Ex Parte Deutsch et al

Patent Trial and Appeal Board

Apr 20, 2017

13852288 (P.T.A.B. Apr. 20, 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.
13/852,288 03/28/2013 Thomas W. Deutsch END920120233US2 2570
7590
Brown & Michaels (END)
c/o Brown & Michaels, PC
118 North Tioga Street
Suite 400
Ithaca, NY 14850
EXAMINER
NEGIN, RUSSELL SCOTT
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
04/24/2017 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):
docket@bpmlegal.com
lwood@bpmlegal.com
twood@bpmlegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS W. DEUTSCH, ROBERT R. FRIEDLANDER,
JAMES R. KRAEMER, and JOSKO SILOBRCIC1
Appeal 2016-006123
Application 13/852,288
Technology Center 1600
Before ERIC B. GRIMES, MELANIE L. McCOLLUM,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to methods
for analyzing epigenetic data, which have been rejected as being directed to
non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification teaches that
Epigenetics includes the study of heritable changes in
gene expression that are not due to changes in DNA sequence,
1 Appellants identify the Real Party in Interest as International Business
Machines Corporation. Appeal Br. 1.
Appeal 2016-006123
Application 13/852,288
in other words, all modifications to genes other than changes to
the DNA sequence itself. Examples of modifications are DNA
methylation, histone modification, chromatic accessibility,
acetylation, phosphorylation, ubiquitination, ADP-ribosylation
and others. The modifications alter the chromatin structure of
the DNA and its accessibility, and therefore the regulation of
gene expression patterns. The pattern of gene expression can
also be modified by exogenous influences, such as
environmental influences including nutrition. These
modifications can persist throughout an organism’s lifetime and
be passed onto to future generations.
Spec. 13.
The present invention is directed to a method for reducing an amount
of “epigenetic data representing epigenetic modifications of a genetic
sequence of an organism using a file distributed system.” Spec. 1 8.
Claims 1—18 are on appeal. Claim 1 is representative of the rejected
claims and reads as follows:
1. A method for reducing an amount of epigenetic data
representing epigenetic modifications of a genetic sequence of
an organism using a file distributed system comprising a series
of clusters coupled together, each cluster having at least one
master node and a plurality of worker nodes, comprising:
a computer comprising one of the master nodes of one of
the clusters of the file distributed system breaking a reference
epigenetic map and epigenetic data from at least one point in
time into blocks of data of a fixed size;
the computer distributing the blocks of data to the
plurality of worker nodes within the clusters and replicating the
blocks of data within each of the worker nodes;
the computer tasking the plurality of worker nodes to
perform a map job comprising mapping the reference epigenetic
map relative to the epigenetic data from at least a point in time
by:
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Application 13/852,288
comparing a subset of the epigenetic data representing
epigenetic modifications of a genetic sequence of an organism
to the mapped part of a genetic sequence of the reference
epigenetic map, to find differences where epigenetic
modifications of the genetic sequence of the organism are
different from the mapped part of the genetic sequence of the
reference epigenetic map;
storing intermediate surprisal data in a key and value
format in a repository of the cluster, the intermediate surprisal
data comprising at least a starting location of the epigenetic
modifications within the reference epigenetic map, and the
modifications from the genetic sequence of the organism which
are different from the reference epigenetic map, discarding
modifications of the reference epigenetic map that are the same
in the genetic sequence of the organism; and
reporting the status of the task to map the reference
epigenetic map to the epigenetic map at a specific point in time
to the at least one master node of the cluster; when a worker
node has reported a completion of the map job, the computer
tasking the worker node with a reduce job based on a specific
key, comprising:
the worker node shuffling the intermediate surprisal data
between the worker node and a plurality of worker nodes of
other clusters, based on the specific key; and
the worker node reducing the intermediate surprisal data
to an output of epigenetic surprisal data and associated
metadata.
Claims 1—18 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
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Application 13/852,288
DISCUSSION
Issue
The issue is whether a preponderance of evidence supports the
Examiner’s conclusion that claims 1—18 are directed to non-statutory subject
matter.
The Examiner finds that the rejected claims are directed to an abstract
idea and are therefore directed to non-statutory subject matter. Final Act.
3^4. The Examiner finds that using a computer to distribute work between
nodes is conventional and routine and does not represent something
significantly more that the abstract idea. Id.
Appellants contend that the claimed method is patentable as the
method does not fall within one of the four listed categories of abstract ideas
identified by the USPTO and the courts. Appeal Br. 11. Appellants argue
that the use of a computer does not automatically trigger an eligibility
analysis. Id. Appellants contend that the specific steps recited in the claims
represent something significantly more than the abstract idea of analyzing
the epigenetic data. Id. at 12. Appellants also argue that the claimed method
does not preclude the use of other methods to reduce epigenetic data and that
this indicates that the claims are not directed to non-statutory subject matter.
Reply Br. 6.
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, which 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
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Application 13/852,288
into “significantly more than a 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 “breaking a reference
epigenetic map and epigenetic data from at least one point in time into
blocks of data of fixed size,” “distributing the blocks of data to the plurality
of worker nodes within the clusters and replicating the blocks of data within
each of the worker nodes,” “tasking the plurality of worker nodes to perform
a map job comprising mapping the reference epigenetic map relative to the
epigenetic data from at least a point in time,” and comparing subsets of
epigenetic data. Appeal Br. 15 (Claims Appendix). We agree with the
Examiner that the recited steps involve mathematical manipulations of
computational data which falls within the category of mathematical
relationships. “Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible.” Digitech Image Techs, v.
Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).
As to part two of the Supreme Court’s test, we agree with the
Examiner that the claims do not recite any additional steps or limitations
which transform the claim into something significantly more than the
judicial exception. Ans. 3. We agree with the Examiner that each of the
limitations recited by Appellants as representing something significantly
more are themselves abstract ideas. Ans. 3. Appellants have offered
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nothing persuasive to support their contention that the recited steps represent
something significantly more than abstract ideas. Id.
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 method recited in the claims does not fall
within one of the specific categories of abstract ideas found to be ineligible
subject matter. Appeal Br. 11. For the reasons stated above, we find this
argument unpersuasive.
Appellants also contend that the recited steps represent something
significantly more that an abstract idea rendering the method eligible for
patent protection. Appeal Br. 12. As discussed above, the recited steps
themselves are abstract ideas and do not render the claimed method
patentable.
We are also not persuaded by Appellants’ argument that the claims do
not preempt the idea of reduction of epigenetic data as the claims are
directed to a specific method for reducing the data. Reply Br. 6. 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
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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, the
fact that alternatives outside the claims are not preempted does not
demonstrate patent eligibility.
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’ claims 1—18 are patent-ineligible under § 101. Accordingly,
we affirm the Examiner’s rejection of claims 1—18.
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
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