Ex Parte Yamaguchi

Patent Trial and Appeal Board

Apr 27, 2017

13309187 (P.T.A.B. Apr. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/309,187 12/01/2011 Shinichi YAMAGUCHI Q128074 3837
23373 7590 05/01/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
KILPATRICK, BRYAN T
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHI YAMAGUCHI
Appeal 2016-002748
Application 13/309,1871
Technology Center 1700
Before DONNA M. PRAISS, WESLEY B. DERRICK, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—8. We have jurisdiction. 35 U.S.C. § 6(b)
We AFFIRM.
1 According to the Appellant, the real party in interest is Shimadzu
Corporation. Appeal Br. 2.
Appeal 2016-002748
Application 13/309,187
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a method for
processing data collected by a chromatograph mass spectrometer. Appeal
Br. 2. In particular, the invention relates to processing data from a
chromatogram mass spectrometer that both separates a sample into
components and mass-analyzes the sample components. Spec. 3:14—18.
Claim 1, reproduced below with emphasis added to certain key recitations, is
the only independent claim on appeal and is illustrative of the claimed
subject matter:
1. A method for processing data collected by a
chromatograph mass spectrometer in which a chromatograph for
separating a sample into components and a mass spectrometer
for mass-analyzing the sample components separated by the
chromatograph are combined, comprising:
creating a two-dimensional graph which expresses three
dimensions with a retention time and a mass-to-charge ratio of
mass spectrum data collected by the chromatograph mass
spectrometer on two axes on a plane, and with a signal intensity
represented with a contour or contours, or represented by an
intensity-discriminable expression equivalent to the contour(s)
by a processor;
displaying the graph which expresses three dimensions on
a display screen;
allowing a user to graphically specify an area in which a
mass-to-charge ratio and a retention time show a specified
relationship on the plane with a retention time and a mass-to-
charge ratio using a frame on two axes on the graph which
expresses three dimensions;
2 In this decision, we refer to the Final Office Action dated January 30, 2015
(“Final Act.”), the Appeal Brief filed June 8, 2015 (“Appeal Br.”), the
Examiner’s Answer dated November 13, 2015 (“Ans.”), and the Reply Brief
filed January 13, 2016 (“Reply Br.”).
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Application 13/309,187
summing up the signal intensities for data included in the
area specified on the retention time and the mass-to-charge ratio
or for remaining data in which the data included in the range is
eliminated by the processor;
displaying a two-axes result showing summed intensity
values for all mass-to-charge ratios of the data or the remaining
data plotted along a retention time axis and/or a two-axes result
showing summed intensity values for all retention times of the
data or the remaining data plotted along a mass-to-charge ratio
axis; and
in the summing up step, the signal intensities of each
retention time along a direction of the mass-to-charge ratio
axis are summed up to create a summed mass chromatogram
where a range of the mass-to-charge ratios whose signal
intensities are summed up is different from a retention time
to another retention time.
Appeal Br. 13—14 (Claims App’x).
REJECTIONS AND REFERENCES
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1—8 under 35 U.S.C. § 112 as being indefinite.
Ans. 3.
Rejection 2. Claims 1—8 under 35 U.S.C. § 101 because the claimed
invention is not directed to patent eligible subject matter. Id. at 3^4.
Rejection 3. Claims 1—8 under 35 U.S.C. § 103 as unpatentable over
U.S. Patent No. 4,353,242 to Harris et al., issued October 12, 1982,
(hereinafter “Harris”) in view of Gerard Hopfgartner et al., Triple
quadrupole linear ion trap mass spectrometer for the analysis of small
molecules and macromolecules, 39 J. of Mass Spectrometry 845—855 (2004)
(hereinafter “Hopfgartner”). Id. at 4—6.
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Application 13/309,187
ANALYSIS
Rejection 1, 35 U.S.C. $ 112. The Examiner rejects claims 1—8 as
being indefinite because the claims provide for use of data but they “do not
recite a particular machine or apparatus . . . nor any positive steps involved
in a method/process” transforming an article to a different state or thing.
Ans. 3. We agree with Appellant, however, that claim 1 (and the claims
depending from it) recites, for example, positive steps performed “by the
processor” and by a “display screen.” Appeal Br. 7. We further note that,
given the context of claim 1 and the Specification, the recited processor is a
physical computer processor. See Spec. 10:14—15 (“[t]he substance of the
data processor 23 and the controller 25 is a personal computer”). Because
we do not discern why the claims are indefinite based upon the Examiner’s
explanation, we do not sustain this rejection.
Rejection 2, 35 U.S.C. $ 101. The Examiner rejects claims 1—8 as not
being directed to patent eligible subject matter because the claims are
“directed to an abstract idea.” Ans. 4. Appellant argues that the claims
recite additional elements that amount to significantly more than an abstract
idea. Appeal Br. 6.
We review the appealed rejections for error based upon the issues
identified by the Appellant and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that Appellant identifies reversible error with respect
to this rejection.
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Application 13/309,187
The Appellant presents separate arguments for claims 1,3, and 4. We
limit our discussion to those claims. Claims 2 and 5—8 will stand or fall with
claim 1, from which they depend.
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.”
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014).
According to the Supreme Court's framework, it must first be determined
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). Id. If so, a second
determination must be made to consider the elements of each claim both
individually and “as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a patent-eligible
application. Id. (internal quotes and citation omitted).
Here, regarding the first part of the Alice inquiry, the Examiner
determines that the claims are directed to “the use of a mathematical
procedure to convert numerical representations to a different representation
— like manipulating a mathematical graph ...” (Ans. 7), de facto identifying
the subject matter claimed as an abstract idea. Appellant does not dispute
this point and instead argues only the second part of the Alice inquiry.
Appeal Br. 6—7. Being directed to no persuasive argument to the contrary,
we adopt the Examiner’s determination as to the first part of the Alice
inquiry and conclude that the claims are directed to an abstract idea.
Regarding the second part of the Alice inquiry, claim 1 recites creating
and displaying a two-dimensional graph, allowing the user to select data by
windowing a portion of the graph, and displaying calculations based upon
the selected data. Ans. 6. Similarly, claims 3 and 4 recite “displaying the
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Application 13/309,187
summed mass chromatogram with the two-dimensional contour graph” or
“displaying the summed mass spectrum with the two-dimensional contour
graph.” Id. at 6—7. These recitations, however, merely make use of
conventional computer technology to select data for further calculations and
display. See Spec. 1 6 (explaining that display of data having claim 1 ’s
recited three dimensions was “known”), 123 (“The substance of the data
processor 23 and the controller 25 is a personal computer”). Our reviewing
Court has previously held that use of off-the-shelf conventional “computers,
networks, and displays does not transform the claimed subject matter into
patent-eligible applications.” Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1355 (Fed. Cir. 2016). Moreover, “[mjerely requiring the
selection and manipulation of information ... by itself does not transform
the otherwise-abstract processes of information collection and analysis.” Id.',
see also Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348
(Fed. Cir. 2015) (holding that claims directed to retaining information in
navigation of online forms is not patent eligible despite reciting use of
conventional browser Back and Forward navigation); FairWarning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“the use of generic
computer elements like a microprocessor or user interface do not alone
transform an otherwise abstract idea into patent-eligible subject matter”).
Appellant argues in reply that the processor “provide[s] an improved
display of a two-axes result. . . .” Reply Br. 2. But even if we were to
accept this point arguendo, it would only establish that the claims “defm[e] a
desirable information-based result,” and our reviewing Court has held that
this kind of recitation is not sufficient to render claims patent eligible. Elec.
Power Grp., LLC, 830 F.3d at 1351. Appellant has not argued that, for
example, using a computer to select certain data on the screen via use of a
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Application 13/309,187
window is not a generic computer element, and our review is based solely on
arguments raised by Appellant. See Ex parte Frye, 94 USPQ2d at 1075 (“If
an appellant fails to present arguments on a particular issue ... the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection”); In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010),
quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009) (“the burden of
showing that an error is harmful normally falls upon the party attacking the
agency’s determination.”). Moreover, because Appellant does not argue that
the claims provide a specific improvement to the way the recited “processor”
operates, the record before us is distinguishable from, for example, our
reviewing court’s decisions Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1336 (Fed. Cir. 2016) (holding that claims were patent eligible where
“directed to a specific improvement to the way computers operate”) and
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (holding
claims patent eligible where they “overcome a problem specifically arising
in the realm of computer networks”).
We emphasize that claim 1 is not directed to a chromatograph mass
spectrometer or using a spectrometer. While the recited method makes use
of “data collected by a chromatograph mass spectrometer,” one could
perform the recited method merely by working with such data as recited.
The data could be, for example, collected by a different person or machine.
We therefore do not consider the use of the spectrometer in assessing patent
eligibility, and we do not reach any opinion as to whether or not a theoretical
claim reciting a method requiring use of a spectrometer may be abstract.
Because, for the reasons explained above, Appellant identifies no
harmful error in the Examiner’s Section 101 determination, we sustain this
rejection of claims 1—8.
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Application 13/309,187
Rejection 3, 35 U.S.C. $ 103. The Examiner rejects claims 1—8 as
obvious over Harris in view of Hopfgartner. Ans. 5. The Examiner finds
that Harris teaches a method for monitoring and recording data from a
chromatography-spectrometry coupled type apparatus. Id. The Examiner
also finds that Hopfgartner discloses a data processing method for a
chromatography-spectrometry coupled type apparatus. Id. at 5—6. The
Examiner concludes that it would have been obvious to employ computer
components of such apparatus, such as the mouse and keyboard, “for the
purpose of being able to easily process data using different scan modes for
achieving better selectivity to improve quantitative and qualitative analysis.”
Id. at 6.
Appellant argues that neither Harris nor Hopfgartner teach displaying
the data specified by claim 1. Appeal Br. 9. In particular, claim 1 requires
(1) display of a two-dimensional graph “which expresses three dimensions,
(2) providing software capability that allows a user “to graphically specify
an area” on said graph “using a frame,” and (3) “summing up” signal
intensities “to create a summed mass chromatogram where a range of the
mass-to-charge ratios whose signal intensities are summed up is different
from a retention time to another retention time.” Id. at 13—14 (Claims
App’x). Appellant argues that Harris does not teach a method where the
range of mass-to-charge ratios summed up is different for different retention
times and further argues that Figure 7 of Harris suggests that the range
summed up would be fixed. Id. at 10.
The Examiner does not adequately explain how either Harris or
Hopfgartner teaches that the range of mass-to-charge ratios summed up will
differ from retention time to retention time and does not explain why this
particular recitation would have been obvious in view of the prior art. See
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Ans. 10-11 (acknowledging Appellant’s argument regarding summing up
different ranges of mass-to-charge ratios, but not explaining why that
particular recitation would have been obvious). Therefore, based on the
record in this appeal, we do not sustain the Examiner’s obviousness rejection
of claims 1—8.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1—8 based on 35 U.S.C. §§ 103 and 112. We affirm the Examiner’s
rejection of claims 1—8 based on 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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