Ex Parte Fliri et al

Patent Trial and Appeal Board

Oct 19, 2017

12285927 (P.T.A.B. Oct. 19, 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.
12/285,927 10/16/2008 Anton Fliri 0072866-000002 1186
21839 7590 10/23/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
10/23/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTON FLIRI, ERWAN MOYSAN,
PIERRE BENICHOU, and MATTHIAS NOLTE1
Appeal 2016-003282
Application 12/285,927
Technology Center 1600
Before ERIC B. GRIMES, TIMOTHY G. MAJORS, and DAVID COTTA,
Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to
computer-implementable processes for enumerating general chemical
structure descriptions, and claims to a related non-transitory computer-
readable medium. The Examiner rejected the claims as patent ineligible
under 35 U.S.C. § 101. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as Decript Inc. (App. Br. 2.)
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STATEMENT OF THE CASE
Appellants’ “invention relates to methods for analyzing the content
encoded by chemical structure descriptions such as, for example, Markush
structures.” (Spec. 1:10—12.) “[T]he term ‘Markush structure’ is frequently
used for chemical structure representations describing the content of claims
in composition of matter patent applications.” (Spec. 2:18—20.)
As “[background,” the Specification explains, “it is common practice
to use chemical structure representations in descriptions of property or utility
information associated with compositions of matter.” (Id. at 1:15—17.)
“Chemical structures characterizing compositions of matter can be altered,”
for example, “by attaching structure fragments with different properties
(substituent groupings) to a common structure core.” (Id. at 1:17—21.)
According to the Specification, “[tjhese general chemical structure
representations can describe a near infinite number of chemical
compositions, by using a compact set of text instructions for modifying the
corresponding general chemical structure representations.” (Id. at 1:23—26.)
As described in the Specification, “the examination of composition of
matter patent applications devotes a great deal of effort [to] identifying and
examining patents with similar Markush structure contents.” (Id. at 3:19—
21.) However, “[s]ince no machine methods are available for this
examination, each Markush structure in each document needs to be
scrutinized manually and this process is currently entirely based on mental
enumeration.” (Id. at 4:6—8 (emphasis added).) The Specification defines
“enumeration” as “a process for constructing individual chemical structures
(compounds) based on the known chemical bonding principles for
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connecting structure fragments defined in the Markush structure patent
claims.” {Id. at 4:9-12.) And, the Specification explains,
it is common practice to start such enumeration processes by
identifying the precise molecular structure of a specific genus in
accordance with the Markush structure claim definitions and by
rendering this selection enumerable by identifying attachment
points specified in the claim language for connecting substituent
groupings in accordance with the patent claim definitions.
{Id. at 4:13—18.)
According to the Specification, there are shortcomings with the
known mental enumeration process (e.g., it is subjective, open-ended, time
consuming, and prone to error). {See generally id. at 5—6.) Thus, the
Specification states “there is a need for developing machine methods that
could assist in Markush structure claim analysis.” {Id. at 6:24—26.)
Claims 1—24 are on appeal. Claim 1 is illustrative:
1. A method for rendering general chemical structure
descriptions of compositions of enumerable matter in a
computer-implementable manner, the method comprising:
storing enumerable generic structure core topology
descriptors in an intermittent database;
creating enumerable substituent fragment topology
descriptors and storing said enumerable substituent fragment
topology descriptors in the database;
generating enumeration rules by creating associations
between the generic structure core topology descriptors, the
substituent fragment topology descriptors, and attachment points
in the generic structure core topology descriptors for said
substituent fragment topology descriptors;
storing the generated enumeration rules in an enumeration
rules database;
identifying a generic chemical structure of interest;
enumerating individual species for the generic chemical
structure of interest in a computing device, by applying
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enumeration rules retrieved from the enumeration rules database
that are related to the generic chemical structure of interest to
generic core structure topology descriptors and substituent
fragment topology descriptors retrieved from said database; and
displaying, in a user interface of the computing device,
information that characterizes the enumerated species.
(App. Br. (Claims App. 1).)
The claims stand rejected under 35 U.S.C. § 101 for claiming patent-
ineligible subject matter.
DISCUSSION
In analyzing patent eligibility under 35 U.S.C. § 101, the Supreme
Court has set forth a “framework for distinguishing patents that claim
[patent-ineligible] laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). According
to that framework, first “we determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. “If so, we then ask,
‘[w]hat else is there in the claims before us?’” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012).) To answer this second 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. [The Supreme Court has] 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.
Id. (internal citations and quotation marks omitted).
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The Examiner finds that the claims are directed to patent-ineligible
subject matter, specifically an abstract idea. (Final Act. 2-4; Ans. 2-4.) The
Examiner characterizes the claimed process as follows:
First, keep handy a set of descriptions describing generic core
topology. Next, keep handy a set of descriptions describing the
topology of fragment structures. Next, come up with a list [of]
enumeration rules that combine core and fragment structures
sufficiently to encompass any given chemical structure that may
come before you. Next copy and remember the enumeration used
to describe topologically assigned to the given chemical structure
that is before you. Next, pick a general chemical structure that
interests you, and apply the enumeration rules to arrive at a
topological description of the chemical structure that interests
you. When done, draw a picture of your chemical structure of
interest that demonstrates that topology selected to enumerate
t[he] chemical structure.
(Final Act. 2—3.) According to the Examiner, “the claimed invention is
directed entirely to a purely abstract process of how to describe chemical
structure to account for generic or generalized structural elements.” {Id. at
3.) Put differently, the Examiner finds the claimed invention relates “to a
purely abstract process that results in nothing more than the selection of
language and/or symbols that accurately communicate information regarding
a given chemical structure or class of structure.” {Id. at 4.)
Considering the claim limitations individually and in combination,
including the computer elements (e.g., databases), the Examiner finds the
claims remain patent ineligible. More specifically, the Examiner finds the
“recited enumeration rules, core structure topology, substituent fragment
topology, and manner of describing a generic chemical structure are not
new, but in fact old and very routine in the chemical arts.” {Id. at 3.)
According to the Examiner, “[e]ven the Patent Office follows standard
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chemical notions dictated by the art that require the standard and routine
enumeration rules, [etc.] ... for describing a range of chemical structures.”
(Id.) As for the “steps involving a computer,” the Examiner finds these “do
not add anything additional beyond what a computer is routinely relied upon
for,” such as “[d]ata storage operations and carrying] out procedures that
can be reduced to computational form.” (Id. at 4.) So, the Examiner finds,
“the recitation of computer implementation in the instant claims fails to
anchor the claims as statutory subject matter because the computer is relied
upon only to automate an already well known, and practiced procedure
directed to enumeration of generic chemical structures.” (Id.)
The Examiner thus concludes the claims are patent ineligible under
§ 101 as directed to an abstract idea without significantly more. (Final Act.
2—5; Ans. 2—5; Adv. Act. 2.)2
We agree with the Examiner that the claims are drawn to patent-
ineligible subject matter. The focus of the claims is an abstract idea —
describing and enumerating chemical structures to account for generic or
generalized structural elements. The Specification reinforces that the
invention involves abstract steps and is directed to an abstract process
overall. (See, e.g., Spec. 1:10—12 (“[t]his invention relates to methods for
analyzing the content encoded by general chemical structure descriptions.”)
9:22—26 (“another aspect of the invention ... is the ability to render generic,
2 The Examiner determined that the findings, reasoning, and conclusion of
patent-ineligible subject matter apply to all the claims, including
independent claims 1, 11, 16, and 24, which are presented as “a computer
implemented method . . . and the Beauregard claims to a computer
executable program.” (Final Act. 4—5; Ans. 4—5 (“All claims rise or fall on
carrying out the method as described above.”).)
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indefinite and open-ended terminology that is used in formulating Markush
structure claim descriptions in documents and in the MMS and Marpat
databases into machine readable form.”).)3 And the Specification further
suggests the invention is merely adapting mental enumeration to the
computer realm.4 (See Spec. 4—6; see also App. Br. 2 (“The application is
directed to a machine-implementable procedure for the analysis and
characterization of content that is encoded in the form of general chemical
structure descriptions. . . . Prior to the present invention . . . each Markush
structure in each document needed to be manually scrutinized, using a
process that is entirely based on mental enumeration.”).)
When we consider the claim limitations individually and combined,
we are unpersuaded they impart a sufficient inventive concept. To the
contrary, the steps are recited at a high level of generality and layer abstract
concepts of describing, storing, generating, identifying, enumerating, and
displaying information related to chemical structures. (Ans. 6 (“What
specific steps are required and involved to reach these specific functional
results are left buried and hidden under these generic, fungible placeholder
elements.”).) Claim 1, for example, recites “generating enumeration rules”
by creating associations between enumerable core and fragment descriptors
3 Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340-41 (Fed. Cir. 2017) (holding that manipulating and displaying data
encoded for human- and machine-readability is directed to an abstract
concept).
4 Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) (“[W]e have treated analyzing information by steps people go through
in their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.”)
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and attachment points. Although the claims require the steps be done “in a
computer implementable manner,” “generating enumeration rules” does not
clearly and materially differ from routine, and abstract, “mental
enumeration” processes described in the Specification. (See Spec. 4
(describing the “common practice”).) Appellants may have intended a more
precise and less abstract computational approach for generating these rules,
but such approach is not recited in the claims. We decline to read further
limitations into the claims.
The computer-related elements in the claims, such as storing
information in a database or displaying information on a user interface of a
computing device, do not transform the claims into patent-eligible subject
matter. As the Examiner determined, these are basic functions of a general-
purpose computer. (Final Act. 4—5.) Adding them to the claims is
tantamount to an instruction to simply perform the abstract steps with a
computer — something that does not add an inventive concept. Alice, 134
S.Ct. at 2350 (“Neither stating an abstract idea while adding the words
“apply it” [with a computer] . . . nor limiting the abstract idea to a particular
technological environment... is enough for patent eligibility.”) (internal
citations and quotation marks omitted); Content Extraction and
Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014)
(affirming invalidity of “claims [that] attempt to limit the abstract idea of
recognizing and storing information from hard copy documents using a
scanner and a computer to a particular technological environment.”) We are
also unpersuaded the claims improve the computer itself; rather, the claims
exploit an abstract idea using a computer as a tool. See Electric Power, 830
F.3d at 1355 (“We have repeatedly held that such invocations of computers
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and networks that are not even arguably inventive are insufficient to pass the
test of an inventive concept in the application of an abstract idea.”) (internal
quotation marks omitted).
Here, as a way of double checking the analysis, we also consider the
claims in view of “an important common-sense distinction between ends
sought and particular means of achieving them, between desired results
(functions) and particular ways of achieving (performing) them.” Electric
Power, 830 F.3d at 1356 (describing this consideration as “one helpful way
of double-checking the application of the Supreme Court’s framework.”)
The pending application purports to address, by using a computer, problems
with mental enumeration of chemical structures (e.g., it requires manual
scrutiny, and can be incomplete and time consuming). (See Spec. 4—7.)
Instead of claiming a specific and concrete computational implementation
that solves the problem, however, the claims are so functional and results-
based that they encompass generally using a computer for enumeration of
chemical structures. Electric Power, 830 F.3d at 1356 (“[T]he essentially
result-focused, functional character of claim language has been a frequent
feature of claims held ineligible under § 101.”) In other words, the claims
cover the abstract solution, not a sufficiently specific means for achieving it.
This risks preempting the abstract idea itself, limited only to its use on
computers, rather than a patent-eligible application of the abstract idea.
For these reasons, we agree with the Examiner’s conclusion that
claims 1—24 are patent ineligible under § 101.
Below we address Appellants’ arguments.
Appellants argue the claims are not directed to an abstract idea and,
even if they were, the claims recite “something more” that brings them
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within the scope of patentable subject matter under § 101. (App. Br. 14—20;
Reply Br. 1—4. )5
On the issue of whether the claims are directed to an abstract idea,
Appellants contend the Examiner’s description “does not conform to the
actual recitations of the claim” and instead “is a prosaic generalization of
some of the features recited in the claims.” {Id. at 15.) Appellants contend
the Examiner “overlooks those portions of the claim that constitute a
departure from standard practices, and relies only upon those features which
were known.” {Id.) And, Appellants further contend, “[t]he claimed subject
matter addresses a problem that heretofore went unsolved, namely the ability
to enumerate compounds from Markush structure descriptions in an
automated manner.” {Id. at 16.)
Appellants’ argument is unpersuasive. Although there is a risk of
overgeneralization at step 1 of the Alice!Mayo analysis, we are unpersuaded
the Examiner did so here. It is reasonably clear the Examiner considered the
claim limitations (Final Act. 2—3), yet the Examiner finds that the basic
thrust of the claims is “a purely abstract process of how to describe chemical
structure to account for generic or generalized structural elements.” {Id. at
3.) Appellants do not direct us to any particular limitations of the claims that
are not abstract steps. Nor do Appellants provide a contrary description of
what the claims are “directed to” that is not abstract. Quite the opposite,
5 Appellants point out, and the Examiner does not appear to dispute, that the
claims recite a statutory category, such as a method or article of
manufacture. (App. Br. 15.) The Examiner’s rejection, however, is based
on a determination that the claims are directed to a judicial exception (i.e.,
an abstract idea) according to the Alice!Mayo framework.
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Appellants described the claimed subject matter as “providing] a machine-
implementable method for characterizing and comparing similarities of
general chemical structure representations.” (App. Br. 2.) This is abstract.
And, as explained above, merely reciting a generic computer implementation
does not save the claims from abstraction — even at step 1. Electric Power,
830 F.3d at 1354.
As for the Appellants’ contention that the invention solves a problem
by providing automated, rather than manual/mental enumeration, we remain
unpersuaded. The problem with Appellants’ argument, which the Examiner
points out, is that the claims use such “generic” and “fungible” language,
that they are covering “nothing more than a computationally generated
result.” (Ans. 6.) As noted by the Examiner, “Appellant has not chosen to
recite specific and practicable steps, th[at] when implemented by an artisan,
reach this specific improvement of providing non-numerable [sic] generic
structure descriptors and subsequent fragment topology into an enumerable
form.” (Id.) The claims recite generic and abstract storing, generating,
enumerating, etc. steps and simply apply them with computers. (Ans. 6
(“appellant has chosen to broadly claim the computational idea and all
conventional activities . . . that might reach this computational result.”).) To
the extent Appellants refer to “enumeration algorithms” and “examples
illustrated in Figures 8A and 8B” (App. Br. 17), such subject matter is not
specifically claimed. And, as explained above, based on the generic
language used in the claims, we are unpersuaded the steps differ from the
mental enumeration of chemical structures described in the Specification —
except that, in the claims, a computer is involved. That, however, is not
sufficient to confer eligibility under § 101.
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On the issue of whether the claims provide “significantly more” than
an abstract idea, Appellants argue the Examiner provided no support for the
statements that involvement of a computer does not add anything beyond
what computers routinely do. (App. Br. 18—19.) Appellants contend the
Examiner “does not establish that it was known, let alone ‘routine, ’ to use a
computer to perform activities such as generating enumeration rules" {Id.
at 19.) According to Appellants, “enumeration of chemical structures in a
computer is the advantageous result of the claimed invention, and is not
being relied upon as the ‘something more’ to render the claims patent
eligible.” {Id.) Rather, Appellants contend, “conversion of open-ended and
indefinite topology descriptors into enumerable form, through the generation
and application of enumeration rules, is the differentiator.” {Id.)
Appellants’ argument is unpersuasive. We do not understand the
Examiner to suggest that generating enumeration rules with a computer was
routine.6 To the contrary, the Examiner finds that generating enumeration
rules, as a general matter, is abstract and routinely practiced, including by
the USPTO in describing, analyzing, and enumerating chemical structures
during patent examination. (Final Act. 3.) Appellants’Specification
supports the Examiner on this point (Spec. 4), and we are not persuaded
otherwise.
6 Appellants also provided evidence that some computer systems handling
Markush structure analysis from chemical patents avoid enumeration of the
compounds themselves. (App. Br. 16—17 (citing Barnard et al., Use of
Markush Structure Techniques to Avoid Enumeration in Diversity Analysis
of Large Combinatorial Libraries (paper presented orally at the MSI
Combinatorial Chemistry Consortium Meeting) (1997).)
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But even if the use of a computer for enumerating chemical structures
is non-routine and is an improvement over manual/mental enumeration, our
inquiry does not end. Indeed, as exemplified in Flook, that a claimed
invention, or aspects of it, may be new, useful, and advantageous does not
mean that the claim is patent eligible where the invention remains highly
abstract. Parker v. Flook, 437 U.S. 584, 588 (1978) (“[W]e assume that
respondent’s formula is novel and useful and that he discovered it.”) That is,
previously unknown, yet still abstract, claim elements do not necessarily
save a claim from a rejection under § 101.
Here, generating “enumeration rules” in a machine-readable form, and
using them in a computing device to enumerate chemical species remain
abstract steps that do not provide something “significantly more” that
transforms the claims into a patent-eligible application of an abstract idea.
Nothing is changed with the computer, except it is executing instructions to
perform the steps. As already explained, Appellants essentially claim a
result — enumeration of chemical structures using a computer — and,
although the claims include some generic computer elements, we are
unpersuaded the claims recite sufficiently specific, non-routine, and non­
abstract means to achieve that result.
In the Reply Brief, citing the USPTO’s subject matter eligibility
guidelines, Appellants contend the claims are patent eligible as not falling
within any of four noted categories of abstract concepts. (Reply Br. 1—2.)
More specifically, Appellants contend the Examiner has not shown that the
claims are fundamental economic practices, methods of organizing human
activity, an idea of itself, or mathematical relationships/formulas. {Id. at 2.)
We are, however, unpersuaded. Describing and enumerating generic
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chemical structures is an idea of itself and, as the Specification suggests, is
commonly practiced by mental processes. Requiring a generic computer
implementation or limiting to a technological field, contrary to Appellants’
contentions, does not impart patent eligibility for reasons explained above.
Claim 11
Appellants contend claim 11 is allowable for “reasons analogous” to
those discussed above, and further that “there is nothing to suggest that an
enumeration rules database was heretofore known.” (App. Br. 21.)
These contentions are unpersuasive for the reasons explained above.
Also, retrieving abstract “enumeration rules” from a database that stores
them does not impart a sufficient inventive concept. Storage and retrieval of
information are basic functions of general-purpose computers.
Claim 16
Appellants cite certain elements of claim 16 related to retrieving,
measuring, and displaying chemical structure fingerprints and similarity
measures. (App. Br. 21.) Appellants contend “there is no basis to assert that
these claimed operations were routinely practiced” and “[tjhere is nothing to
suggest that an enumerated compound database has previously existed, nor
that it was known to provide a measure of chemical structure fingerprint
similarity between species.” (Id.)
We are unpersuaded. The claimed “chemical structure fingerprints”
and “similarity measures” are further abstractions and, as the Specification
illustrates, encompass basic concepts of hierarchical sorting and
characterization of structures based on similarities. (See, e.g., Spec. 7:27—
8:3 and Figs. 3 4.) Claim 16 remains directed to an abstract idea and the
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cited elements fail to provide significantly more to transform the claim into
patent-eligible subject matter for the reasons explained.
Claim 24
Claim 24 combines elements of claims 1,11, and 16, and Appellants
contend the claim is not an abstract idea based on their earlier arguments.
(App. Br. 23.) Appellants also cite a step of “assigning a chemical structure
fingerprint to each species” and contend that step “has not been established
as a technique that has been long-practiced in the art, or that is a generic
computer function.” (App. Br. 23—24.) We are unpersuaded that claim 24
recites patent-eligible subject matter for the reasons explained above.
Similarly, the generic and abstract step of assigning a fingerprint to chemical
species does not impart patent eligibility. Assigning characteristics to
enumerated chemical species so that they may be compared is conventional
practice in the art, whether or not previously done with computers. (Final
Act. 2—3; Ans. 6; Spec. 3—6.)
For the reasons above, we are unpersuaded the Examiner erred in
rejecting claims 1, 11, 16, and 24 under 35 U.S.C. § 101. Dependent claims
2—10, 12—15, and 17—23 have not been argued separately and therefore fall
with claim 1, 11, 16, and 24. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1—24 under 35 U.S.C. § 101.
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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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