Ex Parte Doona et al

Patent Trials and Appeals Board

Feb 28, 2019

12551596 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/551,596 09/01/2009
26710 7590 03/04/2019
QUARLES & BRADYLLP
Attn: IP Docket
411 E. WISCONSIN A VENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Christopher Doona
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.
NA-1361 2929
EXAMINER
SKIBINSKY, ANNA
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER DOONA, FLORENCE FEEHERRY,
EDWARD ROSS, and KENNETH KUSTIN
Appeal2018-000776
Application 12/551,596
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-00077 6
Application 12/551,596
Appellants1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner's decision to reject claims 1---6, 8-13, and 15-21 (Appeal Brief
filed May 9, 2017 ("App. Br.") 2.)
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
Appellants' Specification is directed to a Quasi-chemical method of
modelling microbial growth rates used to predict conditions assuring the
safety of foods. (See Spec. ,r,r 37-38). The "Quasi-chemical model is a
mechanistic-based mathematical model that applies appropriate sequences of
chemical reactions or biochemical processes to more accurately and
meaningfully represent" a bacteriological lifecycle. (Spec. ,r 5). Appellants
use this model to ensure food safety and determine shelf-life by predicting
microbial growth and controlling food processing and temperature control
technologies.
Appellants' claim 18 recites:
A method comprising:
inputting, into a computer comprising a microprocessor
executing instructions stored on the computer, experimentally
measured data pair vectors comprising time ( td) vector and
corresponding population count (xd) vector;
inputting, into the computer, initial values of rate
constant estimates comprising a k-vector of at least six
numerical values (k1, k2, k3, ~' ks, k6 ... kn);
storing each of the td vector, xd vector and k-vector
values in memory of the computer for use in a Quasi-chemical
kinetics growth-death-tailing model wherein the model is
1 Appellants report that the real party in interest is Brandeis University.
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Application 12/551,596
defined by five rate equations derived from a hypothetical
mechanism of reaction steps of biochemical processes:
Reaction Steps Rate equations
Q----+M dQ/dt = - (v1 +vs)= (k1 + ks)Q
M----+ 2M + E dM/dt = V1 + V2 - V3 - V4 = k1Q -
M(G- EE)
M+E----+D dE/dt = (v2 - V3) = M(k2 - EE)
M----+D dD/dt = (v3 + V4 +vs)= M(k4 +
EE)+ k6R
Q ----+ R dR/dt = (vs - v6) = ksQ - k6R
R----+ D
where Q represents quiescent organisms, M represents
cells activated for cell division and multiplication, Eis an
extracellular lethality factor, cells, D is dead cells, and R
represents cells with increased resistance,
selecting a non-linear curve-fitting routine stored in the
memory of the computer;
repeatedly:
integrating in the microprocessor of the computer the
Quasi-chemical kinetics growth-death-tailing model with each
of the td vector, xd vector and k-vector values to obtain a
calculated population data (U) using the nonlinear curve-fitting
routine; and
varying each ofk-vector values (k1, k2, k3, k4, ks, k6 ...
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Application 12/551,596
comparing the calculated population data (U) to the
measured td vector and xd vector values until a predetermined
fitting criterion is reached that signifies no further meaningful
improvement has occurred to achieve a curve-fit and thereby
signifies a fit of the model to the td vector and xd vector values;
and
delivering the informational composite to a food
processing technology to process a storable food product to
render the storable food product safe for consumption.
(App. Br. 8-10.) Appellants' independent claim 1 is similar to claim 18, but
includes, inter alia, the step2 of:
delivering, as an input to control a food processing technology
or a temperature controlled food storage technology, an output
of the computer comprising the storable food product as a
micro biologically safe food product with a date of use after
which the microbiologically safe food product needs to be
destroyed.
(App. Br. 2--4.) Appellants' independent claim 8 is similar to claim 18, but
includes, inter alia, the step of: "controlling operation of a food processing
technology or temperature-controlled storage technology using the
informational composite to determine whether the storable food product is
safe for consumption." (App. Br. 5-7.)
2 We note that the step of "delivering ... an output of the computer
comprising the storable food product ... " could reasonably be interpreted to
mean a computer that outputs food. As noted by the panel of conferees from
the Pre-Appeal Brief Review, this limitation should be considered under 35
U.S.C. §§ 112, first and second paragraphs, if prosecution continues. (See
Examiner-Initiated Interview Summary, issued May 2, 2017.)
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Application 12/551,596
The Examiner rejects the claims under 35 U.S.C. § 101 as being
drawn to ineligible subject matter. (Final Office Action mailed December
16, 2016 ("Final Act.") 2.)
Analysis
Although 35 U.S.C. § 101 provides that "[w]hoever 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 ... ," the Supreme Court has determined that there are
exceptions to what is patentable. Specifically, "laws of nature, natural
phenomena, and abstract ideas" are not eligible subject matter. See
Diamondv. Diehr, 450 U.S. 175, 185 (1981). To determine if claimed
subject matter is statutorily eligible in light of these judicial exceptions the
Supreme Court has articulated a two-step framework in Mayo Collaborative
Services v. Prometheus Labs., Inc., 566 U.S. 66 (2012) and later cases.
Specifically,
[ fJirst, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
"[ w ]hat else is there in the claims before us?" ... To answer
that question, we 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.
Alice Corp. Pty. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (quoting
Mayo, 566 U.S. at 78.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (2019) ("2019
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Guidelines"). After determining that claimed subject matter falls within the
four categories of patentable subject matter identified in 35 U.S.C. § 101, the
2019 Guidelines provides a "revised step 2A" to determine whether a claim
is directed to a judicial exception. (See 2019 Guidelines, 84 Fed. Reg. 50,
53-54.) In a first prong of revised step 2A, the Examiner must determine
whether the claim recites a judicial exception. (See id. at 54.) Judicial
exceptions include abstract ideas, defined as "mathematical concepts,"
"certain methods of organizing human activity," and "mental processes."
(Id. at 52.) If the judicial exception identified in the first prong is an abstract
idea, the examiner then moves to a second prong of revised step 2A, to
determine whether the judicial exception is integrated into a practical
application. (See id.) If so, the inquiry ends and the claim is determined to
be directed to eligible subject matter under the 2019 Guidelines. (See id. at
54 ("When the exception is so integrated [into a practical application], then
the claim is not directed to a judicial exception (Step 2A: NO) and is
eligible. This concludes the eligibility analysis.").)
The Examiner finds Appellants' claimed methods as a whole "relies
on the abstract ideas of performing mathematical calculations that are
intended to model a microbial population growth-death rate." (Final Act. 3.)
The Examiner also finds the claims "further recite reviewing information"
which is a mental process. (Id.at 2)
Having determined that the claims are directed to a judicial exception,
the Examiner finds that Appellants' claims do not include additional
elements that are significantly more than the judicial exception. (Final Act.
3.) The Examiner finds that collecting a plurality of samples from a
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microbial population and inputting pairs of microbial counts to be pre-
solution steps of data gathering. (Id.) The Examiner further finds that it is
well-understood, routine, and conventional to use a generic computer,
microprocessor, and user interface for sending calculated information as part
of a larger system of process control. (Id.) Thus, according to the
Examiner, the claims are unpatentable under 35 U.S.C. § 101.
Appellants dispute the Examiner's findings, arguing that the claims
are not directed to a judicial exception without significantly more than an
abstract idea. (See App. Br. 10.) Appellants first argue that the Examiner
described the claims at a high level of abstraction and thus failed to
articulate a reasoned rationale that identifies the judicial exception in the
claims. (See App. Br. 14--15.) Appellants argue that the Examiner has not
compared the claims to claims previously found to be directed to an abstract
idea in a previous court decision, nor interpreted the claims in view of the
specification to determine whether their character as a whole is directed to a
patent eligible concept. (See App. Br. 17 .)
Applying the 2019 Guidelines, we first look to see if the claims recite
any judicial exceptions. Here we find the claims recite a mathematical
concept, in particular, mathematical formulas as listed in the 2019
Guidelines. (See 84 Fed. Reg. at 52.) In this way the claims are similar to
claims analyzed in Diehr and Parker v. Flook, 437 U.S. 584, 594--595
(1978). The mathematical formulas in the claims include rate equations
derived from a hypothetical mechanism of reaction steps. The claims further
recite integrating the model with each vector value using a non-linear curve-
fitting routine, which are known mathematical operations. Because the
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claims recite a mathematical concept, we find that the claims recite the
judicial exception of an abstract idea in the first prong of the revised Step 2A
of the 2019 Guidelines. (See 2019 Guidelines, 84 Fed. Reg. at 51-52.)
We next consider whether any additional elements integrate the
judicial exception into a practical application. (See 2019 Guidelines, 84 Fed.
Reg. 54--55.) The Appellants argue the claims include an improvement to
technology, for example, "an improvement over existing modeling systems
that are not enhanced versions of Quasi-chemical models represented in the
recited table, which are capable of accurately fitting even more complex
kinetic data." (App. Br. 19, citing Spec. ,r 40.) Appellants further argue that
the claims are directed to a particular solution of a problem, namely
determining the "safety and shelf-life of a storable food product for
consumption using a microbiological Quasi-chemical kinetics growth-death
tailing model based on differential equations." (App. Br. 20.) The
Specification states "the disclosed method permit workers skilled in
Predictive Microbiology to use this information to predict food formulations
to inhibit microbial growth or processing conditions to ensure microbial
destruction and assure consumers." (Spec. ,r 42.)
The 2019 Guidelines explain that additional elements that integrate
the judicial exception into a practical application can be an element that
"implements a judicial exception with, or uses a judicial exception in
conjunction with, a particular machine or manufacture that is integral to the
claim." (2019 Guidelines, 84 Fed. Reg. at 55, citing Manual of Patent
Examining Procedure§ 2106.05(a}-(c), (e}-(h).) In an example from the
case law, the claims in Diehr recited a method for operating a rubber-
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Application 12/551,596
molding press including the step of "opening the press automatically when a
said comparison [ of calculated cure time vs. elapsed time] indicates
equivalence." See Diehr, 450 U.S. at 179 n.5. Thus, the recited
mathematical equation had the practical application of automatically
operating a press.
Similarly, claim 1 at issue recites the step of: "delivering, as an input
to control a food processing technology or a temperature controlled food
storage technology, an output of the computer comprising the storable food
product as a microbiologically safe food product with a date of use after
which the microbiologically safe food product needs to be destroyed." Thus,
under prong two of revised Step 2A of the 2019 Guidelines and the Supreme
Court precedent of Diehr, claim 1 integrates the judicial exceptions, i.e., the
mathematical equations, into the practical application of food safety by
delivering a micro biologically safe food product with a date of use.
Likewise, claim 8 at issue recites the step of: "controlling operation of a
food processing technology or temperature-controlled storage technology
using the informational composite to determine whether the storable food
product is safe for consumption." Again, under prong two of revised Step
2A and the Supreme Court precedent of Diehr, claim 8 integrates the judicial
exception into the practical application of food safety by controlling the
operation of a food process technology or temperature-controlled storage
technology.
We conclude that the abstract idea recited in independent claims 1 and
8 is integrated into the practical application of improving food safety
technology recited in the claims. Thus, we conclude that these claimed
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methods are patent-eligible and do not sustain the Examiner's§ 101
rejection of claims 1---6, 8-13, and 15-17 and 19-20 as being drawn to
patent-ineligible subject matter.
Claim 18 is less straight forward because claim 18 does not include an
express step of controlling the operation of another device or any other
express step of using the information derived from the mathematical
equation in conjunction with a particular machine or manufacture.
Nevertheless, claim 18 recites the express step of "delivering the
informational composite to a food processing technology to process a
storage food product to render the storable food product safe for
consumption." The step of delivering information implicates "mere
instructions to apply an exception." In Alice a method claim including, inter
alia, the step of "issuing irrevocable end-of-day instructions to the exchange
institutions to carry out the permitted transactions" was held to be ineligible.
(See Alice, 573 U.S. at 224.) Like the claim in Alice, claim 18 recites only
delivery of information, without any additional limitation that integrates
delivery of such information into a practical application.
Under the 2019 Guidelines, if a claim reciting a judicial exception
includes a limitation that integrates the exception into a practical application,
it is not directed to a judicial exception. (See 2019 Guidelines, 84 Fed. Reg.
at 54.) But, because claim 18 fails to recite an additional limitation that
achieves any of the results exemplified in the 2019 Guidelines, we determine
that claim 18 is directed to the judicial exception of a mathematical concept.
(See id. at 55 ( exemplifying practical applications as improvement in the
functioning of a computer, treatment or prophylaxis of disease, use of a
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particular machine, transformation or reduction of a particular article, or
other linkage to a particular technological environment).)
Because claim 18 is directed to a judicial exception, we evaluate
whether the claim provides an inventive concept, i.e., whether the additional
elements amount to significantly more than the exception itself, as required
in Alice. (See 2019 Guidelines, 84 Fed. Reg. at 56.) As discussed above, the
Examiner found the additional limitations of inputting data were directed to
pre-solutions steps of data gathering, and the additional limitation of sending
calculated information to a generic computer for process control were
routine and conventional. (See Final Act. 3).
Appellants do not present arguments specific to claim 18, generally
referring, instead, to arguments presented for claim 1. (See App. Br. 36-37).
For example, Appellants argue that:
in the independent claims, the input of a plurality of time-
dependent microbial data from a plurality of samples collected
from a microbial population with a storable food product is
transformed into a computer output comprising the storable
food product as a microbiologically safe food product with a
date of use after which the micro biologically safe food product
needs to be destroyed. This, in tum, is transformed into an
input to control a food processing technology or a temperature-
controlled food storage technology.
(App. Br. 27). However, claim 18 does not recite either computer output or
controlling a food processing technology. Therefore, these arguments do not
apply to claim 18.
Likewise, Appellants argue that the claims include an innovation in
computer technology, including improvements to the computer itself, as well
as improvements to computer science, and food storage and preservation
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technologies. (App. Br. 26, citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016) and Bascom Global Internet Serv., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Our reviewing court
in McRO and Enfzsh found that the claims were not directed to a judicial
exception. Thus, the analysis in these cases did not extend to a
determination of whether the additional elements amount to significantly
more than the exception itself. See McRO, 837 F.3d at 1316; see also
Enfzsh, 822 F.3d at 1339. Therefore, these cases are not relevant to
analyzing claim 18 of whether the additional elements of claim 18 amount to
significantly more than the exception itself.
In Bascom, our reviewing court found that while the claims of the
patent were directed to an abstract idea, the patentee alleged an "inventive
concept can be found in the ordered combination of the claim limitations
that transform the abstract idea of filtering content into a particular, practical
application of that abstract idea." Bascom, 827 F.3d at 1352. In particular,
the patent claimed "a technology-based solution (not an abstract-idea-based
solution implemented with generic technical components in a conventional
way) to filter content on the Internet that overcomes existing problems with
other Internet filtering systems." Id. at 1351. Claim 18 is immediately
distinguishable, as it recites an abstract-idea-based solution, that is, a
mathematical equation, implemented with generic technical components
(MATLAB® software), in a conventional way. (See Spec. Figure 4; ,r,r 43,
58, 60). Therefore, we are not persuaded that ordered combinations of steps
in claim 18 provide an inventive concept. See 84 F3d. Reg. 56.
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Because we conclude that the abstract idea recited in claim 18 is not
integrated into a recited practical application and does not provide an
inventive concept, we conclude that the claimed method is not eligible.
Thus, we sustain the Examiner's§ 101 rejection of claims 18 and 21 as
being drawn to patent-ineligible subject matter.
Conclusion
Upon consideration of the record and the reasons given, the rejection
of claims 1---6, 8-13, and 15-21 under 35 U.S.C. § 101 is not sustained. The
rejection of claims 18 and21 under 35 U.S.C. § 101 is sustained
Therefore, we affirm-in-part the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED-IN-PART
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