Ex Parte Seul et al

Patent Trial and Appeal Board

Jun 6, 2018

13959408 (P.T.A.B. Jun. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/959,408 08/05/2013
93599 7590
Eric P. Mirabel, JD, LLM
3783 Darcus Street
Houston, TX 77005
06/08/2018
FIRST NAMED INVENTOR
Michael Seu!
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.
BIOINV-EXCHNGE 1000
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/08/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
emirabel@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SEUL and ANDREAS E. GOCKSCH
Appeal2017-001979
Application 13/959,408
Technology Center 3600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Bioinventors &
Entrepreneurs Network, LLC. App. Br. 3. Bioinventors & Entrepreneurs
Network, LLC is the Applicant for the instant patent application. See Bib.
Data Sheet.
Appeal2017-001979
Application 13/959,408
STATEMENT OF THE CASE
Appellants' invention fulfills a request for perishable inventory having
unknown attributes. See generally Abstract; Spec. i-f 2. According to the
Specification, perishable items with at least partially unknown attribute
profiles are reserved from a supplier. Spec. i-f 10. A laboratory performs
tests to determine values of the reserved partially unknown attribute profiles.
Spec. i-fi-110, 23. For example, the laboratory determines the presence or
absence of one or more antigens in a blood sample. Spec. i-f 42
Claim 1, reproduced below, is illustrative:
1. A method of operating an inventory exchange acting as
an intermediary between a blood or blood products supplier and
a blood or blood products requester to enhance clinical value of,
and to assign to the requester, at least one item of blood
inventory, the method comprising:
reserving, by the exchange, a set of items from the
supplier predicted, according to a predetermined probability by
the exchange, to contain items having desired antigen profiles,
wherein the reserving comprises giving exclusive control to the
exchange by the supplier to acquire or unreserve any of the
reserved set of items;
storing the data records associated with the reserved set
of items in a memory of a database of the inventory exchange
system;
determining which items of the reserved set of items have
the desired antigen profiles by:
performing a physical test for each item from the
reserved set of items, in order to determine which items of the
reserved set of items have the desired antigen profiles, defined
as desired items;
receiving, by the exchange, results from the physical test
for each item identifying the respective antigen profiles;
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Application 13/959,408
storing, in a memory, which of the reserved set of items
are desired items having the desired antigen profiles, thereby
creating a virtual inventory of desired items;
unreserving, by the exchange, items determined not to
have the desired antigen profiles, wherein the unreserving
comprises releasing the exclusive control given to the exchange
of the undesired items;
receiving a request from a requester for an item having a
particular desired antigen profile; and
matching the request with desired items in the virtual
inventory wherein the matching comprises determining
compatibility between the requested antigen profile and the
desired items' antigen profile according to a predefined
compatibility criterion.
THE REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Final Act. 2-7. 2
FINDINGS AND CONTENTIONS
The Examiner concludes that the claims constitute a method of
(a) comparing new and stored information; (b) using rules to identify
options; and ( c) using categories to organize, store, and transmit data and,
therefore, are directed to a judicial exception, namely an abstract idea. Final
Act. 2-3. The Examiner further concludes the claims do not include
additional elements that amount to significantly more than the abstract idea.
2 Throughout this opinion, we refer to (1) the Final Rejection mailed
February 2, 2016 ("Final Act."); (2) the Appeal Brief filed July 6, 2016
("App. Br."); (3) the Examiner's Answer mailed November 18, 2016
("Ans."); and (4) the Reply Brief filed November 25, 2016 ("Reply Br.").
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Id. at 3-7. Accordingly, the Examiner ultimately concludes the claims are
ineligible under§ 101. Id. at 2-7.
Appellants argue that the claimed invention is not directed to an
abstract idea. App. Br. 14--15; Reply Br. 1-2. 3 Appellants further argue the
elements of Appellants' claims amount to significantly more than an abstract
idea. App. Br. 15-16; Reply Br. 2-3. According to Appellants, a machine
is required, and a transformation of matter occurs, when an antigen profile of
blood is determined by a physical test of claims 1, 8, and 10. App. Br. 15;
Reply Br. 2-3.
ISSUE
Has the Examiner erred in rejecting claims 1-20 by concluding that
they are directed to ineligible subject matter under § 101? This issue turns
on whether the claimed invention is directed to a patent-ineligible abstract
idea and, if so, whether the claim's elements---considered individually and
as an ordered combination-transform the nature of the claim into a patent-
eligible application of that abstract idea.
ANALYSIS
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be
eligible under 35 U.S.C. § 101, the subject matter of an invention must be a
"new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. There is no
3 Although Appellants' Reply Brief (consisting of four pages) is not
paginated (unlike the Appeal Brief), we nonetheless cite specific pages of
the Reply Brief in the order that they appear in the record.
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Application 13/959,408
dispute in this Appeal that the pending claims are each directed to one of
these categories.
The Supreme Court has held there are implicit exceptions to the
categories of patentable subject matter identified in 35 U.S.C. § 101,
including laws of nature, natural phenomena, and abstract ideas. Alice Corp.
Proprietary Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). The Court
has "set forth a framework for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Id. (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The evaluation
follows the two-step test articulated in Alice. First, we determine whether
the claims are directed to a patent-ineligible concept: laws of nature, natural
phenomena, and abstract ideas. Id. at 2354--55. If so, we then proceed to
the second step and examine the recited elements-both individually and as
an ordered combination-to determine whether the claims contain an
"inventive concept" sufficient to transform the claimed abstract idea into a
patent-eligible application. Id. at 2357.
Alice Step One
Applying Alice step one, we are not persuaded of error in the
Examiner's conclusion that the claimed invention is directed to an abstract
idea. Here, claim 1 requires six distinct steps: (a) reserving, by an exchange,
a set of items from a supplier; (b) performing a physical test for each item
from the reserved set of items to determine which items of the reserved set
of items have a desired antigen profile; ( c) receiving results from the
physical test; ( d) storing which of the reserved sets of items have a desired
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antigen profile; ( e) unreserving items determined not to have the desired
antigen profiles; and (f) receiving and matching a request for an item having
a particular desired antigen profile.
At the outset, we note steps (b) and ( c) (hereinafter "the antigen
limitation") are strikingly similar to claim 1 of U.S. Patent No. 6,355,623
("the '623 patent") in Mayo that the Supreme Court determined was patent
ineligible. Similar to the "determining" step of the '623 patent's claim 1,
which determines a subject's level of 6-thioguanine, the antigen limitation
determines which reserved items have desired antigen profiles. Compare
Mayo, 566 U.S. at 74--75, with App. Br. 17 (Claims App'x). And, analogous
to the Supreme Court's reasoning (Mayo, 566 U.S. at 77), the antigen
profiles of the antigen limitation exist in principle apart from any human
action, and thus are a law of nature. Cf id. at 77; See also Cleveland Clinic
Found. v. True Health Diagnostics LLC, 859 F.3d 1352, 1362 (Fed. Cir.
2017); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377
(Fed. Cir. 2015).
Turning to the rejection, we agree with the Examiner that the claims
are directed to an abstract idea, including an "idea of itself' that our
reviewing court has found abstract: A process for comparing new and stored
information, and using rules to identify options, SmartGene Inc. v. Advanced
Biological Labs. SA, 555 F. App'x 950 (Fed. Cir. 2014) (unpublished); and
using categories to organize, store, and transmit information, Cyberfone Sys.,
LLC v. CNN Interactive Grp., 558 F. App'x 988 (Fed. Cir. 2014)
(unpublished). Final Act. 2-3. Appellants do not squarely address-let
alone persuasively rebut-the Examiner's specific findings and conclusions
in this regard.
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Nor do we find availing Appellants' contention that there is a lack of
monopolization or pre-emption danger with respect to the basic tools of
scientific and technological work in all fields. App. Br. 14. "While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa, 788
F.3d at 1379; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362---63 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701, 193 (2015) ("[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). And, "[ w ]here 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." Ariosa,
788 F.3d at 1379.
Accordingly, we find the claims are directed to an abstract idea under
the first step of Alice.
Alice Step Two
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea under the first step of Alice, 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." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 78). The Supreme Court describes the
second step of this analysis as "a search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
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patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (quoting Mayo, 566 U.S. at 72-73).
As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 714 (2014) (quoting Bilski v. Kappas, 561 U.S. 593, 594
(2010)), the "machine-or-transformation" test, although not the only test, can
nevertheless provide a "'useful clue' in the second step of the Alice
framework." Under the "machine-or-transformation" test, a claimed process
is patent-eligible under § 101 if it: (1) is tied to a particular machine or
apparatus, or (2) transforms a particular article into a different state or thing.
In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), aff'd sub nom. Bilski, 561
U.S. 593. According to the Federal Circuit, the transformation must
( 1) transform an underlying article from one state to a different state or
thing, and (2) be central to the purpose of Appellants' claimed process. In re
Bilski, 545 F.3d 943, 962.
According to Appellants, there are only two types of tests the antigen
limitation's physical test can be: serological or genetic-level testing. See
Reply Br. 3. Appellants further assert both tests use machines or
transformations of matter that satisfy the machine-or-transformation test.
Reply Br. 2-3. But even assuming that the antigen limitation's physical test
is tied to a particular machine or involves a transformation to satisfy the
machine-or-transformation test as Appellants contend, it is well settled that
the machine-or-transformation test, while an "investigative tool" and a
"useful and important clue" to determining eligibility, is not the only test.
Bilski, 561 U.S. at 604. Appellants do not purport to have invented
serological or genetic-level testing, or a new inventive test that determines
the desired antigen profiles of the antigen limitation. Thus, by Appellants'
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own admission on the third page of the Reply Brief, the antigen limitation is
well-understood, routine, and conventional activity previously engaged in by
scientists who work in the field. Such well-understood, routine, and
conventional activities do not add significantly more to the recited abstract
idea even assuming, without deciding, that these activities are tied to a
particular machine or involve a transformation. See Bilski, 561 U.S. at 604.
Nor do we find availing Appellants' contention that delivering items
to a third party requester in treating patients, as recited in claims 8, 10, and
20, is not insignificant post-solution activity because the delivery is a
physical step not performed on a computer. App. Br. 16. Leaving aside the
fact that Appellants cite no authority for this proposition, extra-solution
activity need not be performed by a computer to be insignificant. See e.g.,
In re Brown, 645 F. App'x 1014, 1016 (Fed. Cir. 2016) (unpublished)
(finding that using scissors to cut hair is insignificant post-solution activity).
The Examiner finds, and we agree, that "the delivery/sending of blood is
insignificant, post-solution activity and does not therefore make the
invention statutory." Final Act. 13.
For the foregoing reasons, then, the recited elements---considered
both individually and as an ordered combination---do not contain an
"inventive concept" sufficient to transform the claimed abstract idea
discussed above into a patent-eligible application. Therefore, we are not
persuaded that the Examiner erred in rejecting claims 1-20 under § 101.
CONCLUSION
The Examiner did not err in rejecting claims 1-20 under§ 101.
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DECISION
The Examiner's decision to reject claims 1-20 is affirmed.
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.
§ 41.50(±).
AFFIRMED
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