Ex Parte Shioyama et al

Patent Trial and Appeal Board

Oct 18, 2017

13217338 (P.T.A.B. Oct. 18, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/217,338 08/25/2011 Takahiro SHIOYAMA Q126273 5848
65565 7590
SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
EXAMINER
LIN, JERRY
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
10/20/2017 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):
SUGHRUE265550@SUGHRUE.COM
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAHIRO SHIOYAMA, AKANE SUZUKI,
and SUNAO TAKEDA
Appeal 2016-001637
Application 13/217,338
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS, and RYAN H. FLAX
DEMETRA J. MILLS, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134. The Examiner has rejected
the claims as directed to non-statutory subject matter. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse this rejection.
Appeal 2016-001637
Application 13/217,338
STATEMENT OF CASE
The following claim is representative.
1. A cell analyzer comprising:
a cytometric device which measures cells that are nuclear stained;
a display which displays a histogram of a fluorescence intensity by
using a result of the measurement by the cytometric device; and
a computer comprising at least one processor configured to obtain a
number of strong area cells that are distributed in an area where the
fluorescence intensity is stronger than normal cells, and determine a
malignancy grade of cancer using the number of strong-area cells and the
histogram.
Grounds of Rejection
Claims 1—8 are rejected under 35 U.S.C. §101 because the claimed
invention is directed to non-statutory subject matter.
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Final Action at
pages 2-4.
PRINCIPFES OF FAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
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Application 13/217,338
In analyzing patent eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to “first determine whether the claims at issue
are directed to a patent-ineligible concept.” Alice Corp. Pty Ltd. v. CLS
Bank Int’l, 134 S. Ct. 2347, 2355 (2014). If this threshold is met, we move
to a second step of the inquiry and “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., 132 S. Ct. 1289, 1297 (2012); see also “Guidance For Determining
Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature,
Natural Phenomena, & Natural Products,” (Guidance) issued by the U.S.
Patent and Trademark Office, March 2014.
Under step one, the court found that the claims were directed to the
abstract idea of “classifying and storing digital images in an
organized manner.” Id. at 613. Also under step one, the court
found that the claims were not directed to a specific improvement
in computer functionality, but instead were directed to the “use of
conventional or generic technology in a nascent, but well-known
environment, without any claim that the invention reflected] an
inventive solution to any problem presented by combining the
two.” Id. at 612. Under step two, the court found that the claims
did not recite any limitations that when considered individually
and as an ordered combination transformed the abstract idea into a
patent-eligible application of that idea. Instead, the recited
components and functions were well-understood, routine,
conventional activities previously known in the industry. See id. at
613—14. The components were described in “vague, functional”
terms that were insufficient to confer eligibility and failed to
provide the requisite details to implement the claimed abstract
idea. Id. at 615.
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Appeal 2016-001637
Application 13/217,338
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1296
(2016).
Lack of Patentable Subject Matter Rejection
The Examiner finds that:
The claimed invention is directed to non-statutory subject matter
because the claims as a whole, considering all claim elements both
individually and in combination, do not amount to significantly
more than an abstract idea. The claims are directed to the abstract
idea of determining the malignancy of a sample by analyzing a
histogram. The additional elements or combination of elements in
the claims other than the abstract idea per se amounts to no more
than recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.
In addition, the instant claims require steps of using a cytometric
device. However, the steps of using a cytometric device are data
gathering steps, and to not impart meaningful limitations on the
abstract idea.
Final Act. 2—3.
Appellants contend that:
The continued rejection isprima facie deficient because the
rejection does not set forth objective evidence establishing that
extracting determining the malignancy of a sample by analyzing a
histogram is routine and conventional, namely a building block of
human ingenuity. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.
Ct. 2347, 2354-55 (2014) quoting Mayo at slip op. 4, 20. Rather,
the rejection amounts to a conclusory statement unsupported by
any objective evidence or citation that determining the malignancy
of a sample by analyzing a histogram is routine and conventional.
See Ex Parte Poisson (PTAB February 26, 2015), Appeal No.
2012-011084 at 5 (“Instead, the Examiner merely expresses an
opinion that ‘a set of rules qualifies as an abstract idea.’ Yet,
absent supporting evidence in the record of which there is none,
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Appeal 2016-001637
Application 13/217,338
the Examiner’s opinion is an inadequate finding of fact on which
to base the Alice analysis ... The PTO bears the initial burden of
establishing a prima facie case of patent-ineligible subject matter
under 35 U.S.C. § 101. Because the facts and evidence do not
support the finding that claim 1 is ‘an attempt to claim a new set of
rules for playing a card game’ and therefore, necessarily, is an
abstract idea, a prima facie case of patent-ineligible subject matter
under 35 U.S.C. § 101 has not been established in the first instance
by a preponderance of the evidence.’”).
Reply Br. 4—5.
ANALYSIS
We do not find that the Examiner has provided evidence to support a
prima facie case of lack of patentable subject matter. We provide the
following additional comment on the Examiner’s determinations set forth in
the Final Rejection and Answer.
It has been established that “while a claim drawn to a fundamental
principle”—i.e., a law of nature, natural phenomenon, or abstract idea—“is
unpatentable, ‘an application of a law of nature or mathematical formula to a
known structure or process may well be deserving of patent protection.’”
Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010). The key issue for
patentability, then, at least on the present facts, is whether a claim is drawn
to a fundamental principle or an application of a fundamental principle.
Prometheus Labs., Inc. v. Mayo Collaborative Servs., 581 F.3d 1336, 1342
(Fed. Cir. 2009); see also, Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1299 (2012). The Supreme Court has also made clear
that the patent eligibility of a claim as a whole should not be based on
whether selected limitations constitute patent-eligible subject matter. See
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Appeal 2016-001637
Application 13/217,338
Bilski v. Kappos, 130 S. Ct. 3218, 3230 (2010), (citing Diehr, 450 U.S. at
185; Parker v. Flook, 437 U.S. 584, 594 (1978)).
Claim 1- Step One
Taking up the first step of the patent-eligibility analysis, we find that
the Examiner has established that claim 1 is directed to an abstract idea.
Looking to the Specification to enlighten us as to the claimed invention, as
did the Federal Circuit in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016), we find, as did the Examiner, that the Specification
discloses and the claims recite a conventional cell analyzer. See, e.g., Spec.
2; Final Act. 6. Additionally, however, the Examiner finds that a cell
analyzer with an ability to determine the malignancy grade of cancer does
not amount to significantly more than an abstract idea. Final Act. 6.
The present claims are directed to the abstract idea of configuring a
conventional processor “to obtain a number of strong area cells that are
distributed in an area where the fluorescence intensity is stronger than
normal cells, and determine a malignancy grade of cancer using the number
of strong-area cells and the histogram. In particular, the Specification, page
16, describes that, “the determination is performed by using the ratio (S/A)
of the strong-area cell number S to the total cell number A. The
Specification, page 15, describes that
the number S of strong-area cells which are distributed in an
area where the fluorescence intensity is stronger than normal cells
is obtained (S23). In Fig. 7, the number of cells which are
distributed in an area R indicated in the right side of PF [final
peak] is obtained. Furthermore, the total cell number A in the
histogram of the fluorescence intensity is obtained (S24). In this
case, a ratio (S/A) of the strong-area cell number S to the total cell
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Application 13/217,338
number A is compared with a threshold TH to obtain the
malignancy grade, and the 10 malignancy grade is output on the
display device of the computer 7 or by a printer which is not
shown (S25).
Appellants argue that there is “something more” (than a mere abstract
idea) to their claimed invention, contending:
that the claims amount to significantly more than a mere
determination of a malignancy grade of cancer. Specifically, the
determination of cancer malignancy is based on “a histogram of a
fluorescence intensity” and “a number of strong-area cells that are
distributed in an area where the fluorescence intensity is stronger
than normal cells.”
App. Br. 15.
We are persuaded by Appellants’ argument that the Examiner’s
patent-eligibility rejection is not further supported by sufficient objective
evidence that the claimed steps of determining the malignancy grade of a
sample by obtaining a number of strong area cells that are distributed in an
area where the fluorescence intensity is stronger than normal cells, and
determining the malignancy grade using the number of strong-area cells and
the histogram, are routine and conventional. App. Br. 10. In other words,
the Examiner has not provided evidence that the abstract idea claim steps are
routine and conventional.
Based on the balance of the evidence, the patent-eligibility rejection is
reversed.
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Application 13/217,338
CONCLUSION OF LAW
The lack of patentable subject matter rejection is reversed.
REVERSED
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