Ex Parte Wong et al

Patent Trial and Appeal Board

Jun 20, 2016

11934024 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111934,024 11/01/2007
720 7590 06/22/2016
OYEN, WIGGS, GREEN & MUTALA LLP
480 - THE ST A TION
601 WEST CORDOVA STREET
VANCOUVER, BC V6B IGI
CANADA
FIRST NAMED INVENTOR
June T. W. Wong
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.
G395 0004/BMG 4798
EXAMINER
HARWARD, SOREN T
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
mail@patentable.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNE T.W. WONG and CLEMENT K.L. MA1
Appeal2013-010045
Application 11/934,024
Technology Center 1600
Before ERIC B. GRIMES, LORA M. GREEN, and JOHN G. NEW,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
computer-implemented method of genetic investigation, which have been
rejected as obvious and directed to non-statutory subject matter. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
"The invention provides a method and system for conducting genetic
research using DNA sampling, preferably via an online social network,
1 Appellants identify the Real Parties in Interest as the inventors. (Appeal
Br. 3.)
Appeal2013-010045
Application 11/934,024
using a set of family members related by defined genealogical relationships
to identify carriers of a DNA of interest for obtaining DNA information."
(Spec. ii 12.)
Claims 1, 2, 5, 6, and 12--45 are on appeal. Claim 1 is illustrative and
reads as follows:
Claim 1: A computer-implemented method of conducting genetic
investigation to determine genetic information about one or more individuals
using a set of individuals related by defined genealogical relationships,
wherein a plurality of individuals in the set are linked by an interactive
computer network comprising a social network accessible to said plurality of
individuals in the set by means of said computer network, said social
network comprising a web server, email server, database and data storage,
said method comprising:
a) defining a set of living or deceased individuals related by defined
genealogical relationships to said one or more individuals thereby
forming a family tree including said plurality of individuals in said
set, said family tree being stored in said database;
b) defining at least one DNA type of interest;
c) defining the inheritance pattern associated with each said at least
one DNA type of interest;
d) determining the information associated with each said at least one
DNA type of interest;
e) determining genetic information about said one or more
individuals, by i) carrying out one or more inquiries using the results
obtained from steps a), b ), c) and d) wherein said one or more
inquiries comprises determining which individuals in said set carry
said DNA type of interest and determining which genetically-related
information can be obtained by testing said individuals in said set for
said DNA type of interest; and ii) obtaining via said social network
said genetically-related information from one or more of the
individuals in said set who carry said DNA type of interest.
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Application 11/934,024
The claims stand rejected as follows:
Claims 1, 2, 5, 6, and 12--44 under 35 U.S.C. § 101, on the basis that
the claims are directed to non-statutory subject matter (Final Rej. 2 3);
Claims 1, 2, 5, 6, 12, 13, 15-27, 29-36, and 42--45 under 35 U.S.C.
§ 103(a) as obvious based on Sorenson,3 Eaton,4 Bennett,5 and Struewing6
(Final Rej. 4);
Claim 14 under 35 U.S.C. § 103(a) as obvious based on Sorenson,
Eaton, Bennett, Struewing, and Fey7 (Final Rej. 8); and
Claims 28 and 39--41 under 35 U.S.C. § 103(a) as obvious based on
Sorenson, Eaton, Bennett, Struewing, and Ricciardio8 (Final Rej. 9).
I
The Examiner has rejected claims 1, 2, 5, 6, and 12--44 on the basis that
they are directed to non-statutory subject matter. The Examiner finds that
claim 1 fails the "machine or transformation" test of Bilski v. Kappas, 130
S.Ct. 3218 (2010), because "[t]he claimed method transforms only data; it does
not transform an article into another state or thing" and "even though the
2 Office Action mailed Apr. 6, 2012.
3 Sorenson et al., US 2003/0172065 Al, published Sept. 11, 2003.
4 Eaton, US 6,570,567 Bl, patented May 27, 2003.
5 Bennett, R. L. Using a Pedigree to Recognize Individuals with an
Increased Susceptibility to Cancer, in The Practical Guide to the Genetic
Family History, pp. 129-144, Wiley-Liss, Inc. (1999).
6 Struewing, J.P., et al., Anticipated Uptake and Impact of Genetic Testing
In Hereditary Breast and Ovarian Cancer Families, 4 Cancer Epidemiology,
Biomarkers & Prevention 169-173 (1995).
7 Fey et al., US 2002/0052761 Al, published May 2, 2002.
8 Ricciardio et al., US 2001/0007750 Al, published July 12, 2001.
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Application 11/934,024
claimed method is nominally tied to a particular machine (i.e., a 'social
network'), the machine is used only in information retrieval or
communication." (Final Rej. 3.) The Examiner concludes that "[s]ince the use
of the sole non-abstract element (i.e. the 'social network') is merely tangential
to the practice of the invention, the claim as currently recited is directed to an
abstract idea. As such, it fails to meet the standard for statutory eligibility."
(Id.)
Appellants argue that "the claim as presented does tie the method to
the social network in that the family tree is stored in the database of the
social network (step (a)) and the inquiries of step e) are carried out using the
result of step a); and the results of the investigation in step e) are obtained
via the social network." (Appeal Br. 7.)
The Examiner responds that the database of claim 1 merely stores and
retrieves the family tree, and hence "is no more than 'extrasolution
activity,"' while the social network "is simply a communications medium
over which genetic data are communicated." (Ans. 3.) The Examiner
concludes that "[t]he 'database' and the 'social network' are merely
tangentially involved in the practice of the method, and therefore the
recitation of these elements does not constitute a sufficient tie to a particular
machine." (Id.)
We agree with the Examiner's reasoning. While the machine-or-
transformation test is not the exclusive test for a patent-eligible process, it
does provide "a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes under§ 101."
Bilski v. Kappas, 130 S.Ct. 3218, 3226 (2010). More recently, the Court
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Application 11/934,024
held that "the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice Corp.
Pty. Ltd. v. CLS Banklnt'l, 134 S.Ct. 2347, 2358 (2014).
In this case, we agree with the Examiner that claim 1 is directed to
non-statutory subject matter. Claim 1 recites the abstract idea of using a
family tree to identify people, and obtain genetic information about them,
based on a certain DNA type of interest. While claim 1 requires a "social
network comprising a web server, email server, database and data storage,"
where the database stores a family tree, that generic limitation does not
convert the otherwise unpatentable abstract idea into a patent-eligible
method. See id.:
Stating an abstract idea "while adding the words 'apply it'" is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those t\'l/O steps, \'l1ith the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility.
(Citations omitted.)
Because claim 1 is directed to an abstract idea implemented on a
generic computer, it is directed to non-statutory subject matter. The
rejection of claim 1 under 35 U.S.C. § 101 is affirmed. Claims 2, 5, 6, and
12--44 have not been argued separately and therefore fall with claim 1. 37
C.F.R. § 41.37(c)(l)(iv).
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Application 11/934,024
II
The Examiner has rejected claims 1, 2, 5, 6, 12, 13, 15-27, 29-36, and
42--45 as obvious based on Sorenson, Eaton, Bennett, and Struewing. The
Examiner finds that Sorenson teaches creating a database that includes a
family tree; selecting a marker ("DNA type") of interest and defining its
inheritance pattern; determining physical characteristics associated with the
marker; and determining the allelic state ("genetic information") of the
marker for the individual. (Final Rej. 5.)
The Examiner finds that "Eaton teaches a networked computer system
for performing genealogy" comprising all of the hardware components of
the "social network" recited in claim 1. (Id.) The Examiner finds that
Bennett teaches that molecular genetics, combined with family history, can
help identify individuals at increased cancer risk (id. at 6) and Struewing
teaches that people in families with a history of breast and ovarian cancer are
often interested in being tested for genetic susceptibility (id.).
The Examiner concludes that it would have been obvious "to combine
the computerized genetic genealogy method of Sorenson with the
genealogical social networking method of Eaton to achieve the benefits of a
computerized social network: convenient collaboration among users." (Id. at
7-8.) The Examiner also concludes that it would have been obvious "to use
the system of Eaton and Sorenson to facilitate genetic testing of family
members, because Bennett and Struewing teach that genetic testing of
individuals and their relatives has medical and personal benefits." (Id. at 8.)
We agree with the Examiner that the claimed method would have
been obvious based on the cited references. Sorenson discloses "a system
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Application 11/934,024
and method particularly useful in corroborating and improving the accuracy
of genealogical records." (Sorenson i-f 2.) Sorenson teaches that "genetic
characteristics may be identified among intra familial relations as a portion
of a broader lineal genetic inheritance, such as a proclivity toward cancers,
heart disease, obesity and other conditions in some family lines." (Id. at
i-f9.)
Sorenson teaches that its system includes "database 25 [that] can store
data sets including genetic data 30 for a plurality of members and
corresponding genealogical records 40 . ... Preferably, the genetic data 30
includes at least one genetic marker, or chromosomal fragment, that is
substantially identical by descent." (Id. at i-f 33.) Sorenson states that the
genealogical records extend at least three family generations. (Id.)
Sorenson teaches that its database "may be created by obtaining a
genetic sample and genealogical information from a plurality of
individuals .... A plurality of tests may be performed on the genetic sample
to identify an allelic state of the individual at a plurality of loci. The genetic
information obtained through analysis of the genetic sample is entered into
the database." (Id. at i-f 34.) Sorenson teaches that different types of DNA
(Y-chromosome, mitochondrial, and autosomal) have specific inheritance
patterns. (Id. at i-fi-1 40-41.)
Eaton discloses "methods and systems for displaying a pedigree chart
on a display device of a computer system." (Eaton 2:29-31.) Eaton's
system includes a computer with data storage that provides for nonvolatile
storage of, among other things, data structures (i.e., a database). (Id. at
5: 19-32.) Eaton states that the computer "may operate in a networked
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environment" with connections to remote computers, including servers. (Id.
at 5:59-63.) "Such networking environments are commonplace in office-
wide or enterprise-wide computer networks, intranets and the Internet." (Id.
at 6:5-7.) Eaton discloses that its application software can allow users to
leave messages for each other, including offers to provide more information
by email. (Id. at 10:51 to 11:2.) "[T]he messages may be used to
collaborate efforts in genealogy work." (Id. at 11 :3--4.)
Bennett teaches that "[ t ]he instruments of molecular genetics, in
concert with a precise genetic family history, provide clinicians with
powerful investigative tools to identify individuals with an increased risk to
develop various cancers .... Testing, if performed, must be interpreted in the
context of the family history." (Bennett 140.) Struewing teaches that,
among families at high risk of breast and ovarian cancer because of possible
mutation of the BRCAl gene, 79% would definitely want to be tested for
BRCAl mutations. (Struewing 169, abstract.)
We agree with the Examiner that these disclosures would have made
obvious the method of claim 1. Specifically, it would have been obvious to
implement Sorenson's method of storing genetic data and genealogical
records in a networked computer environment because Eaton teaches that
such networks are commonplace (e.g., on the Internet) and allow
collaboration among users. The networked system described by Eaton meets
all of the recited limitations of the "social network" of claim 1.
It also would have been obvious to use the resulting system to
determine and track patients' BRCAl status (DNA type of interest) because
BRCAl mutations are inherited autosomally (inheritance pattern) and
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BRCAl mutations result in familial high risk of breast and ovarian cancer
(information associated with the DNA type of interest). Thus, it would have
been obvious to use the networked database made obvious by Sorenson and
Eaton to identify individuals in high-risk families and obtain their BRCAl
status (if known) or a genetic sample for use in testing for BRCAl
mutations.
Appellants argue that "Sorenson does not address how the plurality of
individuals who are sampled are determined. Sorenson thus does not
contemplate the problem of how to determine what further inquiries (testing)
of which individuals should be made in order to determine the genetic
information of interest about the individual in question." (Appeal Br. 9.)
This argument is unpersuasive, because Sorenson expressly discloses
that its database includes both genetic data and genealogical records for at
least three generations of a family. (Sorenson i-f 33.) Viewed in combination
with Bennett's teaching that molecular genetics test results must be
interpreted in the context of family history, and Struewing's teaching that
many patients in high-risk families wish to be tested for BRCAl mutations,
it would have been obvious to use Sorenson's system to identify individuals
in high-risk families in order to test them for BRCAl mutations.
Appellants also argue that "Eaton discloses the use of a computer
network for conducting genealogical research. Eaton does not address
genetic research. There is nothing in Eaton even combined with Bennett and
Struewing therefore which would motivate the person skilled in the art to
modify Sorenson to arrive at the method claimed in Claim I." (Appeal Br. 9.)
This argument is also unpersuasive. Eaton's computer system
includes all of the components of the "social network" of claim 1, and Eaton
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discloses that its system allows collaborative genealogical research. A
skilled worker would have realized that the same benefits of collaboration
disclosed by Eaton (e.g., avoiding duplicative work) would also apply to a
computer network used in Sorenson's system and method.
Finally, Appellants argue that "[b ]y merely teaching that genetic
testing of individuals and their relatives has medical and personal benefits,
Bennett and Struewing do not provide motivation to modify Sorenson and
Eaton to arrive at the features of the claimed method of Claim 1." (Appeal
Br. 8.)
This argument is unpersuasive because both Sorenson and Bennett
teach the benefit of combining molecular genetics testing with genealogical
information. (Sorenson i-f 33, Bennett 140.) Thus, it would have been
obvious to use Sorenson's system to identify families at high risk of BRCAl
mutation and to identify individuals within such families for possible genetic
testing.
Appellants argue that "Claim 45 claims a computer-implemented
system for carrying out the method of Claim 1." (Appeal Br. 9.) However,
Appellants provide no reasoned basis for concluding that the system recited
in claim 45 would not have been obvious for the same reason that the
method of claim 1 would have been obvious.
Claims 2, 5, 6, 12, 13, 15-27, 29-36, and 42--44 have not been argued
separately and therefore fall with claims 1 and 45. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner rejected claim 14 under 35 U.S.C. § 103(a) based on
Sorenson, Eaton, Bennett, Struewing, and Fey; and rejected claims 28 and
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Application 11/934,024
39--41under35 U.S.C. § 103(a) based on Sorenson, Eaton, Bennett,
Struewing, and Ricciardio. Appellants have waived arguments based on Fey
or Ricciardio. (See Appeal Br. 7-9.) We therefore affirm these rejections as
well. MPEP § 1205.02 ("If a ground of rejection stated by the Examiner is
not addressed in the appellant's brief, that ground of rejection will be
summarily sustained by the Board.").
SUMMARY
We affirm all of the rejections on appeal.
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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