Ex Parte Frank

Patent Trial and Appeal Board

Jun 27, 2016

12845851 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/845,851 07/29/2010
22878 7590 06/29/2016
Agilent Technologies, Inc, in care of:
CPA Global
P. 0. Box 52050
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Michael Frank
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.
20090315-03 1782
EXAMINER
YANG,RYANR
ART UNIT PAPER NUMBER
2614
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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 MICHAEL FRANK
Appeal2015-001939
Application 12/845,851
Technology Center 2600
Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and LARRY J. HUME,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-001939
Application 12/845,851
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-11 and 13-19. Claim 12 has been canceled. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
The claims are directed to a graphically representing a number of
measurement data sets. Spec. 1, Para. 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of graphically representing each of a number of
measurement data sets as a variation of at least one parameter,
wherein each measurement data set results from a measurement,
the method comprising:
[A] selecting a plurality of the measurement data sets to be
graphically represented,
1 Appellant indicates that Agilent Technologies, Inc., is the real party in
interest. (App. Br. 3).
2 We note the Examiner allowed Appellant to amend independent claims 1
and 17 to include the limitation of dependent claim 12 after the Final
Rejection. Independent claim 17 did not include any dependent claims with
the corresponding limitation. We further note that dependent claim 12
depended solely upon independent claim 1 and the inclusion of that material
changes the scope of each of dependent claims 2-11, 13-16, 18, and 19.
Yet, the Examiner allowed the change in scope. Additionally, dependent
claims 18 and 19 are directed to a separate and distinct invention ("a fluid
separation system" rather than the "apparatus" of independent claim 17).
The Examiner should evaluate how the different system in the dependent
claim further limits the scope of the apparatus of independent claim 1 7. See
Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006)
(dependent claim held invalid under 35 U.S.C. § 112, fourth paragraph for
failing to "specify a further limitation of the subject matter" of the claim to
which it referred because it was completely outside the scope of that claim).
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Application 12/845,851
l BJ graphically representing one of the selected
measurement data sets as a primary measurement data set in a
first graphical style, wherein graphically representing a
respective measurement data set comprises representing the
measurement data set as a two-dimensional projection of a three-
dimensional data set wherein each measurement data set
represents a variation of the third dimension of the three-
dimensional data set,
[CJ graphically representing each one of the at least one
remaining selected measurement data sets as secondary
measurement data set in a graphical style deviating in at least one
feature from the first graphical style,
and upon a first change request:
graphically representing a different one of the selected
measurement data sets as the primary measurement data set in
the first graphical style, and continuing with [CJ.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Schott
Vrba
Dehmer
us 5,844,572
US 2009/0040227 Al
US 8,257,586 B2
Dec. 1, 1998
Feb. 12,2009
Sept. 4, 2012
REJECTIONS
The Examiner made the following rejections:
Claims 1-11 and 13-15 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. The Examiner maintains that the
claimed invention does not require a machine or a processor. (Ans. 2).
(App. Br. 5; noting that claims 1-15 stand rejected. (See note 3 below)).
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Application 12/845,851
Claims 1-6, 8, 10-123 and 14--17 stand rejected under pre-AIA 35
U.S.C. § 102(e) as being anticipated by Vrba. (Ans. 2).
Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Vrba. (Ans. 8).
Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Vrba as applied to claim 1 above, and further in view of
Schott. (Ans. 8-9).
Claims 18 and 19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dehmer in view of Vrba. (Ans. 9).
ANALYSIS
Claims 1-11 and 13-15 under 35 USC. § 101 4
With respect to the independent claim 1, Appellant argues the claims
together. We select independent claim 1 as the representative claim and will
address Appellant's arguments thereto.
3 Claim 12 limitations were incorporated into independent claims 1 and 17,
and claim 12 was canceled.
4 The Examiner has not included dependent claim 16 in the 35 USC. § 101
rejection, which is directed to a different statutory class of invention than
parent method claim 1. Additionally, we note the Specification does not
disclose any "computer readable medium," and originally filed claim 16
recited "A software program or product, preferably stored on a data carrier,
for controlling or executing the method of claim 1." We further note the
Specification recites "[ e ]mbodiments of the invention can be partly or
entirely embodied or supported by one or more suitable software programs,
which can be stored on or otherwise provided by any kind of data carrier,
and which might be executed in or by any suitable data processing unit."
(Spec. para. 32). We leave it to the Examiner to further consider claim 16 in
any further prosecution.
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Application 12/845,851
With respect independent claim 1, Appellant generally contends that
the Office Action has not demonstrated that the claims are directed to an
abstract idea, a law of nature, or natural phenomena. (App. Br. 5---6). With
regards to the Examiner's finding, in the Advisory Action, that the method
steps may be performed by a person with a colored pencil on a graphical
paper, Appellant again contends that the Examiner has not demonstrated
that:
the claims are directed to an abstract idea, a law of nature or
natural phenomena, they nonetheless note, for example, that in
claim 6 measurement data sets are graphically represented in one
window. Plainly, the window is a compound of a machine (i.e.,
a computer) and is not something merely sketched on paper.
(App. Br. 7). We find Appellant's argument to be unavailing because
dependent claim 6 is not included in the language of representative
independent claim 1. Additionally, the Examiner maintains that a "window"
need not be a computer-based \vindo\v. (i\.ns. 10-11). \Ve agree \vith the
Examiner's finding.
Reply Brief
Appellant set forth the same scope of arguments and adds a discussion
of Alice:
Alice Corp. v. CLS Bank lnt'l, No, 13-298 Slip Op. (U.S. June
19, 2014). Notably, the Court maintains that the determination
of whether a claim is directed to patentable subject matter under
35 U.S.C. § 101 comprises a two-part analysis. First, it must be
determined whether the claim is directed to a "patent-ineligible
concept" (e.g., abstract idea, law of nature, or physical
phenomena). Second, if the claim is directed to a patent-
ineligible concept, it must he determined whether '"an element
or combination of elements that is 'sufficient to ensure that the
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Appeal2015-001939
Application 12/845,851
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.""
(Reply Br. 4, 5). Appellant maintains that independent claim 1 is directed to
a process which clearly falls within patent eligible subject matter. (Reply
Br. 5). Appellant contends:
[V]arious elements in the claim are sufficient to ensure
that the claim amounts to significantly more than the abstract
idea itself. For example, the process of graphically representing
a respective measurement data set comprising representing the
measurement data set as a two-dimensional projection of a three-
dimensional data set of claim 1 recite improvements in other
technology to technical field (i.e., improvements in graphical
representation of three-dimensional data sets, as opposed to
improvements to the method itself). . . . The improvements
include providing symmetry in the graphical representation as it
is resembles the effect of optically focusing on a certain "focal
plane" with all planes before and behind that focal plane
becoming "reduced to background". This effect may be further
increased by using different levels of sharpness of the secondary
measurement data sets in the graphical representation. . . .
Accordingly, even assuming elements may involve abstract
ideas, claims 1-15 are still directed to patent eligible subject
matter since it recites improvement to a technical field (tandem
mass spectrometry) ...
(App. Br. 5---6). We find Appellant's argument to be unavailing because
Appellant has not identified how the express language of representative
independent claim 1 supports Appellant's contention. Consequently,
Appellant's argument is not commensurate in scope with the language of
independent claim 1 and Appellant's originally filed Specification which
does not disclose "tandem mass spectrometry". As a result Appellant's
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argument does not show error in the Examiner's rejection of representative
independent claim 1.
Claims 1-6, 8, 10, 11, and 14--17 under 35 U.S.C. § 102(e)
We note the Examiner repeats the rejection of canceled dependent
claim 12. We address the Examiner's rejection based upon the combination
of reasons advanced with respect to independent claims 1 and 1 7, and
canceled dependent claim 12. (Ans. 3--4 and 7). 5
Appellant addresses claims 1---6, 8, 10, 11, and 14--17 together. (App.
Br. 7-10). We select independent claim 1 as the representative claim for the
group. 37 C.F.R. § 41.37(c)(iv).
With respect to representative independent claim 1, Appellant
contends that "it is not clear that the pk-pk displacement of Fig. 5 provides
the projection in two dimensions of a three-dimensional data set. This is not
shown in Fig 5." (App. Br. 9). Appellant quotes the description of Figure 5
and contends there is:
no disclosure of the graphical representation of a respective
measurement data set that comprises representing the
measurement data set as a two-dimensional projection of a three-
5 We note the "projection" limitation is found in original dependent claim 12
and in the Specification at para. 18, but nowhere else. We additionally note
Appellant's Summary of the Claimed Subject Matter generally cites "Figs. 3,
4, 5A-5D and 6A-6F of the filed application; and paragraphs [0044] through
[0060] of the filed application" and provides no assistance in determining
the scope of the projection limitation. We note claim terms are to be given
their broadest reasonable interpretation, as understood by those of ordinary
skill in the art and taking into account whatever enlightenment may be had
from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Consequently, we give the claim its broadest reasonable interpretation as a
sample of data at a point in time where time is the third dimension as a
constant.
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Application 12/845,851
dimensional data set. Furthermore, there is no disclosure in Vrba
that each measurement data set represents a variation of the third
dimension of the three dimensional data set.
(App. Br. 9). Appellant further contends the Examiner's commentary in the
Advisory Action is "baseless." (App. Br. 10). As discussed above,
Appellant has provided only a general argument for patentability and has not
identified how the claimed invention is not disclosed by the Vrba reference.
We agree with the Examiner that each of the waveforms (PK-PK
DISPLACEMENT IN MILS vs. FREQUENCY (HC)) in Figure 5 of the
Vrba reference is a sample of the data set at an instant of time as shown by
the "seconds" axis. (Ans. 11-12). Consequently, based upon the broadest
reasonable interpretation of independent claim 1, Appellants have not shown
error in the Examiner's finding of anticipation of representative independent
claim 1.
Reply Brief
Appellant sets forth the same scope of general arguments in the Reply
Brief. (Reply Br. 6-9). Appellant further contends that the Examiner's
reliance on Figure 5 of the Vrba reference shows a three-dimensional plot.
(Reply Br. 8). Yet, each waveform is a two-dimensional plot as it varies
over the third dimension of time. Consequently, Appellant's argument does
not show error in the Examiner's finding of anticipation.
Claims 7, 9, 18, and 19 under 35 U.S.C. § 103(a)
Appellant does not set forth separate arguments for patentability of
these claims based upon obviousness, and Appellant relies upon the
arguments advanced with respect to independent claim 1. (App. Br. 10-11).
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Application 12/845,851
Consequently, Appellant has not set forth separate arguments for
patentability, and we sustain the rejection for the same reasons discussed
above.
Reply Brief
Appellant argues that the "there is no articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness."
(Reply Br. 9). We find there has been no change in the Examiner's
reasoning in the statement of the rejection, and Appellant sets forth no
separate argument for patentability of the dependent claims in the Appeal
Brief. (Final Act. 8-9; App. Br. 10-11; Ans. 8-9). Appellant's Reply Brief
arguments regarding combining Schott with Vrba. (Reply Br. 9-10) were
not raised in the Appeal Brief, and Appellant has not shown good cause as to
why the arguments should now be considered. Thus, we deem Appellant's
specific Reply Brief arguments with respect to the combination of Schott
with Vrba to be waived. See 37 C.F.R. § 41.41(b)(2) (2011) ("Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner's answer ... will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown.")
CONCLUSIONS
The Examiner did not err in rejecting of claims 1-11 and 13-15 under
35 U.S.C. § 101.
The Examiner did not err in rejecting claims 1-6, 8, 10, 11, and 14--17
based upon anticipation.
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The Examiner did not err in rejecting claims 7, 9, 18, and 19 based
upon obviousness.
DECISION
For the above reasons, we sustain the Examiner's lack of statutory
subject matter rejection of claims 1-11 and 13-15.
We sustain the Examiner's anticipation rejection of claims 1-6, 8, 10,
11, and 14--17.
We sustain the Examiner's obviousness rejection of claims 7, 9, 18,
and 19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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