Ex Parte Kudavelly et al

Patent Trial and Appeal Board

Oct 29, 2018

13129412 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/129,412 09/26/2011 Srinivas Rao Kudavelly
24737 7590 10/31/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2008P01056WOUS 8839
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRINIV AS RAO KUDA VELL Y and NEVENKA DIMITROV A
Appeal2017-010179
Application 13/129,412
Technology Center 1600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to a
method for designing a test kit for diagnosing genetic diseases. The
Examiner rejected the claims as lacking patentable subject matter 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 Koninklijke Philips
Electronics N .V. (App. Br. 1).
2 We have considered and herein refer to the Specification of May 16, 2011
("Spec."); Final Office Action of July 14, 2016 ("Final Act."); Appeal Brief
of Dec. 19, 2016 ("App. Br."); Examiner's Answer of June 2, 2017 ("Ans."),
and Reply Brief of July 25, 2017 ("Reply Br.").
Appeal2017-010179
Application 13/129,412
Statement of the Case
Background
"Bioinfonnatics seeks to organize tremendous volumes of biological
data into comprehensible information, which can be used to derive useful
knowledge" (Spec. 1: 12-13). "A common problem for BLAST and other
search tools known in the art is that the query sequence is limited. If the
query sequence length is larger than around a few thousand nucleotides, the
search tool will be unacceptably time consuming" (Spec. 1 :21-23).
DNA spectral analysis offers an approach to
systematically tackle the problem of deriving useful
information from DNA sequence data. Generally, DNA spectral
analysis involves an identification of the occurrences of each
nucleotide base in a DNA sequence as an individual digital
signal, and transforming each of the four different nucleotide
signals into a frequency domain. The magnitude of a frequency
component can then be used to reveal how strongly a nucleotide
base pattern is repeated at that frequency. A larger
magnitude/value usually indicates a stronger presence of the
repetition.
(Spec. 1 :29 to 2:5).
The Claims
Claims 1-7, 9-13, 15, and 16 are on appeal. Claim 1 is representative
and reads as follows:
1. A method for designing a test kit for diagnosing genetic
diseases, the method comprising:
with one or more processors, retrieving a plurality of
sequences of nucleotides from a DNA database, each of the
plurality of sequences corresponding to a genetic disease;
with the one or more processors, calculating a density
value for each retrieved sequence of nucleotides by calculating:
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F(w)F*(w)
2n
where w is angular frequency, F(w) is a Fourier
transform of discrete elements over an infinite number of
elements and F!_(w) is a complex conjugate of F(w);
with the one or more processors, storing the calculated
density values in a DNA spectrogram database;
with the one or more processors, receiving an input DNA
query sequence derived from a disease sample;
with the one or more processors, calculating a query
sequence density value for said input DNA query sequence;
with the one or more processors, calculating a difference
between the calculated query sequence density value and each
of the calculated density values in the DNA spectrogram
database;
with the one or more processors, selecting a first group of
nucleotide sequences, from the DNA spectrogram database that
have density values within a predetermined density value range
of the calculated query sequence density value based on the
calculated differences; and
with the one or more processors, providing to an operator
a list of the genetic diseases associated with each of the
nucleotide sequences within the first group.
The Rejection
The Examiner rejected claims 1-7, 9-13, 15, and 16 under 35 U.S.C.
§ 101 (Final Act. 3--4).
The Examiner finds that the claims on appeal are directed to "a
judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract
idea) without including additional elements that are sufficient to amount to
significantly more than the judicial exception itself' (Ans. 2). The Examiner
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finds that the claims are "directed to a purely abstract process involving only
the performance of a series [ ofJ mathematical/ algorithmic operations" ( Ans.
3). The Examiner also finds the "recited processor only requires routine
computer functions" (Ans. 2).
Appellants contend "claim 1 provides a solution to the problem that a
large query sequence length results in an unacceptably long search time" and
therefore "[ c ]laim 1 thus improves the technical functioning of the system
and thus recites patent-eligible subject matter" (App. Br. 8-9).
We apply the test set out in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66 (2012), based on the two-step
Alice framework. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347,
2355 (2014).
In Alice step one, we ask whether the claims are directed to a patent
ineligible concept, such as an abstract idea. Alice, 134 S.Ct. at 2355; Mayo,
566 U.S. at 75-77; Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
13 71, 13 7 5 (Fed. Cir. 2015). While method claims are generally eligible
subject matter, method claims that are directed only to abstract ideas and/or
natural phenomena are patent ineligible concepts. Ariosa, 788 F.3d at 1376.
In Alice step two, we examine the elements of the claims to determine
whether they contain an inventive concept sufficient to transform the
claimed naturally occurring phenomena into a patent-eligible application.
Alice, 134 S.Ct. at 2355 (citing Mayo, 566 U.S. at 71-72).
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Application 13/129,412
Alice Step One
Claim 1 is directed to an abstract idea. In particular, the recited step
of "calculating a density value for each retrieved sequence of nucleotides by
calculating:
F(w)F*(w)
2n
where w is angular frequency, F(w) is a Fourier transform of discrete
elements over an infinite number of elements and F!._( w) is a complex
conjugate of F(w)" involves categorizing and analyzing information.
Information as such is an intangible .... Accordingly, we have
treated collecting information, including when limited to
particular content (which does not change its character as
information), as within the realm of abstract ideas .... In a
similar vein, we 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.
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016) (internal citations omitted)) Additionally, the Federal Circuit in
Electric Power Group stated that the "advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions" (id. at 1354). Here, Appellants
acknowledge the advancement is the process of analyzing information,
stating "DNA spectral analysis offers an approach to systematically tackle
the problem of deriving useful information from DNA sequence data" (Spec.
1:29-30).
In Digitech, the Federal Circuit stated that"[ w ]ithout additional
limitations, a process that employs mathematical algorithms to manipulate
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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."' Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Here,
the claimed process employs mathematical algorithms to manipulate existing
DNA sequence information to generate additional information and therefore
is not patent eligible.
Moreover, the calculating step is the type of work that is equivalent to
human mental work. As the Federal Circuit explained, "methods which can
be performed mentally, or which are the equivalent of human mental work,
are unpatentable abstract ideas ------the 'basic tools of scientific and
technological work' that are open to all." CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (citing Gottschalk v.
Benson, 409 U.S. 63 (1972)).
This case is distinguishable from cases like Diamond v. Diehr, 450
U.S. 175 (1981), because in Diehr an algorithm was used to control the
change in state of rubber in a curing process. In re Diehr, 602 F.2d 982,
983-84 (CCPA 1979). The algorithm calculated the Arrhenius equation for
the reaction time during the cure to determine when the compound was
cured and to automatically open the press when the cured state was
achieved. Id. By contrast, in the rejected claims, the recited algorithm is not
used to determine when a change of state is complete as it was in Diehr.
Rather, in the rejected claims, the algorithm is used to convert nucleotide
data to DNA spectrogram data, but no final physical step analogous to
opening the press after curing is present. Instead, the final "providing" step
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in the instant claims "tell[ s] the relevant audience about the laws while
trusting them to use those laws appropriately where they are relevant to their
decisionmaking." Mayo, 566 U.S. at 78. Thus, the algorithm does not
determine when the change of state is complete and perform a manipulative
step based on it as in Diehr.
Because the claims are directed to an abstract idea, we tum to the
second step of the Alice framework.
Alice Step Two
In Alice step two, we examine the elements of the claims to determine
whether they contain an inventive concept sufficient to transform the
claimed abstract idea into a patent-eligible application. Alice, 134 S.Ct. at
2355 (quoting Mayo, 566 U.S. at 71-72). We must consider the elements of
the claims both individually and as an ordered combination to determine
whether the additional elements transform the nature of the claims into a
patent-eligible concept. Ariosa, 788 F.3d at 1375.
The Specification acknowledges the "invention may be implemented
in any suitable form including hardware, software, firmware or any
combination of these" (Spec. 9:20-21 ). Thus, the Specification
acknowledges that data analysis on computers is routine and conventional.
The evidence of record supports the position that the claims do not add
something "significantly more" to the abstract idea. Instead, the evidence
shows that the additional elements in the claims ( e.g., using processors to
retrieve, calculate, store, and further analyze sequence data) are
conventional, routine, and well-known. We conclude that the method claim
does not result in an inventive concept that transforms the abstract idea
described above into a patentable invention.
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Appellants contend "claim 1 provides a solution to the problem that a
large query sequence length results in an unacceptably long search time ...
This allows for a large query sequence length to be processed in a reasonable
amount of time" (App. Br. 8-9). Appellants analogize this fact pattern to
claim 2 in Example 36 of the USPTO "Subject Matter Eligibility Examples:
Business Methods" (Dec. 15, 2016), 3 where the guidelines found "the
claimed solution here is necessarily rooted in computer technology to
address a problem specifically arising in the realm of computer vision
systems" (App. Br. 10, citing USPTO examples at 16).
We find this argument unpersuasive because the calculating steps in
the rejected claim 1 are directed to an abstract mathematical approach to
data analysis that is applied to known associations between particular
sequences and genetic diseases. There is no improvement to the computer
itself. "'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."' Digitech, 758 F.3d at 1351.
Similar to the claims in Electric Power Group, these steps are directed
to data analysis and mathematical calculations, because they transform the
nucleotide sequence data to another form without applying the resulting data
further to the method to alter anything other than data for use in comparison
of data. That is, the calculation of the density values to generate a
spectrogram database does not change anything about how the computer
processor itself operates, nor is anything physical in the computer processor
altered by the claimed method. Rather the instant claims focus on particular
3 See https ://www. uspto. gov/ sites/ default/files/ documents/ieg-bus-meth-exs-
dec2016.pdf.
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mathematical operations for reformulating nucleotide sequence data into a
new form and using this form for database analysis. Claim 1 uses "certain
information, analyzing it using mathematical techniques, and reporting or
displaying the results of the analysis. That is all abstract." SAP America,
Inc. v. Investpic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
We do not dispute that the use of mathematical operations in this case
may be "a positive and valuable contribution to science. But even such
valuable contributions can fall short of statutory patentable subject matter, as
it does here." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
13 80 (Fed. Cir. 2015). We note that even the limitation to "diagnosing
genetic diseases" does not rescue the claim from being abstract because
"limitation of the claims to a particular field of information ... does not
move the claims out of the realm of abstract ideas." SAP, 898 F.3d at 1169.
Appellants contend "both McRO [Inc. v. Bandai Namco Games Am.,
837 F.3d 1299 (Fed. Cir. 2016)] and PTO's November 2, 2016 Guidance
show that the claims recite patent-eligible subject matter" and that "the
Office Action has overgeneralized the claims" (App. Br. 11-12). Appellants
similarly contend "both Bascom Global [Internet Services v. AT&T Mobility,
827 F.3d 1341 (Fed. Cir. 2016)] and PTO's November 2, 2016 Guidance
show that the claims recite patent-eligible subject matter" (App. Br. 12).
Appellants also contend that "the PTO issued additional guidance regarding
35 U.S.C. § 101 based on the Federal Circuit's decision in Enfish, LLC v.
Microsoft Corp. [822 F.3d 1327] (Fed. Cir. 2016). It is respectfully
submitted that the PTO's guidance show that the claims recite patent-eligible
subject matter" (App. Br. 13).
We recognize, but find unpersuasive, Appellants' reliance on the
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Federal Circuit decisions in McRO, Bascom, and Enfzsh.
The claims in McRO were drawn to automation of the operation of a
computer at a task of lip reading, where the method "uses a combined order
of specific rules that renders information into a specific format that is then
used and applied to create desired results: a sequence of synchronized,
animated characters." See McRO, 837 F.3d at 1315. Unlike McRO,
Appellants have not demonstrated an improvement in the operation of the
computer itself, nor do Appellants create any structure such as an animated
character, but rather Appellants rely on calculations using a particular
algorithm to detect the presence of particular sequence information by
converting sequence data into a spectrogram database (see Spec. 2:24--25).
The algorithm is an abstract idea that involves data transformation. "[T]he
focus of the claims is not a physical-realm improvement but an improvement
in wholly abstract ideas-the selection and mathematical analysis of
information, followed by reporting or display of the results." SAP, 898 F.3d
at 1168.
Appellants do not argue the invention is a software-based invention
that improves the performance of the computer system itself. Thus, this
case is unlike Bascom, whose installation of an Internet content filter at a
particular network location was "a technical improvement over prior art
ways of filtering such content." Bascom, 827 F.3d at 1350. Bascom's
arrangement advantageously allowed the Internet content filter to have "both
the benefits of a filter on a local computer and the benefits of a filter on the
ISP server" and "to give users the ability to customize filtering for their
individual network accounts" (id. at 1350, 1352). Appellants do not identify
a technical improvement that impacts the processor performing the analysis
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recited in claim 1 on appeal.
Enfzsh explains that "the first step in the Alice inquiry in this case asks
whether the focus of the claims is on the specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
'abstract idea' for which computers are invoked merely as a tool." Enfzsh,
822 F.3d at 1335-36. Applied to claim 1, the method does not teach any
improvement in computer capabilities, or indeed, any technical improvement
in a computer processor, but rather "represent[ s] an improvement over
manual DNA pattern analysis techniques, which aim at identifying DNA
patterns serving as biological markers related to important biological
processes" (Spec. 2:7-9).
Appellant contends "that it should be considered that the claims of the
present application do not unduly preempt the field" because claim 1 's
"specific features act to confine the claim to a particular, useful application,
and do not unduly preempt the field" (App. Br. 16-17).
While preemption is a concern underlying the judicial exceptions, it is
not a stand-alone test for determining eligibility. Rapid Litig. Mgmt. v.
CellzDirect, Inc., 827 F.3d 1042, 1052, (Fed. Cir. 2016). "[W]e have
consistently held that claims that are otherwise directed to patent-ineligible
subject matter cannot be saved by arguing the absence of complete
preemption." Return Mail, Inc. v. United States Postal Service, 868 F.3d
1350, 1370 (Fed. Cir. 2017).
The final step of the claim in which the information is provided to
operator is also insufficient to confer eligibility to otherwise ineligible
subject. The act of providing information to an operator is routine and
conventional and simply reads on a mental step of informing an operator
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without any physical transformative step.
We therefore conclude that all of the claims on appeal are directed to
patent-ineligible subject matter.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. § 101
as being directed to non-statutory subject matter. Pursuant to 37 C.F.R.
§ 4I.37(c)(l), we also affirm the rejection of claims 2-7, 9-13, 15, and 16
as being directed to non-statutory subject matter as these claims were not
argued separately.
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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