Ex Parte Kamath et al

Patent Trial and Appeal Board

Oct 31, 2018

13460100 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/460,100 04/30/2012
6147 7590 11/02/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
FIRST NAMED INVENTOR
Vidya Pundalik Karnath
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.
251547-3 1045
EXAMINER
VANNI, GEORGE STEVEN
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIDYA PUNDALIK KAMATH,
ALBERTO SANTAMARIA-PANG, BRION DARYL SARACHAN,
and MEGAN ROTHNEY
Appeal2017-004722
Application 13/460,100 1
Technology Center 1600
Before DONALD E. ADAMS, MICHAEL J. FITZPATRICK, 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
for selectively displaying representations of cells or sub-cellular structures of
interest in biological tissue, which have been rejected as being directed to
patent ineligible subject matter and as obvious. 2 We have jurisdiction under
35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as the General Electric
Company. (Appeal Br. 2.)
2 We note that the subject matter of this application is similar to that of
Application 13/459,958, which is the subject of Appeal No. 2017-004935,
the claims of which were rejected as being obvious based on different
references than relied upon in this appeal. In a decision issued
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We affirm.
STATEMENT OF THE CASE
"Examination of tissue specimens that have been treated to reveal the
expression of biomarkers is a known tool for biological research and clinical
studies." (Spec. 1.) "Commonly the treated tissue is examined with digital
imaging and the level of different signals emanating from different
biomarkers can consequently be readily quantified." (Id.)
A technique has further been developed which allows testing a
given tissue specimen for the expression of numerous
biomarkers. Generally, this technique involves staining the
specimen with a fluorophore labeled probe to generate a signal
for one or more probe bound biomarkers, chemically bleaching
these signals, and re-staining the specimen to generate signals
for some further biomarkers.
(Id.) "Digital images of the specimen are collected after each staining step."
(Id.) The claimed invention "leverage[ s] multiplexed biomarker images that
are generated through known techniques" (id. at 10), "allow[ing] users [ of a
graphical interface] to review complex image and analysis data
corresponding to multiple patients, multiple tissue fields-of-view and/or
multiple biomarker data in a structured yet flexible and user-friendly
manner" (id. at 15-16).
simultaneously herewith, we affirm the rejections of the claims on appeal in
Appeal No. 2017-004935 as being obvious. The subject matter of this
application is also similar to that of Application 13/460,018, which is the
subject of Appeal No. 2017-006470, the claims of which were rejected as
being obvious based on different references than relied upon in this appeal.
In a decision issued simultaneously herewith, we affirm the rejections of the
claims on appeal in Appeal No. 2017-006470 as being obvious.
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Claims 1-17, 19-23, and 25 are on appeal. Claim 1 is representative
and reads as follows:
1. A computer-implemented method for selectively
displaying representations of cells or sub-cellular structures of
interest in biological tissue, the method comprising:
utilizing a processor to:
render a graphical user interface on a visual display
device;
render, on the graphical user interface, a field of view
selection component allowing a user to select a field of view
within a set of registered multiplexed biomarker images
capturing expression of a plurality of biomarkers in the same
sample of the biological tissue, wherein each multiplexed
biomarker image of the same sample of the biological tissue
depicts expression levels of different biomarkers at least at the
cellular level;
in response to user input selecting a respective field of
view common to each of the multiplexed cells and
corresponding to a subset of cells within the multiplexed
biomarker images render, on the graphical user interface, a first
image of the selected field of view that includes the subset of
cells and expression levels of a first biomarker within the subset
of cells;
render, on the graphical user interface, a morphological
feature selection component allowing a user to select from
among the subset of cells a first morphological feature meeting
at least one morphological feature criterion; and
in response to user input selecting the first morphological
feature meeting the at least one morphological feature criterion,
identify a first set of cells or subcellular structures represented
in the first image that meet the at least one morphological
feature criterion in the first image of the selected field of view
as cells or sub-cellular structures for exclusion from further
analysis by the processor.
(Appeal Br. 30.)
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The following grounds of rejection by the Examiner are before us on
review:
Claims 1-17, 19-23, and 25 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 1-17, 19-23, and 25 under 35 U.S.C. § 103(a) as unpatentable
over Carpenter. 3
DISCUSSION
I
Patent Ineligible Subject Matter
The Examiner finds that claim 1 is directed to the abstract idea of
manipulating data in identifying biological units meeting a morpholigical
criterion. (Final Action 3--4.) According to the Examiner, all four "render"
steps and the "identify" step of the claimed invention together are the
abstract idea in that they "are equivalently and jointly steps of the recited
analysis algorithm." (Ans. 15.) The Examiner contends that the claims are
analogous to case law "i.e. obtaining and comparing intangible data ( e.g.
Cybersource, Ambry, Myriad CAFC and SmartGene) and/or execution of an
algorithm to implement mathematical relationships and/or formulas,
including image processing ( e.g. TL!, Digitech, Benson, Flook, Diehr,
FuzzySharp, In re Grams and In re Abele)[.]" (Ans. 17.)
The Examiner further finds that the steps or elements other than the
abstract idea, i.e., the user input required, are conventional steps of a
3 Carpenter et al., CellProfiler: image analysis software for identifying and
quantifying cell phenotypes, 7 Genome Biology, Rl00.1-11, (2006).
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computing environment, and conventional data gathering. (Final Action 4.)
The Examiner determines that the claims as a whole are not seen as
"sufficiently analogous to any controlling case law identifying examples of
eligible claims" and that the claim as a whole does not appear to be an
improvement over embodiments available in the art at the time of the
invention. (Id.) The Examiner concludes, therefore, that when viewed as a
whole, the claim does not recite limitations to transform the abstract idea
into a patent eligible application of the idea. (Id. at 5.)
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
Intern 'l, 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.
Appellants contend that "[ t ]here is no indication in the case law that a
method or system" as claimed "should be considered an abstract idea."
(Reply Br. 4.) While the claim does not precisely match up to the claims
found to be ineligible in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012) (finding ineligible a claim directed at
the collection of data to be combined in a particular way and plugged into a
mathematical equation, taking into account the calculated result), or
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SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App'x 950
(Fed. Cir. 2014) (finding ineligible a claim to organization and comparison
of information to develop a guideline), or In re Grams, 888 F.2d 835 (Fed.
Cir. 1989) (finding ineligible a claim directed at the collection of data to be
combined in a particular way and plugged into a mathematical equation to
produce more data which is assessed for particular relevance), we agree with
the Examiner that the claim is directed to an abstract idea.
"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). 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." Id. at 1354 (collecting cases). And, it has "recognized that
merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis."
Id. (collecting cases).
Claim 1 is directed to providing an interactive display that allows a
user to select a certain set of data for visual display and further allows the
user to narrow the field of data displayed based on a certain selected
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characteristic that when selected, allows the processor to identify data to be
excluded from further analysis. While it is true that the method recites the
use of a processor to render graphical user interfaces (GUI) and certain
elements on the GUI, those steps are simply a display of data that the
processor manipulates in response to user input. Thus, as the Examiner
indicates, the claim as a whole concerns nothing more than the display of
data and its manipulation by a processor using computer algorithms that
incorporate user selection of specified data. We do not find this to be an
overgeneralization of claim 1, as urged by Appellants (Reply Br. 8).
While the claim itself does not specify the algorithm used to process
the data for display (Appeal Br. 15; Reply Br. 7), it is clear that such is a
necessary step for the processor to render the image that includes the user
specified selection on GUI. See, e.g., Spec. 10-11
(Systems and methods disclosed herein may include one or
more programmable processing units having associated
therewith executable instructions held on one or more computer
readable medium, RAM, ROM, hard drive, and/or hardware ...
. Hardware may, for example, include components and/or logic
circuitry for executing the embodiments taught herein as a
computing process .... Displays and/or other feedback means
may also be included, for example, for rendering a graphical
user interface.);
see also Spec. 11 (the "actual software code or control hardware which may
be used to implement" the embodiments is not limiting).
Appellants argue the Examiner's rejection is in error because the
claim "is not similar to the examples of abstract ideas provided in the
USPTO's Guidance or the USPTO's Update." (Appeal Br. 13.) Even if
true, that is no basis for concluding that the Examiner erred in determining
that claim 1 is directed to an abstract idea. We are aware of no controlling
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precedent, nor do Appellants identify any precedent, that precludes an
examiner from determining that a claim is directed to an abstract idea unless
it is a concept that a court has previously identified explicitly as an abstract
idea.
We do note, however, that there are examples in the Guidelines of
claims that include GUI limitations, some of those claims are noted to be
patent ineligible and others patent eligible. We agree with Appellants that
claim 1 is not like the example claims that concern meal planning, which the
Guidelines indicate are directed to patent ineligible subject matter because
they were directed to a "mental process of managing behavior that could be
performed in the human mind, or by a human using a pen and paper." 2015
Update to the 2014 Interim Guidance on Subject Matter Eligibility ("101
Guidelines") published on Dec. 16, 2014 (79 Fed. Reg. 74618), Appendix 1:
Examples at 5---6 (Example 22). We note that the claimed method, however,
is also not akin to a GUI claim that the Guidelines indicated is directed to
patent eligible subject matter. 101 Guidelines at 7-12. For example, the
claim is not directed to addressing a problem with a GUI, such as
overlapping windows within a GUI where the method "recite[ s] a specific
application of the mathematical algorithm that improves the functioning of
the basic display function of the computer itself." See 101 Guidelines at 8,
11-12.
The claimed method does not improve computer technologies, see,
e.g., McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016) (improvement in how a physical display operated), 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
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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); Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1348--49 (Fed. Cir. 2016). Nor is the claim directed to a solution that
is rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks. See, e.g., DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
In DDR, the court stated that "the [ ] patent's claims address the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly transported
away from a host's website after 'clicking' on an advertisement and
activating a hyperlink." DDR Holdings, 773 F.3d at 1257. This was done in
the claim by serving a composite page with content based on the link that
was activated to serve the page. Id.
The claim is not directed to a method of using an improved computer
tool, but rather to a method of using a conventional computer tool merely to
manipulate data more efficiently. As the Specification indicates, the claimed
invention "leverage[ s] multiplexed biomarker images that are generated
through known techniques." (Spec. 10.) While Appellants argue that the
claims at issue "clearly provide improvements in the specialized technical
field of image analysis of biological tissues" and improve the diagnosis of
cancer (Appeal Br. 21-22), the Specification indicates that the improvement
is a time-efficient selection of data sources that is user-friendly and allows
users not to have to memorize where image data is stored. As the
Specification explains:
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The ability to select data using the data source selection
component, the slide-spot browser tool and the marker selection
component in the user interface allows intuitive, time-efficient
and user-friendly selection of data sources.
(See, e.g., Spec. 19--20; see also Spec. 9 ("Exemplary embodiments enable
structured, yet flexible and user-friendly, displays of selective features
and/or analysis that allow pathologists to arrive at more objective and
repeatable diagnoses and disease or condition models.")). As also
explained:
The ability to select particular studies/ experiments, slides, spots
and biomarkers using the tools provided on the user interface
makes it unnecessary for a user to remember the locations of
the files related to the studies/ experiments, slides, spots and
biomarkers, and allows the user to select data sources in an
intuitive, time-efficient and user-friendly manner.
(Spec. 16.) Appellants do not argue, nor do we find anything in the
Specification to indicate, that the process involves an improvement to
computer technology as such or uses specific rules to solve a computer
technological problem. We conclude that the method reads on general-
purpose computer technology used to process data more efficiently than a
human can. However, the claimed method steps merely recite displaying
data and its manipulation by a processor that implicitly use computer
algorithms to process that data and incorporate user selection of specified
data. As discussed above, information as such is an intangible, and merely
collecting it, analyzing it, and/or displaying it, even when limited to
particular content that does not change its character as information is
abstract. See Elec. Power Grp., 830 F.3d at 1353-54. Moreover, our
reviewing court has held that speed and accuracy increases stemming from
the ordinary capabilities of a general purpose computer "do[] not materially
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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).
In light of the foregoing, we do not find Appellants' argument that the
Examiner "fails to provide a reasoned rationale articulating the reasons for
contending that the claims are directed to an abstract idea" (Appeal Br. 9--
11 ), persuasive. Likewise, we also do not find Appellants' argument that the
claimed method is not abstract because it recites concrete steps (Appeal Br.
12, 16-17), and "is not similar to the economic principle of intermediated
settlement of the other examples provided in Alice" or "the examples of
abstract ideas provided in the USPTO's Guidance or the USPTO's Update"
(Appeal Br. 12-14; Reply Br. 3-6), persuasive.
Turning to Alice step-two, Appellants argue that the claimed method
amounts to significantly more than an abstract idea because the specified
steps of the claim "cannot be considered a conventional data gathering step"
as they are not examples of conventional computer functions provided in the
examples in the USPTO' s 101 Guidelines such as "automating mental tasks
and receiving or transmitting data over a network." (Appeal Br. 19; see also
Reply Br. 9--11.) We do not find Appellants' argument persuasive. The
rendering of information on a display in response to user input is a
conventional function performed by a processor in conjunction with a
display device. See, e.g., 101 Guidelines at 6 ("The meal builder would
require a processor and memory in order to perform basic computer
functions of accepting user input, retrieving information from a database,
manipulating that information and displaying the results."). We find that the
limitations when considered independently and together do not recite
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limitations that transform the data processing and display into something
more than an abstract idea.
Appellants also assert that the recitations of the specific selection,
displaying, enabling of selection, and identifying steps are not conventional
steps and thus provide for an "inventive concept." (Appeal Br. 21.) We do
not find this argument persuasive. The search for an inventive concept is
distinct from demonstrating novelty. See, e.g., SAP America, Inc. v.
Investpic LLC, 898 F.3d 1161, 1162 (Fed. Cir. 2018) (citing Synopsys, Inc.
v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) ("[A] claim
for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty.")). The
steps that Appellants identify may or may not be novel or non-obvious, but
they are simply the manipulation or selection of information as such that
does not rely on novel or non-obvious technology or rely on a novel or non-
obvious computer technique or data structure. Consequently, we conclude
as the Examiner did, that the steps are themselves, both individually and in
combination, simply abstract.
Appellants further argue that claim 1 prevents preemption because
"other parties are still free to selectively view or display particular cells of
interest in a biological tissue via image-based analysis, for example."
(Appeal Br. 20-21.) This argument is not found persuasive either because
the high-level of abstraction of the recited limitations of claim 1 would
appear to prevent exactly what Appellants indicate is "still free" to other
parties. In any event, however, even if Appellants' position were correct
that some aspect of image-based analysis were still free to other parties, "the
absence of complete preemption does not demonstrate patent eligibility."
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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.").
Finally, Appellants argue that because claim 1 "is tied to a particular
machine or apparatus" that "points to patent eligibility." (Appeal Br. 22.)
This argument is not persuasive because the machine that stores data and
performs the analytical processing is a general purpose computer, and the
use of such a generic computer element does not transform an otherwise
abstract idea into patent-eligible subject matter. See, e.g., Mayo, 566 US at
84 (("[S]imply implementing a mathematical principle on a physical
machine, namely a computer, [i]s not a patentable application of that
principle.") (describing Gottschalk v. Benson, 409 U.S. 63, 64 (1972)); DDR
Holdings, 773 F.3d at 1256 ("[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm 'is beside the point."')
Furthermore, as the Specification indicates, machines for obtaining a
tissue sample; applying a multiplexing staining and destaining technique to
the tissue sample and generating digital images of the tissue sample during
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the multiplexing staining and destaining were known at the time of filing, as
was analyzing the images of the treated sample, and storing the digital
images on a storage device for analysis. (See, e.g., Spec. 1, 10.) Appellants
do not assert that the processor or display are new or non-obvious. Thus,
these limitations do not imbue the claim with an inventive concept. Accord
Berkheimerv. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018) (holding
claims lacked an inventive concept because they "amount to no more than
performing the abstract idea of parsing and comparing data with
conventional computer components"); Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (holding a claim
lacked an inventive concept because it "simply recites the use of generic
features ... as well as routine functions ... to implement the underlying
idea").
Appellants purport to argue claim 25 separately from claim 1.
However, we do not discern a difference in the arguments. (See Appeal Br.
23-24 (noting claim 25 that recites a system "having a display, processor,
and non-transitory storage media configured to ... " "is not an abstract idea
for at least the reasons set forth above with respect to independent claim
1. "); see generally Reply Br. ( arguing against the Examiner's 101 rejection
of claims 1 and 25 together). Claim 25 is no different from claim 1 in
substance other than the recitation of generic computer components. The
handful of generic computer components, however, are configured to
implement the same idea as recited in claim 1. Thus, for the reasons set
forth above, we also agree with the Examiner that claim 25 is directed to
patent ineligible subject matter.
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Consequently, for all of the reasons discussed above, we sustain the
Examiner's rejection of claims 1 and 25 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 2-17 and 19-23 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
II
Obviousness
The Examiner finds that the claimed GUI is taught by Carpenter's
CellProfiler. (Final Action 6.) According to the Examiner, Carpenter
describes a user being able to click "to outline a region of interest" in a
multiplexed biomarker image where there has been fluorescence imaging of
expressed proteins and rendering images representing expression levels and
biological units via an analysis pipeline that is displayed. (Id. at 6-7.) Also,
according to the Examiner, Carpenter teaches that the imaging is of multiple
intracellular objects using multiple wavelength imaging. (Ans. 21-22.) The
Examiner indicates that Carpenter discloses cell identification by cell
morphologies and that some objects may be removed based on their
measurements. (Final Action at 7 .)
Appellants contend that Carpenter does not teach the field of view
selection component because Carpenter does not teach selecting a field of
view from a set of registered multiplexed biomarker images capturing
expression of a plurality of different biomarkers in the same sample of
tissue. (Appeal Br. 26; Reply Br. 2.) Appellants explain that the Figures of
Carpenter that the Examiner relies on for this teaching (Figs. 2D, 3, and 4)
do not identify a set of multiplexed biomarker images that capture
expression of a plurality of different biomarkers in the same sample.
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(Appeal Br. 26.) According to Appellants, "the images involving
biomarkers available for analysis in Carpenter appear to be obtained from
different samples (e.g., control samples versus treated cells). See id., FIGS.
1( e ), 3, and 4( a)." (Id.) The remainder of Appellants' arguments as to what
is missing from Carpenter stems from its assertion that Carpenter does not
teach the selection from a set of registered multiplexed biomarker images
capturing expression of a plurality ofbiomarkers in the same sample of
tissue. (See Appeal Br. 26-27 (indicating that the rendering an image from
the selected point of view is not taught because "Carpenter appears to be
completely silent with regard to a set of registered multiplexed biomarker
images that capture expression of a plurality of biomarkers in the same
sample of the biological tissue ... "); Reply Brief 3 (same).)
We do not find Appellants' arguments persuasive. A reference is
available for all that it teaches to a person of ordinary skill in the art, not just
what is disclosed in the examples. In re Inland Steel Co., 265 F.3d 1354,
1360 (Fed. Cir. 2001); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989). Carpenter describes its computer interface for high
throughput cell analysis using image cytometry. (Carpenter RlOO and
100.3.) Carpenter explains that the system employs
software [that] uses the concept of a 'pipeline' of individual
modules (Figure 1 b; Additional data file 2). Each module
processes the images in some manner, and the modules are
placed in sequential order to create a pipeline: usually image
processing, then object identification, then measurement.
(Carpenter Rl00.3, col. 2.) Carpenter notes that the analysis begins with an
image "or group of images if multiple wavelengths are available" traveling
through the pipeline. (Id.) And Carpenter describes that image cytometry
can monitor various different proteins relative to one another. (See, e.g., id.
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at Rl00.6.) Carpenter describes multiple images being viewed from an
image set (e.g., Figs. 2 and 4(a)) or from a sample (e.g., Fig. 3). (See also
id.at Rl00.9 (discussing cluster computing on large sets of images).) In
other words, Carpenter teaches analyzing multiplexed biomarker images
using a graphical user interface, and while Carpenter may not specifically
state that images are from a sample are in a set (Appeal Br. 26), Carpenter's
teachings when read together suggest that Carpenter's cell profiler stores
multiplexed biomarker images of a sample together as sets. Moreover,
Carpenter teaches the images can include different biomarkers using, for
example, multiple wavelengths.
Claim 1 requires a processor to render a field of view selection
component. As the Examiner explains, Carpenter describes being able to
outline a region of interest in each image. (Id. at 100.3, col. 2.) The ability
in Carpenter to outline a region of interest appears to meet the selection of a
field of view limitation, and Appellants do not argue to the contrary. Claim
1 further requires that the field of view be from within a set of registered
multiplexed biomarker images capturing biomarkers in the same sample of
tissue. As noted above, Carpenter teaches or suggests that CellProfiler
stores images as a set from a single biological sample and that the images
provide information of different biomarkers. Consequently, we agree with
the Examiner that Carpenter teaches the claimed field of view selection from
a set of images as required by claim 1.
Consequently, we sustain the Examiner's rejection of claim 1 under
35 U.S.C. § 103 as being unpatentable over Carpenter.
Appellants' arguments that the Examiner erred in rejecting claim 25
as being obvious over Carpenter are the same as asserted for claim 1. (See
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Appeal2017-004722
Application 13/460, 100
Appeal Br. 26.) For the reasons just discussed, we do not find Appellants'
arguments persuasive.
Claims 2-17 and 19-23 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
We affirm the Examiner's rejection of claims 1-17, 19-23, and 25
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
We affirm the Examiner's rejection of claims 1-17, 19-23, and 25
under 35 U.S.C. § 103(a) as unpatentable over Carpenter.
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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