Ex Parte Emler

Patent Trial and Appeal Board

Feb 10, 2017

12084608 (P.T.A.B. Feb. 10, 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.
12/084,608 05/06/2008 Stefan Emler 14-357-WO-US 1024
20306 7590 02/10/2017
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
3 2ND FLOOR
CHICAGO, IL 60606
EXAMINER
WHALEY, PABLO S
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
02/10/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFAN EMLER
Appeal 2016-002226
Application 12/084,608
Technology Center 1600
Before JEFFREY N. FREDMAN, ROBERT A. POLLOCK, and
DAVID COTTA, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a method
of identifying or classifying organism types from a target gene sequence.
The Examiner rejected the claims as being directed to non-statutory subject
matter. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
“[I]t is an object of the present invention to provide a computer-
implemented method and a computer system for identifying organism types
1 Appellant identifies the Real Party in Interest as SmartGene GmbH (see
App. Br. 1).
Appeal 2016-002226
Application 12/084,608
from a target gene sequence, which system and method discriminate
between trivial and significant inter-sequence differences.” (Spec. 2:23—27).
The Claims
Claims 2, 4—9, 28 and 29 are on appeal. Claim 28 is representative
and reads as follows:
28. A method of identifying or classifying organism types
from a target gene sequence, said method comprising:
(i) obtaining the target gene sequence at a server, the
server comprising one or more processors;
(ii) providing at least one database using the server, the at
least one database comprising a plurality of organism type-
specific profiles associated with one or more related reference
sequences, wherein each organism type-specific profile defines
informative sequence regions for differentiating individual
organisms, and wherein each organism type-specific profile
comprises position specific information of related reference
sequences;
(iii) correlating the target gene sequence and the plurality
of organism type-specific profiles using the server;
(iv) selecting an organism type-specific profile having a
highest correlation with the target gene sequence based on the
position specific information of the related organism type-
specific profile using the server;
(v) retrieving the related reference sequences associated
with the selected organism type-specific profile from the at
least one database using the server;
(vi) comparing the target gene sequence to the related
reference sequences, and weighting the results of the
comparison using weighting factors associated with the
informative sequence regions using the server;
(vii) determining, based on the comparison results
weighted for the informative sequence regions, an optimal
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organism type-specific reference sequence having a best match
with the target gene sequence using the server; and
(viii) identifying or classifying said organism types of
said target gene sequence based on the optimal organism type-
specific reference sequence by assigning to the target gene
sequence the same organism type as the best matched organism
type-specific reference sequence using the server; and
(ix) communicating at least the organism type of the best
matched organism type-specific reference sequence as an
output of the server.
(Appeal Br. 22—23.)
The Issue
The Examiner rejected claims 2, 4—9, 28 and 29 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter (Final Act. 3—4).
The Examiner finds that claim 28 is “directed to methods and a
computer readable medium for identifying or classifying organism types
from a target sequence” (Final Act. 3). The Examiner further finds that the
eight steps in the claims other than the abstract idea (using a
server for providing a database, correlating obtaining gene
sequences (i.e. data), comparing data and weighting the results
using weighting factors, and classifying an organisms type
based on “organism type-specific” reference sequences) are
ALL purely computational and amount to no more than
insignificant extra-solution activity that is well-understood,
routine and conventional in the art and/or instructions to
implement the abstract idea on a generic server.
(Final Act. 3). The Examiner concludes that “[vjiewed as a whole, these
additional claim element(s) do not provide meaningful limitation(s) to
transform the abstract idea into a patent eligible application of the abstract
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idea such that the claim(s) amounts to significantly more than the abstract
idea itself’ (Final Act. 4).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that claim 28 is directed to non-
statutory subject matter?
Findings of Fact
1. The Specification teaches: “Preferably, the user interface is
provided through a conventional Internet browser such as Microsoft
Explorer or Mozilla” (Spec. 9:7—9); that “the telecommunications network 2
includes the Internet and/or an Intranet, making server 3 accessible as a web
server through the World Wide Web” (Spec. 8:12—14); and that “a
conventional sequencer 5 [] provides the personal computer 11 with
sequence data of DNA (Deoxyribonucleic Acid) fragments” (Spec. 8:1—3).
2. The Specification teaches “database 4 may be implemented on
a computer shared with server 3 or on a separate computer” (Spec. 8:25—26)
but provides no specific technologic modification of the database, server, or
computer.
3. The Specification recites the language of claim 28, with
“organism-type specific profile” information, and steps of correlating this
information, selecting the highest correlation, retrieving and comparing
related sequences, and weighting the comparison to obtain an “optimal
organism type-specific reference sequence” (see Spec. 9:19 to 16:10), but
the Specification provides no specific algorithms or specific technical
implementations other than high level discussions of data manipulation.
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Principles of Law
[W]e 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.
First, 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. We have described
step two of this analysis as a search for an “inventive concept” -
-i.e., an element or combination of elements that is “sufficient
to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014).
Analysis
We agree with and adopt the Examiner’s findings of fact and
reasoning regarding the conclusion that claim 28 is unpatentable as being
directed to non-statutory subject matter (Final Act. 3^4; Ans. 3—9; FF 1—3).
We address Appellant’s arguments below.
Appellant “submit[s] that each of claims 2, 4—9, 28, and 29 is not
directed to an abstract idea” (Appeal Br. 5). Rather, Appellant contends,
[cjlaim 28 provides far more detail than a mere “typ[e] of
concept” such as listed in the Interim Guidelines. See Interim
Guidelines, 79 Fed. Reg. 74622 (Dec. 16, 2014). Further, the
level of recited detail substantially reduces the risk that all of
the subject matter based on abstract ideas underpinning claim
28 (and claim 29) will be tied up
(App. Br. 9).
We do not find this argument persuasive because the focus of claim
28 is on an abstract idea: collecting information analyzing it to identify or
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classify organisms using weighting factors associated with informative
sequence regions, and determining optimal reference sequences for use in
organism classification based on this analysis.
Appellant contends, however, that claim 28 recites “features which,
when taken together, provide meaningful advantages over previous
techniques” (Appeal Br. 6). Appellant points to claim 28’s recitation of
obtaining target sequences at a server, providing a database that comprises
profiles associated with sequences, and performing correlation and selection
steps to ultimately identify an optimal informative sequence for use in an
identification or classification process (App. Br. 7—8; see Claim 28; FF 3).
According to Appellant, these elements “are more than mathematical
concepts such as mathematical algorithms, mathematical relationships,
mathematical formulas, and calculations” (Reply Br. 5).
We do not find Appellant’s argument persuasive. As our reviewing
court recently noted, “[precedent has recognized that specific technologic
modifications to solve a problem or improve the functioning of a known
system generally produce patent-eligible subject matter.” Trading Techs.
Int’l, Inc. v. CQG, Inc., 2017 WL 192716 *3 (Fed. Cir. 2017) (non-
precedential). We do not find that to be the case here. Appellant does not
assert that claim 28 requires an arguably inventive device or technique for
displaying information or new techniques for analyzing information. Thus,
this case is unlike DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014), finding an inventive concept in modification of
conventional mechanics behind website display to produce dual-source
integrated hybrid display.
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Appellant also does not argue that the invention is a software-based
invention that improves the performance of the computer system itself.
Thus, this case is also unlike Bascom Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), which found an
inventive concept in the ordered combination of limitations providing for
“the installation of a filtering tool at a specific location, remote from the
end-users, with customizable filtering features specific to each end user.”
We note that “[c]laims directed to the ‘process of gathering and
analyzing information of a specified content, then displaying the results, ’
without ‘any particular assertedly inventive technology for performing those
functions,’ were held ineligible in Electric Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016).” Trading Techs. *4. We find claim
28 to be analogous to that held patent ineligible in Electric Power.
There can be no reasonable dispute that the steps of obtaining a target
sequence, providing a database comprising those sequences, and correlating
that data to obtain sequence alignments represent conventional steps (FF 1—
3; cf. Spec 1:16 to 2:6 which describes as “conventional” the use of target
sequences and a reference database to build sequence alignments and obtain
correlation information regarding those sequences). Thus, the only step that
substantively differs from the admitted conventional steps is the selection of
weighting factors used to obtain “an optimal organism type-specific
reference sequence.” However, Appellant does not explain how the mere act
of selecting undisclosed and unidentified “weighting factors” or a
generically disclosed “optimal organism type-specific reference sequence” is
transformative. “Merely requiring the selection and manipulation of
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information—to provide a ‘humanly comprehensible’ amount of information
useful for users,. . . —by itself does not transform the otherwise-abstract
processes of information collection and analysis.” Electric Power, 830 F.3d
at 1355.
Appellant’s claimed organism classification process does not provide
any technological advance to the process of analyzing the data or displaying
it. For example, there are not any limited and new mathematical rules
applied to the data. Nor is there any improvement in the way the system
components operate to analyze, correlate, compare, or weight the
information, or determine optimal organism type-specific reference
sequences based on these data manipulations. Thus, we agree with the
Examiner that the claim limitations, analyzed alone and in combination, fail
to add “something more” to “transform” the claimed abstract idea of
weighting informative sequence regions to obtain optimal reference
sequences for use in organism classification into “a patent-eligible
application.” See Alice Corp. v. CLS Bank International, 134 S. Ct. 2347,
2354, 2357 (2014).
Appellant contends that the “claimed invention is a technical solution
to a technical problem” (App. Br. 10) and that the “claims are directed to
using computation to organism type-specific profiles to improve classifying
organism types from target gene sequences” (App. Br. 11). Appellant also
contends that Smartgene Inc. v. Advanced Biological Laboratories, SA, 555
Fed. Appx. 950 (Fed. Cir. 2014) (non-precedential), cited by the Examiner is
not controlling because “the patent-ineligible claims at issue in SmartGene
are not analogous to Appellants’ patent-eligible claims” (Reply Br. 12).
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Appellant contends that “claims 28 and 29 recite significantly more ‘than
call on a “computing device” with basic functionality’, and thus are not
analogous to the claims at issue in SmartGene” (Reply Br. 12).
We do not find these arguments persuasive. Our reviewing court
found the claims at issue in Smartgene patent ineligible because they did
“no more than call on a ‘computing device,’ with basic functionality for
comparing stored and input data and rules, to do what doctors do routinely.”
SmartGene, 555 Fed. Appx. at 954. We agree with the Examiner that, in the
instant case, the “‘organism type-specific profiles’, as claimed, is/are
nothing more than sequence data that is being used in an algorithm process
that calls on a server (i.e. computer) for providing and processing this
DATA using mathematical comparisons and rule-based processes” (Ans. 8).
In other words, the claimed steps do not rely on an inventive device or
technique for displaying information or new techniques for analyzing
information, but rather constitute “a generic recitation of steps for
mathematically manipulating data to obtained ‘optimal’ sequence data”
(Ans. 7).
The instant facts are also similar to those in SmartGene because the
claims at issue in SmartGene relied upon “expert rules” for “‘evaluating and
selecting’ from a stored ‘plurality of different therapeutic treatment
regimens.’” SmartGene, 555 Fed. Appx. at 951—952, claim 1). The “expert
rules” in SmartGene are analogous to the “weighting factors” used to
determine “an optimal organism type-specific reference sequence” in claim
28. In neither SmartGene nor the instant claims is there any evidence of
record that specific rules or factors were required. The claims thus
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encompass the use of any rule or factor known or desired for use in the
computing device.
Accordingly we affirm the Examiner’s rejection of claim 28. Claims
2, 4—9, and 29 have not been argued separately and, therefore, fall with
claim 28. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 2, 4—9, 28 and 29 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
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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