Ex Parte Willmann et al

Patent Trial and Appeal Board

Apr 24, 2017

10936353 (P.T.A.B. Apr. 24, 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.
10/936,353 09/08/2004 Stefan Willmann 2923343-313000 8041
84331 7590 04/26/2017
MMWV TP T T C EXAMINER
7900 Westpark Drive, Suite A100
McLean, VA 22102
CLOW, LORI A
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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):
docketing @ mm w vlaw .com
cgmoore @ mmwvlaw. com
dwoodward @ mmwvlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFAN WILLMANN,
WALTER SCHMITT, and FRANCO FOIS
Appeal 2016-006743
Application 10/936,3531
Technology Center 1600
Before DONALD E. ADAMS, TAWEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 1—5 and 8—13
(App. Br. 1). Examiner entered a rejection under 35 U.S.C. § 101. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants’ disclosure “relates to a computer program for calculating
the pharmacokinetic and pharmacodynamic behaviour of chemical
1 Appellants identify the real party in interest as “Bayer Intellectual Property
GmbH” (App. Br. 1).
Appeal 2016-006743
Application 10/936,353
compounds in live organisms, for example in mammals, insects or plants”
(Spec. 1: 4—6). Claim 1 is representative and reproduced below:
1. A method for determining an interaction of one or more
active compounds administered to an organism with one or more
compartments of the organism using a computer program
consisting of individual modules with different functionalities,
said computer program comprising a compound module, an
organism module in a DEQ builder which automatically
generates a system of coupled DEQs, and a numerical solver
which solves the DEQs, said computer program further
comprising a hierarchical management of parameters comprised
in the individual modules with the different functionalities,
wherein the modules are administered from a database of objects,
said method comprising the following steps:
A) inputting or selecting from a compound database the one
or more active compounds in a model input parameter
window of a graphical user interface interconnected with
a compound module of a DEQ builder and one or more
characteristics thereof selected from the group consisting
of lipophilicity, solubility, protein binding, molecular
weight, molecular volume, pKa value in the case of acids
or bases, metabolic degradation rate and kinetic constants
of the compound’s active transporters and transmitting the
one or more characteristics to the compound module;
B) analyzing the one or more compounds with respect to the
one or more characteristics in the DEQ builder;
C) inputting or selecting an organism from a species database
in a model input parameter window of a graphical user
interface interconnected with an organism module of the
DEQ builder comprising physiological and anatomical
information which characterizes the organism and one or
more anatomical and physiological compartments which
form the organism;
D) selecting one or more anatomical and physiological
compartments of the organism in question in the DEQ
builder as follows:
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Application 10/936,353
i) in the case of mammals or insects, the selecting is
from the group consisting of lungs, peripheral
organs, blood vessels, arteries, veins, and blood
fluid; and
ii) in the case of plants, the selecting is from the group
consisting of xylem, phloem, root, leaf and stem;
E) preparing a description of the one or more of the selected
compartments from step C) in the DEQ builder with regard
to one or more transport processes selected from the group
consisting of transport from and to the one or more of the
selected compartments, degradation processes, and active
transport processes, and wherein the description
comprises mass transport equations and kinetic reaction
equations;
F) preparing a description of the one or more transport
processes mentioned in step E) and/or the degradation
processes of the one or more active compounds in the
organism in the DEQ builder, wherein the description
comprises mass transport equations and kinetic reaction
equations;
G) automatically generating a physiologically-based model
by combining the equations in steps E) and F) in a system
of coupled differential equations generated automatically
by the DEQ builder, the selected compartments and
modules being interconnected dynamically in a
hierarchical, predefined manner so that dependencies
between the modules and parameters are recognized
automatically, combined in the desired order and tested in
the DEQ builder during the execution time of the computer
program so that the individual modules are combined into
an automatically generated integrated model without
carrying out changes at the level of the differential
equations;
H) providing a numerical calculation of the resulting system
of coupled differential equations in the numerical solver;
and
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Application 10/936,353
I) determining a concentration-time curve of the one or more
selected active compounds from step A) in the selected
compartments and outputting a graphical model in a
graphical model output user interface.
(App. Br. 22—24.)
The claims stand rejected as follows:
Claims 1—5 and 8—13 stand rejected under 35 U.S.C. § 101, as
directed to non-statutory subject matter.
ISSUE
Does the evidence of record support Examiner’s finding that
Appellants’ claimed invention lacks subject matter eligibility?
ANALYSIS
Without additional limitations, a process that employs
mathematical algorithms to manipulate 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.” Parker v. Flook,
437 U.S. 584, 595[] (1978) (internal quotations omitted).
Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014).
As Appellants explain, “[pjhysiologically-based pharmacokinetic
(PB-PK) modelling[, such as that falling with the scope of Appellants’
claimed invention,] is a mathematical modeling technique widely used in the
pharmaceutical industry to predict the absorption, distribution, metabolism
and excretion (ADME) of pharmaceutical substances in humans and
animals” (App. Br. 8). According to Appellants, “a common defect with the
known models is their rigidity” {id. at 9). Therefore, Appellants’ contend
that their “invention solves this technical problem of systemic rigidity by a
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Application 10/936,353
novel modular programming method,” which “clearly improves on the
existing PB-PK model technology” {id. at 9 and 18). Specifically,
“Appellants explained how the claims’ novel and unobvious manipulation of
differential equations improved an existing technology and constituted the
‘inventive concept’” (Reply Br. 1). Our reviewing court, however, 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.” Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016).
Taken as a whole, Appellants’ Brief make clear that their claimed
invention employs mathematical algorithms to manipulate existing
information to generate additional information (see Reply Br. 5 (Appellants’
“inventive concept [resides] in the claimed novel and unobvious application
of the mathematical equations that improves on the existing technology”);
id. (“Appellants’ inventive concept and contribution, is to combine the
mathematical equations in the flexible, dynamic fashion required by the
instant claims”)). Stated differently, Appellants’ claimed invention is to
apply particular mathematical equations to a mathematical modeling
technique, or, more specifically, to apply an abstract idea to an abstract idea.
Alice, 134 S. Ct. at 2355. Cf. Digitech, 758 F.3d 1351 (“Without additional
limitations, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
eligible”).
On this record, Examiner finds that Appellants’ claim 1 recites the
application of “a method that is computer implemented for manipulating
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Application 10/936,353
data without adding a patent eligible application” (Ans. 4). More
specifically, Examiner finds that Appellants’
claims amount to nothing more than instructions to apply the
abstract idea, i.e.[,] gather data (determine interactions) and use
a DEQ [(differential equation)] builder and solver in the confines
of the computer wherein one inputs data, analyzes data, inputs
more data, prepares descriptions, generates a model, provides
calculations, and determines a curve for output.
(Id.) Thus, Appellants’ claimed invention does not “recite additional
elements that amount to significantly more tha[n] the judicial exception” (id.
at 4—5). To the contrary, Appellants concede that their claimed invention is
the “application of [] mathematical equations that improves on the existing
technology” of a mathematical modeling technique (Reply Br. 5). “‘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, citing Parker, 437 U.S. at 595
(internal quotations omitted).
CONCLUSION OF LAW
The evidence of record supports Examiner’s finding that Appellants’
claimed invention lacks subject matter eligibility. The rejection of claim 1
under 35 U.S.C. § 101, as directed to non-statutory subject matter, is
affirmed. Claims 2—5 and 8—13 are not separately argued and fall with claim
1.
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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