Ex Parte Li et al

Patent Trial and Appeal Board

Nov 30, 2018

13629517 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/629,517 09/27/2012
31824 7590 12/04/2018
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Xiang Li
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.
066609-0111 9598
EXAMINER
ZEMAN, MARY K
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
mweipdocket@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIANG LI, HONG LU, HSIAOMEI LU, KELLY GONZALEZ,
MELISSA PARRA, WENQI ZENG, ELIZABETH CHAO, and
CHARLES DUNLOP
Appeal2017-010059
Application 13/629,517
Technology Center 1600
Before DONALD E. ADAMS, MICHAEL J. FITZPATRICK, and
JOHN G. NEW, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge FITZPATRICK.
Opinion concurring filed by Administrative Patent Judge ADAMS.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Xiang Li, Hong Lu, Hsiaomei Lu, Kelly Gonzalez, Melissa Parra,
Wenqi Zeng, Elizabeth Chao, and Charles Dunlop ("Appellants") 1 appeal
under 35 U.S.C. § 134(a) from a decision finally rejecting claims 1, 2, 4--14,
16-18, 20-22, 25, 27, and 29--36. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 The real party in interest is Ambry Genetics. App. Br. 2.
Appeal2017-010059
Application 13/629,517
STATEMENT OF THE CASE
The Specification
"Sequencing of a genome or portion thereof of individuals affected by
a disease or with a trait of interest may be performed to determine the cause
of common, complex traits." Spec. i-f2.
Appellants disclose a computer-implemented process that filters out
portions of the genome that do not play a role in the etiology of a particular
disease "in order to assist scientists and molecular diagnosticians to classify
human variants and ultimately identify the underlying mutation leading to
patients' genetic disease." Spec. ,rs.
The Rejected Claims
Claims 1, 2, 4--14, 16-18, 20-22, 25, 27, and 29--36 stand rejected.
Final Act. 1. Claim 1 is representative2 and reads as follows:
1. A computer-implemented method of forming, from
a master list of genetic variants, an index list comprising one or
more remaining variants relating to a condition in an individual,
compnsmg:
(1) receiving, from a client device and at a server, (a) a
selection of a Mendelian inheritance model based on a family
history of the individual, and (b) the family history; the model
2 Appellants do not argue the rejected claims separately. Accordingly, we
discuss below only claim 1 and group the other claims with claim 1. See 37
C.F.R. § 4I.37(c)(l)(iv).
2
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selected from the group consisting of autosomal dominant,
autosomal recessive, and sex-linked;
(2) by a processor, forming the master list of genetic
variants from a whole exome of the individual;
(3) removing from the master list (a) variants that are
present in unaffected controls below a first specified frequency;
(b) variants that are present in unaffected controls above a
second specified frequency; and ( c) variants that are present in
unaffected controls below a specified number of occurrences;
each of the specified frequencies and number being determined
by inputs to the processor;
( 4) removing from the master list variants that are in
intergenic regions;
( 5) removing from the master list deep intronic variants
that do not have corresponding records in a database containing
(a) known genetic variants and (b) disease conditions
corresponding to the known genetic variants;
( 6) removing from the master list synonymous variants
that do not have corresponding records in the database;
(7) after the removing of (3}-( 6), removing from the
master list variants that exist in an unaffected family member
and/or do not exist in an affected family member;
(8) after the removing of (7), removing from the master
list variants that are present in a normal control that is based on
exome data of at least one unaffected individual;
(9) after the removing of (8) and by the processor,
forming the index list with one or more remaining variants in
the master list, and identifying, by the processor and from the
database, a condition corresponding to the one or more
remaining variants of the index list; and
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(10) by the processor and to the client device having a
display, transmitting an indicator of the condition for visual
representation on the display.
Appeal Br. 25-26.
As summarized by the Examiner, claim 1 is "directed to obtaining a
master list of all exomic genetic variants from an individual, and through
correspondence with other sets of previously known data, removing
elements that match, until only unique elements remain." Final Act. 3.
The Appealed Rejection
The following rejection is before us for review: claims 1, 2, 4--14,
16-18, 20-22, 25, 27, and 29-36 as ineligible under the judicial exception to
35 U.S.C. § 101. Final Act. 2.
DISCUSSION
The Examiner rejected all pending claims under the judicial exception
to 35 U.S.C. § 101. Final Act. 2; see, e.g., Alice Corp. Pty. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2354 (2014) ("We have long held that this provision
[35 U.S.C. § 101] contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.").
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, we "first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355. This is
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sometimes referred to as step 2a. 3 If the claims are determined to be
directed to an ineligible concept in step 2a, then, in step 2b, we "consider the
elements of each claim both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 97 (2012)).
Pursuant to step 2a, the Examiner determined that the rejected claims
are directed to the abstract idea of "data manipulation" and, in particular,
"the abstract steps of analyzing genetic data, wherein information is
received, compared using computer system elements, certain matching data
is removed, and remaining genetic data is determined to be a contributing
factor to a disease." Final Act. 3.
Pursuant to step 2b, the Examiner found that the only non-abstract
features of claim 1 are non-specific computer systems ( e.g., "computer-" in
the preamble and "a client device" and "a server" in the body) and steps (1)
and (10) in which, respectively, data is received and displayed. Final Act. 7.
The Examiner invoked Alice's holding that "an instruction to apply [an]
abstract idea ... using some unspecified, generic computer ... is not
'enough' to transform an abstract idea into a patent-eligible invention."
3 Step 1 of Alice is determining whether the claims are directed to a
"process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' as recited in 35 U.S.C. § 101. The rejected
claims pass step 1, and step 1 is not at issue here.
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Alice Corp., 134 S. Ct. at 2360 (citation omitted); Final Act. 8. And the
Examiner found that steps (1) and (10) were well understood and
conventional in the art. Final Act. 7.
We have considered Appellants' arguments but find none of them
persuasive of error in the Examiner's rejection of claim 1.
Appellants' initial arguments appear to be from a different matter.
See Appeal Br. 14 ( quoting limitations that do not appear in the rejected
claims on appeal here).
With respect to step 2a, Appellants argue that "data manipulation" is
not a "valid judicial exception," not an abstract idea. Id. at 15. We are not
persuaded by Appellants' argument. The Federal Circuit has "recognize[d]
that defining the precise abstract idea of patent claims in many cases is far
from a 'straightforward' exercise." Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1150 (Fed. Cir. 2016) (quoting DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). However, "we
continue to 'treat[ ] analyzing information ... by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category."' Synopsys, 839 F.3d at 1146-47 (quoting Electric Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (citations
omitted)); see also Electric Power Grp., 830 F.3d at 1353 ("[C]ollecting
information, analyzing it, and displaying certain results of the collection and
analysis" "fall[ s] into a familiar class of claims 'directed to' a patent-
ineligible concept," that of the abstract idea). The Federal Circuit has
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recognized that "a claim for a new abstract idea is still an abstract idea."
Synopsys, 839 F.3d at 1151.
With respect to step 2b, Appellants argue: (1) the claims do not
preempt all ways to analyze genetic variants (Appeal Br. 18); (2) the Final
Action improperly generalizes the claims (id. at 20); (3) the claims provide a
specific improvement to the way computers operate (id. at 21 ); and ( 4) the
claims are directed to the field of computation biology (id. at 22). We are
not persuaded by Appellants' arguments.
With respect to step 2b, Appellants present multiple arguments. First,
they argue that the claims do not preempt all ways to analyze genetic
variants. Appeal Br. 18. But Appellants cannot overcome the§ 101
rejection by showing a lack of complete preemption. If they are to
overcome the rejection, it must be by showing that the rejection is not
warranted under the Mayo/Alice two-step test. See Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility .... Where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.").
Second, Appellants argue that the Final Action improperly generalizes
the claims and, as a result, fails to support the conclusion that the elements,
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in combination, are "well understood, routine, and conventional." Appeal
Br. 20. Appellants elaborate as follows:
The present claims recite more than merely receiving genetic
data, comparing biomarkers versus a reference, removing
matching data, and displaying an indicator of a condition.
Instead, the claims recite, inter alia, forming a master list with
particular variants from a whole exome of an individual,
removing the variants in a particular order based on at least six
specific and distinct criteria, and forming an index list with one
or more remaining variants. By generalizing the claim
recitations, the Office Action has failed to provide a reasoned
explanation regarding how the recited combination of ordered
steps is well-understood, routine, and conventional.
Id. This is the extent of Appellants' argument, which we do not find
persuasive.
The Examiner found that the only non-abstract features of claim 1 are
non-specific computer systems ( e.g., "computer-" in the preamble and "a
client device" and "a server" in the body) and steps (1) and (10) in which,
respectively, data is received and displayed. Final Act. 7. 4 Appellants do
not dispute that these features are well understood, routine, and
conventional. See Appeal Br. 20. They argue, however, that "the Office
Action has failed to provide a reasoned explanation regarding how the
recited combination of ordered steps is well-understood, routine, and
4 In step 2a, the Examiner found that steps (2) through (8) were abstract.
Final Act. 3.
8
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conventional." Id. (emphasis added). Put another way, Appellants argue
that claim 1 has not been shown to be patent ineligible because it has not
been shown to be well-understood, routine, and conventional, let alone
merely anticipated. This is not the law.
It is true that, in Alice step 2b, the elements of a claim must be
considered "both individually and 'as an ordered combination"' but that is
for purposes of "determin[ing] whether the additional [non-abstract]
elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355. During their individual
consideration, we ask whether the non-abstract elements themselves are
"well-understood, routine, [and] conventional." Id. at 2359. We do not ask
whether a claim as a whole is well-understood, routine, and conventional.
Id. at 2359--60.
Third, Appellants argue that the "claims are directed to a specific
improvement to the way computers operate." Appeal Br. 21 (citing Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
Appellants identify the purported improvement as follows: "By first
performing removing steps that do not apply information specific to the
individual, the efficiency of the processor or processing module is improved
during performance of subsequent steps that do apply information that is
specific to the individual." Id. at 22. We are not persuaded by this argument
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or Appellants' related argument that "the computing aspects [ of the claims]
provide improvements to the field of computational biology." See id. at 23.
In Enfzsh, the Federal Circuit held that claims directed to "[a] data
storage and retrieval system for a computer memory" were "not directed to
an abstract idea within the meaning of Alice." Enfish, 822 F.3d at 1336.
"Rather [(the Federal Circuit held)], they are directed to a specific
improvement to the way computers operate, embodied in the self-referential
table." Id. There is no aspect of the claims before us that corresponds to the
self-referential table in Enfish or that otherwise improves the way a
computer functions. Appellants' reliance on Enfish is misplaced.
In McRO, the Federal Circuit held that claims directed to "[a] method
for automatically animating lip synchronization and facial expression of
three-dimensional characters" were patent eligible because "[ t ]he claimed
process use[ d] 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." McRO, 837 F.3d at 1307,
1315. Thus, in McRO "[t]he claim use[d] the limited rules in a process
specifically designed to achieve an improved technological result in
conventional industry practice." Id. at 1316. In contrast, claim I merely
uses "a computer to accelerate an ineligible mental process[, which] does not
make that process patent-eligible." Bancorp Servs., L.L. C. v. Sun Life
Assurance Co., 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also FairWarning
IP, LLC v. Iatric Sys. Inc., 839 F.3d 1089,1093 ("[A]nalyzing information
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by steps people go through in their minds, or by mathematical algorithms,
without more," are "essentially mental processes within the abstract-idea
category").
Neither Enfzsh nor McRO supports Appellants' patent eligibility
arguments.
We have considered all of Appellants' arguments but none of them
persuades us the Examiner erred in rejecting claims 1, 2, 4--14, 16-18, 20-
22, 25, 27, and 29-36 as patent ineligible under the judicial exception to 35
U.S.C. § 101.
CONCLUSION
For the reasons discussed, we affirm the Examiner's rejection of all
claims on appeal.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
11
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIANG LI, HONG LU, HSIAOMEI LU,
KELLY GONZALEZ, MELISSA PARRA, WENQI ZENG,
ELIZABETH CHAO, and CHARLES DUNLOP
(APPLICANTS: AMBRY GENETICS)
Appeal2017-010059
Application 13/629,5175
Technology Center 1600
Before DONALD E. ADAMS, MICHAEL J. FITZPATRICK, and
JOHN G. NEW, Administrative Patent Judges.
ADAMS, Administrative Patent Judge, concurring.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 2, 4--14, 16-
18, 20-22, 25, 27, and 29-36 (App. Br. 6 4). Examiner entered a rejection
under 35 U.S.C. § 101. This Panel has jurisdiction under 35 U.S.C. § 6(b).
5 Appellants identify "Ambry Genetics" as the real party in interest (App.
Br. 2).
6 Appellants' February 23, 2017 Appeal Brief.
Appeal2017-010059
Application 13/629,517
STATEMENT OF THE CASE
Appellants disclose that "[a]spects of the subject technology relate to
computational biology, genetics, and clinical diagnostics" (Spec. ,r 1 ).
Claim 1 is representative and reproduced below:
1. A computer-implemented method of forming, from a master
list of genetic variants, an index list comprising one or more
remaining variants relating to a condition in an individual,
compnsmg:
(1) receiving, from a client device and at a server, (a) a
selection of a Mendelian inheritance model based on a family
history of the individual, and (b) the family history; the model
selected from the group consisting of autosomal dominant,
autosomal recessive, and sex-linked;
(2) by a processor, forming the master list of genetic variants
from a whole exome of the individual;
(3) removing from the master list (a) variants that are present in
unaffected controls below a first specified frequency; (b)
variants that are present in unaffected controls above a second
specified frequency; and ( c) variants that are present in
unaffected controls below a specified number of occurrences;
each of the specified frequencies and number being determined
by inputs to the processor;
( 4) removing from the master list variants that are in intergenic
reg10ns;
( 5) removing from the master list deep intronic variants that do
not have corresponding records in a database containing (a)
known genetic variants and (b) disease conditions
corresponding to the known genetic variants;
( 6) removing from the master list synonymous variants that do
not have corresponding records in the database;
(7) after the removing of (3)-( 6), removing from the master list
variants that exist in an unaffected family member and/or do not
exist in an affected family member;
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(8) after the removing of (7), removing from the master list
variants that are present in a normal control that is based on
exome data of at least one unaffected individual;
(9) after the removing of (8) and by the processor, forming the
index list with one or more remaining variants in the master list,
and identifying, by the processor and from the database, a
condition corresponding to the one or more remaining variants
of the index list; and
(10) by the processor and to the client device having a display,
transmitting an indicator of the condition for visual
representation on the display.
(App. Br. 25-26.)
Ground of rejection before this Panel for review:
Claims 1, 2, 4--14, 16-18, 20-22, 25, 27, and 29-36 stand rejected
under 35 U.S.C. § 101
ISSUE
Does the evidence of record support Examiner's finding that the
method of Appellants' claim 1 is directed to patent ineligible subject matter?
ANALYSIS
Appellants do not separately argue their claims. Therefore, claim 1,
reproduced above, is representative.
The scope of 35 U.S.C. § 101 "is subject to an implicit exception for
'laws of nature, natural phenomena, and abstract ideas,' which are not
patentable." Intellectual Ventures I LLC v. Capital One Financial Corp.,
850 F.3d 1332, 1338 (Fed. Cir. 2017) (citing Alice Corp. Pty. Ltd. v. CLS
Bankint'l., 134 S. Ct. 2347, 2355 (2014)).
To determine whether the exception applies ... a court must
determine: (1) whether the claim is directed to a patent-
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ineligible concept, i.e., a law of nature, a natural phenomenon,
or an abstract idea [(the "abstract idea" step)]; and if so, (2)
whether the elements of the claim, considered "both
individually and 'as an ordered combination,"' add enough to
"'transform the nature of the claim' into a patent-eligible
application [(the 'inventive concept' step)]."
Intellectual Ventures, 850 F.3d at 1338 (citing Alice Corp., 134 S. Ct. at
2355).
Applying the abstract idea step to Appellants' claim 1: There can be
no doubt that Appellants' claimed method is directed to a patent-ineligible
concept, specifically, an abstract idea (see Final Act. 7 3 (Appellants' claims
"are directed to the judicial exception of an abstract idea")). 8
Appellants' claimed method begins with pre-existing data,
specifically, step (1 ): The receipt of information (see App. Br. 25).
"[C]ollecting information, including when limited to particular content
(which does not change its character as information), [is] within the realm of
abstract ideas." Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1353-1354 (Fed. Cir. 2016).
Appellants' claimed method then recites a variety of data
manipulation steps, specifically, steps (2}-(9) (see id. at 25-26). "Analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category." Electric Power Group, 830 F.3d at 1354; see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
7 Examiner's August 12, 2016 Final Office Action.
8 Examiner also finds that Appellants' claim 1 is directed to "an additional
judicial exception, a natural phenomenon" (Final Act. 6; see id. at 6-7).
4
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2011) ("The mere manipulation or reorganization of data ... does not satisfy
the transformation prong."); see also Ans. 10-11.
Appellants' claimed method concludes with the display of data,
specifically, step (10) (see id. at 26). "[M]erely presenting the results of
abstract processes of collecting and analyzing information, without more
... , is abstract as an ancillary part of such collection and analysis." Electric
Power Group, 830 F.3d at 1354.
Stated differently, without additional limitations, a process that
employs mathematical algorithms to manipulate existing information to
generation additional information for display 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 Techs., LLC v. Elecs. For Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014) (quoting Parker v. Flook, 437 U.S. 584,
595[] (1978) (internal quotations omitted)).
Applying the inventive concept step to Appellants' claim 1: Examiner
finds that when Appellants' claimed method is considered both individually
and as an ordered combination it does "not include additional elements that
are sufficient to amount to significantly more than the judicial exception[]"
(Final Act. 7). Specifically, Examiner finds that the steps of Appellants'
claimed invention are routine, well-understood and conventional steps of
data analysis and display in the field of Appellants' claimed invention (see
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Final Act. 7 (citing Ng9 and Challis 10); see generally Ans. 12-13).
Appellants do not dispute Examiner's findings based on Ng and Challis (see
generally App. Br. 19-20; see also Reply Br. 11 5-6).
Examiner further finds that Appellants' claim 1 "recite[s] the
additional element of nonspecific computer systems," i.e., a generic
computer, which is not sufficient to "transform an abstract idea into a patent-
eligible invention" (Final Act. 7-8). See Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1301 (2012) ("[S]imply
implementing a mathematical principle on a physical machine, namely a
computer, [is] not a patentable application of that principle."). As in Electric
Power Group, Appellants' claim 1 does "not require any nonconventional
computer, network, or display components, or even a 'non-conventional and
nongeneric arrangement of known, conventional pieces,' but merely call for
performance of the claimed information collection, analysis, and display
functions 'on a set of generic computer components' and display devices."
Electric Power Group, 830 F.3d at 1355 (citing Bascom Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir.
2016).
A difference exists between patent ineligible claim, as here, that
focuses "on asserted advances in uses to which existing computer
capabilities could be put" and patent eligible claims that focus "on a specific
9 Ng et al., Exome sequencing identifies the cause of a mendelian disorder,
42 NATURE GENETICS 30-35 (2010).
1° Challis et al., An integrative variant analysis suite for whole exome next-
generation sequencing data, 13 BMC BIOINFORMATICS 1-12 (2012).
11 Appellants' July 21, 2017 Reply Brief.
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improvement ... in how computers could carry out one of their basic
functions of storage and retrieval of data." Electric Power Group, 830 F.3d
at 1354 (discussing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016); see also Research Corp. Technologies Inc. v. Microsoft
Corp., 627 F.3d 859, 865 (Fed. Cir. 2010) ("higher quality halftone images
[ were produced] while using less processor power and memory space.").
Therefore, Appellants' contentions relating to Enfzsh and DDR Holdings,
LLC v. Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014) are not persuasive
(see App. Br. 14--15; cf Ans. 12 9--10 and 13). In contrast to Appellants'
claim 1, "the claims at issue [in Enfzsh] focused not on asserted advances in
uses to which existing computer capabilities could be put, but on a specific
improvement-a particular database technique-in how computers could
carry out one of their basic functions of storage and retrieval of data."
Electric Power Group, 830 F.3d at 1354. Further, as Appellants recognize,
in contrast to Appellants' claim 1, DDR Holdings, overcame "a problem
specifically arising in the realm of computer networks" (see App. Br. 15).
Similarly, Appellants' contentions regarding McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) are not persuasive (see
App. Br. 19 and 21). Unlike the claims on this record, "[t]he claims in
McRO were not directed to an abstract idea," to the contrary, "the claimed
improvement ... [was] allowing computers to produce 'accurate and
realistic lip synchronization and facial expressions in animated characters'
that previously could only be produced by human animators." Fair Warning
12 Examiner May 23, 2017 Answer.
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IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016)
(internal citation omitted)
For the reasons set forth above, Appellants' contention that claim 1 is
"not directed to ... an abstract idea," is not persuasive (see App. Br. 15-17;
see also Reply Br. 4 ("Claim 1 is not merely directed to collecting
information")).
Appellants' contentions regarding preemption are not persuasive (see
App. Br. 19; Reply Br. 6; cf Ans. 12). Although "preemption may signal
patent ineligible subject matter, 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 claims are deemed to
recite only patent-ineligible subject matter under the two-step Alice analysis,
as they are here, "preemption concerns are fully addressed and made moot."
Id.
Appellants' field of use contentions are not persuasive (see App. Br.
22-23 ("The Claims are Directed to the Field of Computational Biology")
(emphasis omitted); cf Ans. 14). See Bilski v. Kappas, 561 U.S. 593, 610-
11 (2010) ("[T]he prohibition against patenting abstract ideas 'cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity"')
(quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)); Intellectual
Ventures I LLC v. Erie Indent. Co., 850 F.3d 1315, 1328-29 (Fed. Cir. 2017)
("While limiting the index to XML tags certainly narrows the scope of the
claims, in this instance, it is simply akin to limiting an abstract idea to one
field of use or adding token post solution components that do not convert the
otherwise ineligible concept into an inventive concept.")
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Appeal2017-010059
Application 13/629,517
CONCLUSION
The evidence of record support Examiner's finding that the method of
Appellants' claim 1 is directed to patent ineligible subject matter.
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