14027463 (P.T.A.B. Aug. 24, 2018)

Ex Parte Cembrowski

Patent Trial and Appeal BoardAug 24, 2018

14027463 (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/027,463 09/16/2013 George S. Cembrowski 21186 7590 08/28/2018 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 UNITED ST A TES OF AMERICA 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. 3096.001US2 4071 EXAMINER NIMOX, RAYMOND LONDALE ART UNIT PAPER NUMBER 2864 NOTIFICATION DATE DELIVERY MODE 08/28/2018 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): uspto@slwip.com SLW@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE S. CEMBROWSKI Appeal2017-010699 Application 14/027 ,463 1 Technology Center 2800 Before GEORGE C. BEST, N. WHITNEY WILSON, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 5-23. We have jurisdiction. 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellant, the real parties in interest are George S. Cembrowski and David Vu Tran. Appeal Br. 2. Appeal2017-010699 Application 14/027 ,463 STATEMENT OF THE CASE2 Appellant describes the invention as relating to method and apparatus for testing, comparing, and calibrating scientific measurement equipment. Spec. 1:13-15. In particular, the Specification describes generating "graphical precision profiles" from quality control data or serial patient data that are then used to summarize and compare the performance of difference analyzers that produced the data. Id. at 2: 13-29. Claims 5 and 14, with some formatting modified for readability and emphases added to certain key recitations, are the only independent claims on appeal and are illustrative of the claimed subject matter: 5. A method of calibrating laboratory analyzer equipment compnsmg: using the laboratory analyzer equipment to generate sample results, the sample results including measurements of a single analyte from multiple persons; determining a within-patient variation including: determining average intra-patient variations of the sample results provided by the laboratory analyzer over a period of time; determining an axis-intercept using a regression of the average intra-patient variations versus time between the sample results; determining the within-patient variation as a function of the axis-intercept; and calibrating the laboratory analyzer equipment as a function of the determined within-patient variation; and 2 In this Decision, we refer to the Non-Final Office Action dated September 19, 2016 ("Non-Final Act."), the Appeal Brief filed February 21, 2017 ("Appeal Br."), the Examiner's Answer dated June 12, 2017 ("Ans."), and the Reply Brief filed August 14, 2017 ("Reply Br."). 2 Appeal2017-010699 Application 14/027 ,463 using the calibrated laboratory analyzer equipment to generate further sample results of the single analyte. 14. A system comprising: laboratory analyzer equipment that performs measurements on biological samples, including one or more analytes of multiple persons, to generate sample results; a memory storing the sample results obtained from measuring the biological samples using the laboratory analyzer equipment; a display; a processor communicatively coupled to the memory, the display, and the laboratory analyzer equipment; the memory storing instructions, which when executed by the processor, cause the processor to: calculate a within-patient variation including: determining average intra-patient variations of the sample results obtained from the memory; determining an axis-intercept using a regression of the average intrapatient variations versus time between the sample results; determining the within-patient variation as a function of the axis-intercept; and determining calibration information as a function of the within-patient variation; and provide the calibration information to a user through the display. Appeal Br. 24, 26 (Claims App.). 3 Appeal2017-010699 Application 14/027 ,463 REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Claims 5-23 under 35 U.S.C. Â§ 101 because the claims are directed to an abstract idea without significantly more. Non-Final Act. 4. Rejection 2. Claims 5-13 on the ground of nonstatutory double patenting as unpatentable over claims 1-9 of Cembrowski, U.S. Patent No. 8,538,727 B2, Sept. 17, 2013 ("Cembrowski") in view of official notice. Non-Final Act. 9. Rejection 3. Claims 14--23 on the ground of nonstatutory double patenting as unpatentable over claims 1-9 of Cembrowski in view of Parkhurst et al., U.S. Patent Application No. 2008/0186133 Al, Aug. 7, 2008 ("Parkhurst"). Non-Final Act. 12. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. 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) ("[I]t 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 arguments, we are not persuaded that Appellant identifies reversible error except where otherwise stated below. Thus, to the extent we sustain the Examiner's rejections, we do so essentially for the reasons expressed in the September 19, 2016, Non- 4 Appeal2017-010699 Application 14/027 ,463 Final Office Action and the Answer. We add the following primarily for emphasis. Rejection 1, claims 5-13. The Examiner rejects all claims on appeal as unpatentable under 35 U.S.C. Â§ 101 based upon the claims being directed to abstract ideas. Non-Final Act. 2-7; Ans. 2-8. The Examiner states that claim 5 is directed to a mathematical algorithm. Ans. 3. In particular, the Examiner indicates that the abstract idea is "[a]n algorithm for calculating parameters indicating an abnormal condition, [ c ]ollecting information, analyzing it, and display[ing] certain results of the collection and analysis, [ d]ata recognition and storage, to calibrate laboratory analyzer equipment. .... " Id. ( citations omitted). Appellant argues, inter alia, that claim 5 is not directed to an abstract idea and argues that claim 5 when, considered as an ordered combination, improves the relevant technology. Appeal Br. 10-20; Reply Br. 2. On the present record, Appellant's arguments persuade us of reversible error with respect to claim 5 and claims depending from claim 5. To determine whether an invention claims ineligible subject matter requires the application of the two-step test first introduced in Mayo Collaborative Services v. Prometheus Laboratories., Inc., 566 U.S. 66, 70 (2012), and further explained in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014). The first step requires a determination as to whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea. See Alice, 134 S. Ct. at 2355. The second step requires examination of "the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- 5 Appeal2017-010699 Application 14/027 ,463 eligible application." Id. at 2357 (quoting Mayo, 566 U.S. at 72-73, 79). The Federal Circuit has explained that, with regards to determining whether a claim is directed to an abstract idea, "the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided." See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). Our analysis of the first step of the Mayo/Alice test resolves the present matter. In analyzing claim 5, the Examiner maintains that the claimed process collects data and performs calculations but does not transform an article into a different state or thing. Ans. 5. The Examiner errs in, for example, stating that "[ t ]he data being acquired and processed still remains data at the conclusion of the process." Id. Contrary to the Examiner's statement, claim 5 also requires calibrating the laboratory analyzer equipment (based upon data collected and calculations on the data) and then, importantly, "using the calibrated laboratory analyzer equipment to generate further sample results of the single analyte." Appeal Br. 24 (Claims App.); see also Reply Br. 2 (arguing that recitation "transforms the laboratory analyzer into the calibrated laboratory analyzer"). The end result of claim 5 is use of laboratory analyzer on a sample in a different manner (based on new calibration) than the analyzer was used previously. Because of claim 5 's final recitation, the claim as a whole is directed to a method of using a system (including laboratory analyzer equipment and a measured analyte) to improve the laboratory analyzer equipment and use the improved equipment. The claim also does not merely state a result while 6 Appeal2017-010699 Application 14/027 ,463 without reciting a particular means of achieving that result; rather, claim 5 requires use of the recited "determining a within-patient variation" method. As in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1314--1315 (Fed. Cir. 2016), the claims here are directed to a specific process for determining a useful end result (improving laboratory analyzer equipment and then using the equipment to achieve better results). The claims require a specific technical approach to the technical problem at hand and are said to improve the functioning of prior art calibration methods. Appeal Br. 17, 20; see also, e.g., Spec. 2: 1-29. As in Enfzsh, LLC v. Microsoft Corp., "we are not faced with a situation where general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation." 822 F.3d 1327, 1339 (Fed. Cir. 2016). Rather, the claims as a whole are directed to a specific way of improving laboratory analyzer equipment and, in this sense, are analogous to the claims of Enfzsh that were directed to "a specific type of data structure designed to improve the way a computer stores and retrieves data in memory." Id. The Examiner does not maintain a prior art rejection and does not find that the recited process as a whole merely implements old functionality in a new environment. Claims 5-13 are distinguishable from those of Electric Power Group v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), because they go beyond merely organizing existing information into a new form or carrying out a fundamental economic practice. Elec. Power Grp., 830 F.3d at 1355 ("The claims in this case do not even require a new source or type of information, or new techniques for analyzing it."); see also McRO, 837 F.3d at 1315 ("the automation goes beyond merely 'organizing [existing] information into a 7 Appeal2017-010699 Application 14/027 ,463 new form' or carrying out a fundamental economic practice" ( alteration in original) ( citation omitted)). The claims are similarly distinguishable from other patent claims our reviewing court has determined are patent ineligible. See, e.g., FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (holding that claims were patent ineligible because they merely implemented an old fraud detection practice in a new computer environment); Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018) (holding that claims were patent ineligible because they merely demand "the production of a desired result [presentation of information in a non-overlapping way on a display] ... without any limitation on how to produce that result"). For the reasons above, we determine that claim 5, and claims depending from claim 5, are not directed to an abstract idea. Because we this issue in Appellant's favor under step one of the Alice analysis, we need not reach step two. We therefore do not sustain the Examiner's rejection of claims 5-13. Rejection 1, claims 14--23. As with claim 5, the Examiner rejects independent claim 14 as patent ineligible under Â§ 101 and states claim 14 directed to a mathematical algorithm. Ans. 6-7. Claim 14 has different scope than claim 5, and we analyze it separately under the two step Mayo/Alice test. Under step one of the Mayo/Alice test, we agree with the Examiner that claim 14 is directed to an abstract mathematical algorithm. In particular, claim 14 recites a mathematical procedure for calculating a within-patient variation and then outputs that result of that calculation ("calibration information") to a user through a display. The claim 14 system 8 Appeal2017-010699 Application 14/027 ,463 recites laboratory analyzer equipment, a computer that calculates based on data from the equipment, and a display. Unlike claim 5, claim 14 does not improve or calibrate the laboratory analyzer equipment. Rather, we agree with the Examiner (Ans. 6) that claim 14 is directed to an abstract idea because it merely recites a system for "presenting the results of abstract processes of collecting and analyzing information, without more .... " Elec. Power Grp., 830 F.3d at 1354. Contrary to Appellant's argument (Appeal Br. 18), claim 14 is dissimilar from, for example, the claim in Diamond v. Diehr, 450 U.S. 175 ( 1981 ). In Diehr, the end result of the claim at issue was tangible and improved operation of the rubber-molding press. Id. at 184 ("That respondents' claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing cannot be dispute."). In comparison, the final purpose of claim 14' s apparatus is merely to "provide the calibration information to a user through the display." Under step two of the of the Mayol Alice test, we agree with the Examiner that no additional elements of claim 14 amount to significantly more than the abstract idea because any additional elements are recited at a high level of generality and are well-understood, routine, and conventional components providing conventional implementation. Ans. 7-8. In addressing this issue, we recognize that "[ w ]hether something is well- understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination." Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). Here, claim 14 generally recites laboratory analyzer equipment that measures samples, computer memory for storing sample results and also 9 Appeal2017-010699 Application 14/027 ,463 storing instructions for the processor, a display, and a processor. Appeal Br. 26 (Claim App.). The Examiner finds that the computer components are generic and "merely provide conventional computer implementation." Ans. 7-8. Appellant does not persuasively identify error in this factual finding, and the Examiner's finding is in accord with past decisions of the courts. See, e.g., Alice, 134 S. Ct. at 2358 ("the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent- eligible invention"); Elec. Power Grp., 830 F.3d at 1355 (holding that "off the shelf, conventional, computer, network, and display technology for gathering, sending, and presenting the desired information" are insufficient to pass step two of the Mayo/Alice test). Moreover, "[ m ]erely 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, 839 F.3d at 1096 ("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"). With respect to claim 14 's recited laboratory analyzer equipment, Appellant's Specification indicates that such equipment is routine and conventional. Spec. 2 :2-11 ("Clinical laboratory analyzers are used extensively in the medical and forensics profession and in research to perform tests on biological and other substances."). Also, in the context of claim 14, the laboratory analyzer equipment serves as the system's input 10 Appeal2017-010699 Application 14/027 ,463 device. Our reviewing court has held that generic and well-known devices for inputting data into a computer do not transform an abstract idea into a patent-eligible invention. See, e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (holding that use of generic computer and scanner did not make claim patent eligible); compare with Thales Visionix Inc. v. United States, 850 F.3d 1343, 1348--49 (Fed. Cir. 2017) (holding that claims "directed to systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame" were patent eligible) ( emphasis added). Because, for the reasons explained above, Appellant identifies no harmful error in the Examiner's Section 101 determination, we sustain this rejection of claim 14. Appellant does not separately argue claims 18-20, 22, and 23 which each depend from claim 14. We therefore also sustain the rejection of claims 18-20, 22, and 23. 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). Appellant presents separate arguments for claims 15, 16, 17, and 21. Appeal Br. 21-22. Claims 15 and 16 relate to how sample results are obtained. Claim 1 7 and 21 further refine how sample results are grouped and/or how calculations are made. None of these claims modify claim 14 so that the function of the laboratory analyzer equipment is improved; rather the recited system still obtains data, performs calculations, and provides an output of the calculation to a display. Moreover, none of these claims add significantly more to the claim beyond the abstract idea. Ans. 8. Accordingly, we also sustain the Examiner's rejection of claims 15, 16, 17, and 21. 11 Appeal2017-010699 Application 14/027 ,463 Rejections 2 and 3. Appellant does not dispute the Examiner's obviousness type double patenting rejections. We therefore summarily sustain these rejections. Ex parte Frye, 94 USPQ2d at 1075. DECISION For the above reasons, we reverse the Examiner's rejection of claims 5-13 under 35 U.S.C. Â§ 101. We affirm the Examiner's rejection of claims 14--23 under 35 U.S.C. Â§ 101. We affirm the Examiner's nonstatutory double patenting rejections of claims 5-13 and of claims 14-- 23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 12