to whether the abstract idea is incorporated into a
practical application, or whether the claims are directed only to the judicial
exception and are not directed to the integration of that judicial exception
into a practical application. See, e.g., Diamond v. Diehr, 450 U.S. 175
(1981).
In the appeal before us, we conclude that the limitations of the claims
are directed to the judicial exception itself, i.e., analyzing and describing a
known phenomenon of nature (a microbial community from the seafloor), by
any means known to the art, and then comparing it to known community
structures from seafloor samples known to be associated with reservoirs.
We have explained that the claims do not purport to alter or change the
structure of the sampled microbial communities, but only to analyze and
describe them. Nor do the claims include a step equivalent to the treatment
step in Vanda Pharm. Inc. v. West-Ward Pharm. Int. Ltd., 887 F.3d 1117,
1134 (Fed. Cir. 2018), such as drilling for oil at sites with particular, defined
ecologies of hydrocarbon reservoir. As such, we conclude that the claims
are directed only to the phenomenon of nature, and are not integrated into a
practical application.
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We therefore proceed to the next step of the Mayo analysis and,
considering the elements of the claims both individually, and "as an ordered
combination," determine whether the additional elements of the claim
"transform the nature of the claim" into a patent-eligible application. Mayo,
566 U.S. at 78-79; 2019 Guidance at 56 (Step 2B).
Step [ 1] is directed to the gathering of samples of the seafloor locus to
be analyzed. Appellants' Specification discloses that:
Once a likely site for the hydrocarbon accumulation has been
established, an exploration well 114 is drilled. Usually only one
core sample 122 is taken at each feature. The core samples are
usually several feet in length and are collected below the surface
or below the water-sediment interface. The cores are then
transported to land-based laboratories for analysis using
fluorescence and standard petroleum geochemistry techniques.
Because the costs of seep surveys may reach one million U.S.
dollars for a forty sample survey, sampling density tends to be
quite low.
Spec. 2. Appellants make no argument that there is anything about the
sampling method that is not routine or conventional (howsoever expensive it
may be), and taking core sediment samples is certainly a well-established
practice in the biological and geological arts. Consequently, we find that
step [ 1] constitutes no more than what would have been well-understood,
routine and conventional to a skilled artisan. See Berkheimer v. HP Inc., 881
F.3d 1360, 1368 (2018).
We therefore conclude that the claims are directed to no more than
judicial exceptions to Section 101 and do not recite the "significantly more"
requisite to transform the nature of the claim into a patent-eligible
application, as required by Mayo. We consequently affirm the Examiner's
rejection upon this ground.
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DECISION
The Examiner's rejection of claims 1 and 16 under 35 U.S.C. § 112,
second paragraph, as being indefinite is reversed.
The Examiner's rejection of claims 1, 9-13, 16, 17, and 20-22 as
unpatentable under 35 U.S.C. § 112, first paragraph, as lacking enablement
is reversed.
The Examiner's rejection of claims 1, 9-13, 16, 17, and 20-22 as
unpatentable under 35 U.S.C. § 112, first paragraph, as failing to supply
written descriptive support is reversed.
The Examiner's rejection of claims 1, 9-13, 16, 17, and 20-22 as
unpatentable under 35 U.S.C. § 101 as being directed to nonstatutory subject
matter is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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