Ex Parte Curry et al

Patent Trial and Appeal Board

Apr 12, 2017

13073766 (P.T.A.B. Apr. 12, 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.
13/073,766 03/28/2011 Bo U. Curry 20100176-02 8505
7590
Agilent Technologies, Inc. in care of:
CPA Global
P. O. Box 52050
Minneapolis, MN 55402
EXAMINER
ZEMAN, MARY K
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
04/14/2017 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):
IPOPS .LEGAL @ agilent.com
Agilentdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BO U. CURRY and NICHOLAS M. SAMP AS1
Appeal 2016-006071
Application 13/073,766
Technology Center 1600
Before FRANCISCO C. PRATS, TAWEN CHANG,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to analyzing
data related to single polynucleotide polymorphisms, which have been
rejected as being directed to non-statutory subject matter. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Agilent Technologies, Inc.
Br. 3.
Appeal 2106-006071
Application 13/073,766
STATEMENT OF THE CASE
Single nucleotide polymorphisms (“SNPs”) are single base pair
changes that occur in DNA and confer genetic differences between
individuals. Spec. 1,11. 7—9. “Methods for the determination of SNP alleles
and copy number measurements are important to the research community for
the diagnosis of disease, especially in cytogenetics and cancer.” Id. at 1,11.
14—16.
Claims 1—20 are on appeal. Claim 1 is the sole independent claim and
reads as follows:
1. A method of sample analysis, comprising:
a) obtaining a plurality of ratios indicating which alleles
of a plurality of single nucleotide polymorphisms (SNPs) are
present in diploid regions of a test genome from a test sample
and a reference genome from a reference sample;
b) calculating a plurality of probability distribution
functions that fit said plurality of ratios; and
c) estimating the allele-specific copy number of a SNP of
said test genome using said plurality of probability distribution
functions.
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to
patent ineligible subject matter.
DISCUSSION
Issue
Then issue is whether a preponderance of evidence supports the
Examiner’s conclusion that claims 1—20 are directed to patent ineligible
subject matter.
The Examiner finds that the claims are directed to “the abstract idea of
analyzing genetic data, wherein [the] information is received regarding a test
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genome and a reference genome, compared using computer system elements
and calculations, and a characteristic of the test genome is determined.”
Final Act. 2. The Examiner finds that each of the steps is directed to an
abstract idea and, therefore, is patent ineligible. Id. The Examiner also finds
that the claims are directed to a second exception to patentable subject
matter, a natural phenomenon. Id. at 2—3. The Examiner finds that the
“presence of any particular genetic variant in a test genome relates to a
natural principle.” Id. at 3. The Examiner finds that the claims do not recite
any additional limitations which rise to the level of significantly more that
the judicial exceptions. Id. at 3^4.
Appellants contend that the claims are directed to patentable subject
matter because they are limited to a particular practical application. Br. 4.
Appellants argue that the claimed method is not a familiar part of the
conscious process that can be done in one’s head. Id. at 5. Appellants also
argue that the claims are directed to a method where the data is transformed
to provide new information. Id. at 6. Appellants argue that the claims are
not directed to a natural law and that the Examiner has not offered any
evidence that the additional limitations are not sufficient to amount to
significantly more than the judicial exception. Id. at 7. Appellants conclude
by arguing that the claims do not unduly pre-empt other methods of
performing the analysis. Id.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting
a prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
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record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellants do not persuade us that a preponderance of the evidence
fails to support the Examiner’s conclusion that the rejected claims recite
subject matter ineligible for patenting under 35 U.S.C. § 101.
35 U.S.C. § 101 states that “[wjhoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.”
The Supreme Court has “long held that this provision contains an
important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Banklnt’l,
134 S. Ct. 2347, 2354 (2014).
Our reviewing court has summarized the Supreme Court’s two-part
test for distinguishing between claims to patent-ineligible exceptions, and
claims to patent-eligible applications of those exceptions, as follows:
Step one asks whether the claim is “directed to one of
[the] patent-ineligible concepts.” [Alice, 134 S. Ct. at 2354], If
the answer is no, the inquiry is over: the claim falls within the
ambit of § 101. If the answer is yes, the inquiry moves to step
two, which asks whether, considered both individually and as
an ordered combination, “the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo [Collaborative Services v. Prometheus Labs,
Inc., 132 S. Ct. 1289, 1297 (2012)]).
Step two is described “as a search for an ‘inventive
concept.’” Id. (quoting Mayo, 132 S. Ct. at 1294). At step two,
more is required than “well-understood, routine, conventional
activity already engaged in by the scientific community,” which
fails to transform the claim into “significantly more than a
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patent upon the” ineligible concept itself. Mayo, 132 S. Ct. at
1298, 1294.
Rapid Litigation Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed.
Cir. 2016) (paragraphing added).
In the present case, claim 1 recites the steps of obtaining data from a
sample, performing calculations using the data, and making estimations
relating to the sample based on the calculations. The claims fall within the
category of mathematical relationships which renders them patent ineligible.
“Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible.” Digitech Image Techs., LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).
As to part two of the Supreme Court’s test, claim 1 does not recite any
additional steps or limitations which transform the claim into something
significantly more than the judicial exception.
We, therefore, agree with the Examiner that, under the Supreme
Court’s two-part test, claim 1 recites subject matter ineligible for patenting
under § 101.
Appellants’ arguments do not persuade us to the contrary.
Appellants contend that the claimed method is directed to a particular
application of the data. Br. 4. However, as the Examiner has pointed out,
the claims do not recite any particular application of the method. Ans. 11.
Appellants argue that the claimed method transforms data. Br. 6. We
agree with the Examiner that the claims are directed to manipulation of data
and do not transform matter or reduce an article to a different state or thing.
Ans. 12. The claimed method only uses existing algorithms to manipulate
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data to generate additional information. As such, the claims are direct to
patent ineligible subject matter. Digitech Image Techs., 758 F.3d at 1351.
We are not persuaded by Appellants’ argument that the calculations
required for each step are not ones that can be performed in one’s head. Br.
5. We agree with the Examiner that, while the steps may be tedious, that
does not mean that they are not mental steps. Ans. 13.
Appellants’ argument that the clams do not preclude using other
methods to determine the number of SNPs in the test genome indicates that
the method is patentable is also not persuasive. Br. 7. Our reviewing court
has expressly rejected similar contentions regarding preemption, stating that
a patentee’s “attempt to limit the breadth of the claims by showing
alternative uses . . . outside of the scope of the claims does not change the
conclusion that the claims are directed to patent ineligible subject matter.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). The court explained that, “[wjhile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility. . . . Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework . . .
preemption concerns are fully addressed and made moot.” Id.
In the present case, as discussed above, Appellants’ claim 1 is limited
to patented ineligible subject matter under the Mayo framework. Thus, that
alternatives outside the claims are not preempted does not demonstrate
patent eligibility.
We are unpersuaded by Appellants’ argument that the Examiner has
failed to produce any evidence to support the proposition that the claims do
not present something substantially more than the judicial exceptions. Br. 7.
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As the Examiner points out, the Guidance of 30 July 20152 states that, once
the Examiner identifies and explains the reasons why a claim is ineligible,
‘“the burden shifts to the Applicant to either amend the claim or make a
showing of why the claim is eligible for protection’ (footnote 15, Section
IV). It is maintained that Appellants] did not present evidence of such a
showing herein and provided opinion arguments at why the claims satisfy
the requirement under 35 [U.S.C. §] 101.” Ans. 14.
In sum, for the reasons discussed, Appellants do not persuade us that a
preponderance of the evidence fails to support the Examiner’s conclusion
that Appellants’ claim 1 is patent-ineligible under § 101. Accordingly, we
affirm the Examiner’s rejection of claim 1 on that ground. Because they
were not argued separately, claims 2—20 fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection under 35 U.S.C. § 101.
TIME PERIOD FOR RESPONSE
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
2 USPTO, July 2015 Update: Subject Matter Eligibility (July 30, 2015),
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf
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