Ex Parte Jung et al

Patent Trial and Appeal Board

Aug 2, 2016

12283184 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/283, 184 09/09/2008 Edward K.Y. Jung
83722 7590 08/04/2016
Dorsey & Whitney I INVENTION SCIENCE FUND
Intellectual Property Department - SLC
136 S. Main Street
Keams Building, Suite 1000
Salt Lake City, UT 84101-1685
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.
17906.21.5 6476
EXAMINER
BORIN, MICHAEL L
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
ip.docket.slc@dorsey.com
simon.marcus@dorsey.com
ip.patent.sl@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD K.Y. JUNG and LOWELL L. WOOD, JR.
Appeal2013-004439
Application 12/283, 184
Technology Center 1600
Before JEFFREYN. FREDMAN, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
PAULRAJ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a
computer-implemented method of identifying and treating pathogen
variants. The Examiner rejected the claims for indefiniteness, non-statutory
subject matter, obviousness, and obviousness-type double patenting. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm and enter new grounds
of rejection under 35 U.S.C. § 101 and§ 103.
1 Appellants identify the Real Party in Interest as Searate, LLC, an affiliate
of Intellectual Ventures Management, LLC (see Appeal Br. 1 ).
Appeal2013-004439
Application 12/283, 184
STATEMENT OF THE CASE
Background
The Specification relates generally to "[m]ethods and systems [that]
involve identifying primary pathogens as well as variants of the pathogens
and treatments." See Spec. 2 (Summary).
The Claims
Claims 22-26, 33-37, 78, and 79 are under appeal, and are
reproduced in the Claims Appendix of the Appeal Brief. Independent claim
22 is representative and reads as follows:
A computer-implemented method comprising:
a computing device identifying a pathogen that is a
primary pathogenic cause of a disease state;
identifying at least one variant of the pathogen;
the computing device estimating a probability of an
existence of the at least one variant of the pathogen in a given
individual; and
identifying at least one treatment targeted against the at
least one variant of the pathogen.
Appeal Br. 36 (Claims App'x).
The Re} ections
The Examiner has rejected the claims as follows:
I. Claims 22-26, 33-37, 78, and 79 under 35 U.S.C. § 112 i-f 2 for
indefiniteness;
II. Claims 22-26, 33-37, 78, and 79 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter;
III. Claims 22-26, 33-37, and 78 under 35 U.S.C. § 103 as being
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unpatentable over the combination of Climo, 2 Chee, 3 Armour, 4
Holland-Staley, 5 and Burdette6;
IV. Claims 22-26, 33-37, 78, and 79 for non-statutory
obviousness-type double patenting as being unpatentable over
Application No. 11/525,760.
V. Claims 22-26, 33-37, 78, and 79 for non-statutory
obviousness-type double patenting as being unpatentable over
Application No. 12/283,128.
VI. Claims 22-26, 33-37, 78, and 79 for non-statutory
obviousness-type double patenting as being unpatentable over
Application No. 12/283,158.
Ans. 5-15.
INDEFINITENESS REJECTIONS
1. Mixing Method and Apparatus Limitations (Claims 22-26, 33-
37, 78, and 79)
The Examiner asserts that independent claim 22 recites a "method
comprising ... a computing device," and therefore "it is unclear which of
the four categories of subject matter a claim is directed to - process,
machine, manufacture, or composition of matter." Ans. 5. The Examiner
relies upon MPEP § 2173 .05(p )(II), which states that "[a] single claim which
2 Climo et al., US Patent 7,078,377 Bl, issued July 18, 2016 ("Climo").
3 Chee et al., US Patent 5,861,242, issued Jan. 19, 1999 ("Chee").
4 Armour et al., US Patent 6,586,430 Bl, issued July 1, 2003 ("Armour").
5 Holland-Staley, Pub. No. US 2007 /0172926 Al, published July 26, 2007
("Holland-Staley").
6 Burdette et al., Killing Bugs at the Bedside: A prospective hospital survey
of how frequently personal digital assistants provide expert
recommendations in the treatment of infectious diseases, 3 Annals of Clin.
Microbiology and Antimicrobials 1---6 (2004) ("Burdette").
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Application 12/283, 184
claims both an apparatus and the method steps of using the apparatus is
indefinite under 35 U.S.C. 112, second paragraph."
We are not persuaded that the claims are indefinite on this basis. The
cases cited in MPEP § 2173.05(p )(II) address the situation where an
apparatus claim recited method steps to be performed by a user, and not
merely the capability of the apparatus. See In re Katz Interactive Call
Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011)
(emphasis added) (claim directed to "[a] system with an 'interface means for
providing automated voice messages ... to certain of said individual callers,
wherein said certain of said individual callers digitally enter data'" was
determined to be indefinite because the italicized claim limitation is not
directed to the system, but rather to actions of the individual callers, which
creates confusion as to when direct infringement occurs); IPXL Holdings v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (system claim that
recited "an input means" and required a user to use the input means was
found to be indefinite because it was unclear "whether infringement ...
occurs when one creates a system that allows the user [to use the input
means], or whether infringement occurs when the user actually uses the
input means.").
Unlike the situation in Katz and IP XL, the claims here are directed to a
method involving the use of an apparatus (i.e., a computing device). The
Federal Circuit has held that such claims are not indefinite for combining
different classes of statutory subject matter. See Microprocessor
Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1374--75
(Fed. Cir. 2008) (claim directed to "method of executing instructions in a
pipelined processor comprising: [structural limitations of the pipelined
processor]" not found indefinite because "[m]ethod claim preambles often
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recite the physical structures of a system in which the claimed method is
practiced.").
Accordingly, we do not sustain the indefiniteness rejection of claims
22-26, 33-37, 78, and 79 for mixing method and apparatus limitations.
2. "Probability of Association" (Claims 78 and 79)
The Examiner further asserts that the phrase "probability of
association between ... variant of the pathogen in the given individual" in
claim 7 8 is not clear because it does not state what the association is
"between" or to what the probability of association is being compared. Ans.
5. Likewise, the Examiner asserts that the phrase "estimating ... until there
is less than a 5% probability of association" in claim 79 is not clear as to
"how the probability for a single individual can change just because an
estimate is being calculated." Id. at 6.
Appellants argue that "dependent claims 78 and 79 are definite on
their face" because "[t]he claims provide what is performing the act-the
computing device-as well as that the act is 'estimating a probability of
association'" and "[t]he claims further specify that the 'estimating' is carried
out 'until there is less than a 5 percent probability of association between the
at least one variant of the pathogen and the given individual."' Appeal Br.
14.
We agree with the Examiner that claims 78 and 79 are indefinite as to
the "probability of association" limitations. Appellants' response to the
Examiner's rejection merely repeats the claim language and similar language
in the Specification without explaining the methodology by which a
"probability of association" is calculated. Without any such explanation
identified in the claims or the Specification, a skilled artisan would not be
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Application 12/283, 184
reasonably apprised of how to estimate the probability and/or determine
whether the less than 5% probability of association requirement is satisfied.
We therefore affirm the§ 112 indefiniteness rejection as to claims 78
and 79. See In re Packard, 751F.3d1307, 1311 (Fed. Cir. 2014) (A§ 112
indefiniteness rejection is proper "when the USPTO has initially issued a
well-grounded rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention").
NON-STATUTORY SUBJECT MATTER REJECTION
The Examiner rejected claims 22-26, 33-37, 78, and 79 under
35 U.S.C. § 101 as being drawn to non-statutory subject matter because
claims are directed to a "method comprising ... a computing device." The
Examiner's rationale for this rejection is similar to the Examiner's rationale
for the indefiniteness rejection based on mixing method and apparatus
limitations. Ans. 7.
For the reasons stated above, we find that the claims are drawn to a
statutory class of subject matter (i.e., a process). For the reasons set forth in
the new ground of rejection under 35 U.S.C. § 101 below, however, we
determine that the claims are nonetheless patent-ineligible because they are
directed to an abstract idea.
OBVIOUSNESS REJECTION
The Examiner finds that claims 22-26, 33-37, and 78 would have
been obvious over the combination of Climo, Chee, Armour, Holland-
Staley, and Burdette.
The Examiner relies upon Climo as being "directed to identifying S.
aureus variants and methods of treatment of staphylococcal infection," but
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acknowledges that "Climo does not teach the step of estimating a probability
of existence of a virus in an individual." Ans. 8-9. The Examiner interprets
the step of"' estimating probability of existence' of a pathogen" as being no
different from the step of"' identifying a pathogen"' and "reading on
performing a diagnostic, or making statistical estimates based on disease
incidence or infection rates." Id. at 10-11. The Examiner finds that:
At the time of invention, one of ordinary skill in the art
could have combined the identifying pathogen and variants
thereof as taught in Climo with estimating probability of their
existence in an individual using methods of Chee, Armour,
Holland-Stanley, and Bur[ d]ette. Since the procedures are
performed independently with non-overlapping steps, each
performs the same separately as it does in combination. In
addition, Chee provides the motivation of identifying drug-
resistant variants in order to better direct a therapeutic regimen.
And since all the methods of Climo, Chee, Armour, and
Holland-Stanley detect pathogens and generate information
related to pathogens, and Bur[ d]ette teaches estimating the
probability of existence of pathogens in a clinical setting, said
practitioner would have reasonably predicted that the combined
method would prove successful.
Id. at 12.
We determine that the Examiner has not made a prima facie showing
of obviousness based on the combination of references and the rationale set
forth in the rejection. Although we agree with the Examiner's observation
that the Specification teaches that "[e]stimating the probability of existence
includes, but is not limited to, clinical differential diagnosis techniques"
(Spec. 8, 11. 7-9), we disagree with the Examiner's conclusion that the
recited step is no different than simply "'identifying a pathogen."' Ans. 10.
The claims require "estimating a probability of an existence of the at least
one variant of the pathogen in a given individual." Cl. 22 (emphasis added).
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Applying the broadest reasonable interpretation, we determine that the claim
language requires a differential diagnosis that would distinguish the
existence of one variant of the pathogen from another variant of the
pathogen within a given individual/patient. The Examiner acknowledges
that Climo does not teach or suggest that requirement with respect to the S.
Aureous variants discussed therein. Moreover, the Examiner does not
explain how Chee, Armour, Holland-Staley, and Burdette, which are each
directed to teachings related to different pathogens (e.g., HIV and Hepatitis
C Virus), would have provided motivation for the skilled artisan to
distinguish among different S. Aureous variants in a given patient with
staphylococcal infection.
We accordingly reverse the obviousness rejection relying upon the
combination of Climo, Chee, Armour, Holland-Staley, and Burdette as set
forth by the Examiner. For the reasons set forth below, however, we
determine that claim 22 would have been obvious over Chee alone, and enter
a new ground of rejection under 35 U.S.C. § 103 on that basis
OBVIOUSNESS-TYPE DOUBLE PA TENTING REJECTIONS
The Examiner entered obviousness-type double patenting rejections
over the claims of Application Nos. 11/525,760, 11/283, 128, and
11/283,158. Application No. 11/525,760 was abandoned on December 30,
2011, and therefore the Examiner's rejection based on that application is
rendered moot.
The other two co-pending applications have not been abandoned and
we address the merits of the rejections.
We note that Application No. 12/283,158 and the present application
both claim priority as divisionals of Application No. 11/525,760 (filed Sept.
22, 2006). In view of the original restriction requirement in Application No.
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11/525,760 that led to the filing of both divisional applications, the
Examiner has not shown why Application No. 12/283,158 is available as a
reference over the present application. An obviousness-type double
patenting rejection as between the two applications is improper under
35 U.S.C. § 121, which states that:
[a] patent issuing on an application with respect to which a
requirement for restriction under this section has been made, or
on an application filed as a result of such a requirement, shall
not be used as a reference either in the Patent and Trademark
Office or in the courts against a divisional application or against
the original application or any patent issued on either of them,
if the divisional application is filed before the issuance of the
patent on the other application.
There has been no showing that Appellants failed to maintain consonance
with the original restriction requirement. See Gerber Garment Technology
Inc. v. Lectra Systems Inc., 916 F.2d 683, 688 (Fed. Cir. 1990). We
accordingly reverse the obviousness-type double patenting rejection over co-
pending Application No. 12/283,158.
With respect to co-pending Application No. 12/283,128, which claims
priority as a divisional to a different application (Application No.
11/487,133, filed July 13, 2006) and is thus available as a reference under
35 U.S.C. § 121, the Examiner asserts that "[a]lthough the conflicting claims
are not identical, they are not patentably distinct from each other because the
claims of 12/283128 are directed to a system comprising a processor and
computer readable medium with instructions for executing the same method
steps as the instant method." Ans. 14. We agree. Contrary to Appellants'
arguments (Appeal Br. 33), we find that the Examiner articulated a sufficient
rationale as to why the claims of the two applications would have been
obvious insofar as it would have been obvious to implement the methods
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Application 12/283, 184
recited in the instant claims on a computer system. Appellants have not
pointed to any other meaningful difference between the claims. We thus
affirm the obviousness-type double patenting rejection over co-pending
Application No. 12/283,128.
NEW GROUNDS OF REJECTION
Within our authority under 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection.
1. New Ground of Re} ection Under 3 5 U.S. C. § 101
Claims 22-26, 33-37, 78, and 79 are rejected under 35 U.S.C. § 101
as being drawn to a patent-ineligible abstract idea as set forth by the
Supreme Court in Mayo Collaborative Servs. v. Prometheus Labs., 132 S.
Ct. 1289, 1297 (2012) ("Mayo") and Alice Corp. v. CLS Bank Int 'l, 134 S.
Ct. 2347, 2358-59 (2014) ("Alice").
In accordance with the Mayo/Alice framework for determining patent
eligibility, we must determine whether a claim that is drawn to a statutory
class of subject matter (process, machine, manufacture, or composition of
matter) is a) otherwise "directed to" a judicially recognized exception (i.e.,
law of nature, natural phenomena, or abstract idea) and, if so, b) whether the
claim recites additional elements that amount to "significantly more" than
the judicial exception. See 2014 Interim Guidance on Patent Subject Matter
Eligibility, 79 Fed. Reg. 74618, 74621 (Dec. 16, 2014).
Here, although the claims are drawn to a statutory class (process), we
determine that each of the claims are directed to a patent-ineligible abstract
idea insofar as they are directed generally to methods for identifying medical
treatment options for pathogen variants. See, e.g., Cl. 22 (reciting steps of a)
"identifying a pathogen that is a primary pathogenic cause of a disease
state;" b) "identifying at least one variant of the pathogen;" c) "estimating a
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Application 12/283, 184
probability of an existence of the at least one variant of the pathogen in a
given individual;" and d) "identifying at least one treatment targeted against
the at least one variant of the pathogen."). The claims do "no more than call
on a 'computing device,' with basic functionality for computing stored and
input data and rules, to do what doctors routinely do." Cf SmartGene, Inc.
v. Advanced Biological Labs., SA, 555 F. App'x 950, 954--55 (Fed. Cir.
2014) ("Whatever the boundaries of the 'abstract ideas' category, the claim
at issue here involves a mental process excluded from section 101: the
mental steps of comparing new and stored information and using rules to
identify medical options."). The claims at issue here are not meaningfully
distinguishable from those found to be ineligible for patent protection in
SmartGene.
Furthermore, as recognized in SmartGene, the fact that a computer is
used to perform the recited steps does not add "significantly more" to the
abstract idea embodied in the claims. The use of a generic computer to
identify information and estimate a probability simply takes advantage of
some of the "most basic functions of a computer." Cf Alice, 134 S. Ct. at
2359 (the "use of a computer to obtain data, adjust account balances, and
issue automated instructions; all of these computer functions are 'well-
understood, routine, conventional activit[ies]' previously known to the
industry.") (citing Mayo, 132 S. Ct. at 1294); Gottschalk v. Benson, 409 U.S.
63, 65 (1972) (noting that a computer "operates ... upon both new and
previously stored data").
2. New Ground of Rejection Under 35 U.S.C. § 103
Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Chee.
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Chee teaches the use of an array of nucleic acid probes on biological
chips for diagnosis of HIV. Chee, Title. More specifically, Chee teaches:
[a] fter [the HIV] virus acquires drug resistance via a mutation,
the patient suffers dramatically increased viral load, worsening
symptoms (typically more frequent and difficult-to-treat
infections), and ultimately death. Switching to a different
treatment regimen as soon as a resistant mutant virus takes hold
may be an important step in patient management which
prolongs patient life and reduces morbidity during life.
Chee, 4:37--44. Chee further teaches:
When the immune system in AIDS patients fails, these
normally latent pathogens can grow and generate rampant
infection. In treating such patients, it would be desirable
simultaneously to diagnose the presence or absence of a variety
of the most lethal common infections, determine the most
effective therapeutic regime against the HIV virus, and monitor
the overall status of the patient's infection.
The present invention provides DNA chips for detecting
the multiple mutations in HIV genes associated with resistance
to different therapeutics. These DNA chips allow physicians to
monitor mutations over time and to change therapeutics if
resistance develops. Some chips also provide probes for
diagnosis of pathogenic microorganisms that typically occur in
AIDS patients.
Id. at 5:21-35.
The foregoing teachings of Chee suggest a) "identifying a pathogen
that is a primary pathogenic cause of a disease state" (i.e., HIV); b)
"identifying at least one variant of the pathogen" (i.e., mutations of HIV); c)
"estimating a probability of an existence of the at least one variant of the
pathogen in a given individual" (i.e., using DNA chips to monitor mutations
of HIV and diagnosing pathogenic microoganisms associated with HIV
infection); and d) "identifying at least one treatment targeted against the at
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least one variant of the pathogen" (i.e., switching to a different treatment
regimen as soon as a resistant mutant virus takes hold).
A skilled artisan would have recognized that the diagnosis of HIV
variants using DNA chips as taught by Chee would involve the use of a
computing device. Moreover, to the extent Chee does not explicitly teach
the use of a computing device to perform any of the claimed steps, we
determine that the skilled artisan would have found it obvious to implement
those steps using a computer. The use of a computer to automate the steps
of a known process is generally obvious. Cf Leapfrog Enterprises, Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) ("Accommodating
a prior art mechanical device that accomplishes [the goal of teaching a child
to read phonetically] to modem electronics would have been reasonably
obvious to one of ordinary skill in designing children's learning devices."). 7
SUMMARY
We reverse the rejection of claims 22-26, 33-37, 78, and 79 under
35 U.S.C. § 112 i12 for indefiniteness based on mixmg method and
apparatus limitations.
We affirm the rejection of claims 78 and 79 under 35 U.S.C. § 112 i-f 2
as being indefinite with respect to the phrase "probability of association."
We reverse the rejection of claims 22-26, 33-37, 78, and 79 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
We reverse the rejection of claims 22-26, 33-37, and 78 under
7 We do not address whether any of other pending claims would have been
obvious over Chee alone, or Chee combined with any other references, for
reasons similar to those stated herein. We leave that to the Examiner's
determination in the first instance.
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35 U.S.C. § 103 as being unpatentable over the combination of Climo, Chee,
Armour, Holland-Staley, and Burdette.
We dismiss as moot the rejection of claims 22-26, 33-37, 78, and 79
for non-statutory obviousness-type double patenting as being unpatentable
over Application No. 11/525,760.
We affirm the rejection of claims 22-26, 33-37, 78, and 79 for non-
statutory obviousness-type double patenting as being unpatentable over
Application No. 12/283,128.
We reverse the rejection of claims 22-26, 33-37, 78, and 79 for non-
statutory obviousness-type double patenting as being unpatentable over
Application No. 12/283,158.
We enter a new ground of rejection of claims 22-26, 33-37, 78, and
79 under 35 U.S.C. § 101 as being drawn to a patent-ineligible abstract idea.
We enter a new ground of rejection of claim 22 under 35 U.S.C. § 103
as being unpatentable over Chee.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011, effective
Jan. 23, 2012). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
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examiner, in which event the proceeding will be remanded to
the examiner.
2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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