Ex Parte GALINSKY

Patent Trial and Appeal Board

Nov 6, 2018

13543663 (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/543,663
62439 7590
SINORICA, LLC
20251 Century Blvd.
Suite 140
FILING DATE
07/06/2012
11/08/2018
Germantown, MD 20874
FIRST NAMED INVENTOR
Vitaly L. GALINSKY
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.
TP-GALV-MRAl 2809
EXAMINER
BRUSCA, JOHNS
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
11/08/2018 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):
SINORICA@GMAIL.COM
sinorica@outlook.com
pair@sinorica.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VITAL Y L. GALINSKY
Appeal2017-003296
Application 13/543,663 1
Technology Center 1600
Before ERIC B. GRIMES, JOHN E. SCHNEIDER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of rapidly assessing similarity between genomic sequences, which have been
rejected as being directed to patent ineligible subject matter. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
"Searching databases for sequences similar to a given sequence is
probably one of the most fundamental and important tools for predicting
structural variations and functional properties in the modem biology."
(Spec. 1.) "The rapidly increasing amounts of genetic sequence information
1 Appellant identifies himself as the real party in interest. (Br. 2.)
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available represent a constant challenge to developers of hardware and
software database searching and handling." (Id.) "[T]he invention relates to
a method ... for rapid screening of local sequence similarity." (J d.)
Claims 1-17, 19, and 21-262 are on appeal. Claim 1 is representative
and reads as follows:
1. A method of rapidly assessing similarity between genomic
sequences compnsmg:
building indices for reference sequence;
recording all local hits between a reference index and a
query sequence in a first local hit table;
building a second local hit table;
filling from the leftmost part of the query into the local
hit tables;
simultaneously filling from the rightmost part of the
query into the local hit tables; identifying a single significant
alignment of an entry from either the first local hit table or the
second local hit table; and
terminating the filling of the first local hit table and
terminating the filling of the second local hit table in response
of the identifying a single significant alignment;
2 Claims 18 and 20 were cancelled by Applicant in a response filed June 16,
2015. Appellant purports to have withdrawn claims 19 and 21. (Br. 2.) In
the Final Action, the Examiner noted the Applicant's inappropriate unilateral
withdrawal of these claims from consideration in the June 16, 2015 paper.
The Examiner noted claims 19 and 21 are still pending and rejected those
claims along with claims 1-17 and 22-26 under 35 U.S.C. § 101. As
Appellant has not cancelled claims 19 and 21, they are still pending and
have been finally rejected by the Examiner. Thus, these claims are also
considered to be on appeal.
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identifying candidate entries in said local hit table for
final alignment of said query to said reference; and
reporting assessing results.
(Br. 8.)
The following ground of rejection by the Examiner is before us on
review:
Claims 1-17, 19 and 21-26 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
DISCUSSION
The Examiner finds that claim 1 is directed to an abstract idea of
determining similarity between genomic sequences by indexing a reference
sequence and aligning a query sequence to the reference sequence using a
local hit table. (Final Action 3.) The Examiner notes that the asserted
improvement to the technology of sequence alignment that is claimed is
directed to a judicial exception, i.e., the indexing of the reference sequence
in a particular way and the aligning of the query sequence to the reference
sequence using a local hit table, "which is similar to the abstract idea of
comparing information of a sample or test subject to a control or target data
at issue in [In re BRCAJ- & BRCA2- Based Hereditary Cancer Test Patent
Litigation], 774 F.3d 755, 113 USPQ 2d 1241 (Fed[.] Cir. 2014))." (Ans. 2.)
The Examiner concludes that the claim "do[ es] not include additional
elements that are sufficient to amount to significantly more than the judicial
exception." (Final Action 3; Ans. 2, 4.)
We agree with the Examiner's factual findings and conclusion that
claim 1 is directed to patent ineligible subject matter.
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Section 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."
35 U.S.C. § 101. In Alice, the Supreme Court articulated a two-step test for
examining patent eligibility under § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347 (2014). Step one involves determining whether the
claims at issue are directed to a patent ineligible concept, and step two,
reached only if the determination in step one is yes, considers the elements
of each claim both individually and "'as an ordered combination"' to
determine whether additional elements "'transform the nature of the claim"'
into a patent eligible application. Id. at 2355.
"The Supreme Court has not 'delimit[ ed] the precise contours of the
'abstract ideas' category."' Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1346 (Fed. Cir.
2014) (quoting Alice, 134 S. Ct. at 2357). However, our reviewing Court
has held "[i]nformation as such is an intangible" and thus, has "treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) ( collecting cases); see also SAP America, Inc. v. InvestPic LLC,
898 F.3d 1161, 1162 (Fed. Cir. 2018). Likewise it has "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." Elec. Power Grp., 830 F.3d at 1354 (collecting
cases). Claim 1 is directed at abstract ideas under those principles. The
focus of the claim is on selecting certain information, using mathematical
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techniques to analyze it (using particular arrays and comparing the data), and
identifying a particular result of the analysis. That is all abstract. See SAP,
898 F.3d at 1167---68 (noting that claims to an improvement in a
mathematical technique with no improved display mechanism were abstract
as compared to those in McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016) which included a "claimed improvement ...
[as] to how the physical display operated (to produce better quality images)"
in addition to having "specificity required to transform a claim from one
claiming only a result to one claiming a way of achieving it").
The claimed method does not improve computer technologies as such,
see, e.g., McRO, 837 F.3d at 1313 (claims reciting rules that improve how a
physical display operated through computer automation to produce
"'accurate and realistic lip synchronization and facial expressions in
animated characters"'), Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d
1299, 1305 (Fed. Cir. 2018) (claims were directed to employing a new kind
of file that enables a computer security system to do things it could not do
before), or recite steps or rules that solve a technological problem in the use
of computers in a particular way, see, e.g., Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016) (claims recite employing a
particular database technique to improve how computers carry out storage
and retrieval of data, i.e., a software method that improves the way the
computers themselves operate); Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348--49 (Fed. Cir. 2016) (inventive concept
in the non-conventional and non-generic arrangement of known,
conventional pieces, including installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
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specific to each end user, giving "the filtering tool both the benefits of a
filter on a local computer and the benefits of a filter on the ISP server").
While the claim does not recite the use of a computer, we note that the
Specification describes the methodology as being performed on a computer
and that the data structures created that represent the reference sequence and
the hit table are employed in the bioinformatics analysis on an electronic
device. (See, e.g., Spec. 1, 4, 11.)
While the rules implicit in building the indices recited in the claim and
the manner of comparing the data speeds up the sequencing analysis, our
reviewing court has held that speed and accuracy increases stemming from
the ordinary capabilities of a general purpose computer "do[] not materially
alter the patent eligibility of the claimed subject matter." Bancorp Servs.,
L.L.C. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1278 (Fed. Cir.
2012). Appellant does not argue, nor does the Specification indicate that the
rules improve how a physical element of the computer system operates,
enable the computer system to do things it could not do before, or provide
for a software method that improves the way the computers themselves
operate.
Appellant asserts that the claimed invention is "a process for solving
technical problems in the technical field of biotechnology." (Br. 3.) We
disagree that the claimed invention solves a technical problem of the type
that is patent-eligible. While the claim may be directed to an improvement
in the processing of information, e.g., providing "a less computationally
intensive method for sequence matching" (Br. 5) ( emphasis omitted),
collecting and processing information without more is within the realm of
abstract ideas, as explained above.
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As to Appellant's argument that the claim is limited to a particular
field in which to apply the algorithm, i.e., "assessing similarity between
genomic sequences" (Br. 4) ( emphasis omitted), we note that "merely
limiting the field of use of the abstract idea to a particular ... environment
does not render the claims any less abstract." Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016).
Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. "If a claim
is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific
purpose, the claimed method is nonstatutory." Parker v.
Flook, 437 U.S. 584, 595 ... (1978) (internal quotations
omitted).
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014). Indeed, "the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are deemed
only to disclose patent ineligible subject matter under the [two-step]
framework, as they are in this case, preemption concerns are fully addressed
and made moot." Id.; see also Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) ("A narrow claim directed to an
abstract idea, however, is not necessarily patent-eligible .... "); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat
the claims do not preempt all [inventions in the field] or may be limited to
[ certain processes in the field] do[ es] not make them any less abstract.").
Turning to Alice step-two, we agree with the Examiner that claim 1
does not recite additional elements beyond the abstract idea. (Final Action
4--5; Ans. 2.) The steps are simply collecting information and comparing it
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in a particular way, which are abstract ideas. Appellant does not argue that
claim 1 includes steps beyond a collection and comparison of data. An
innovation that consists of using particular ineligible subject matter, such as
collecting and comparing data to identify certain information, is insufficient
to establish that the claims at issue are directed to a patent-eligible
application of an abstract idea. SAP, 898 F.3d at 1163 ("an advance ...
[that] lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm ... is ineligible for
patenting"); see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F .3d
1138, 1152 (Fed. Cir. 2016) ("To the extent the Asserted Claims add
anything to the abstract idea (i.e., translating a functional description of a
logic circuit into a hardware component description of the logic circuit), it is
the use of assignment conditions as an intermediate step in the translation
process .... But, given that the claims are for a mental process, assignment
conditions, which merely aid in mental translation as opposed to computer
efficacy, are not an inventive concept that takes the Asserted Claims beyond
their abstract idea.").
Moreover, even if the way in which the data is compiled were new,
the compilation of data and its additional manipulation and storage in a
particular way, which is the "heretofore" "not ... developed" "writing
alignment tool" (Br. 5) that provides for a less computationally intensive
method for sequence matching (see, e.g., Spec. 5-7), is still just a
manipulation of information as such. "[A] claim for a new abstract idea is
still an abstract idea." Synopsys, 839 F.3d at 1151. Similarly, a claim for a
beneficial abstract idea is still an abstract idea. See Ariosa, 788 F.3d at
1379-80.
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Consequently, for the reasons discussed above, we sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 2-17, 19, and 21-26 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1-17, 19, and 21-26 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
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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