MDX Medical, Inc.

Patent Trials and Appeals Board

Jul 15, 2020

2018007458 (P.T.A.B. Jul. 15, 2020)

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.
14/293,918 06/02/2014 Emmanuel A. Gasquez 280486 1087
23460 7590 07/15/2020
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/15/2020 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EMMANUEL A. GASQUEZ and NICHOLAS J. BYRA

Appeal 2018-007458
Application 14/293,918
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
The Appellant1 filed a Request for Rehearing, dated May 26, 2020, of
the Decision on Appeal, dated March 24, 2020 (“Decision,” herein), which
affirmed the rejections of claims 1–19 under 35 U.S.C. § 101. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as MDX
Medical, Inc. Appeal Br. 1.
Appeal 2018-007458
Application 14/293,918

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ANALYSIS
In the Request for Rehearing, the Appellant asks the Board — for the
first time in this Appeal — to assess the sufficiency of the Examiner’s
determination that the claims recite a judicial exception (specifically, an
abstract idea belonging to the category of mental processes). Req. Reh’g 2–
7. Yet, the Appellant has not properly raised this issue in the Appeal Brief.
Moreover, the Appellant does not show, on the present record, that the
Examiner’s determination is in error, such that the Appellant does not
persuade us that any point presented for review, in the Request for
Rehearing, has been misapprehended or overlooked. See 37 C.F.R.
§ 41.52(a)(1). Accordingly, the Request for Rehearing is denied.
A precedential decision of the Board has emphasized the Appellant’s
responsibility to identify the issues to be considered in the Appeal:
Filing a Board appeal does not, unto itself, entitle an
appellant to de novo review of all aspects of a rejection. If an
appellant fails to present arguments on a particular issue — or,
more broadly, on a particular rejection — the Board will not, as
a general matter, unilaterally review those uncontested aspects
of the rejection. For example, if an appellant contests an
obviousness rejection only on the basis that a cited reference
fails to disclose a particular limitation, the Board need not
review the other, uncontested findings of fact made by the
examiner underlying the rejection, such as the presence of
uncontested limitations in the prior art.
Ex parte Frye, Appeal 2009-006013, 2010 WL 889747, at *4 (BPAI 2010)
(precedential) (citations omitted).
In particular, the Appellant’s Appeal Brief must identify “[t]he
arguments of appellant with respect to each ground of rejection, and the
basis therefor, with citations of the statutes, regulations, authorities, and
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Application 14/293,918

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parts of the Record relied on.” 37 C.F.R. §41.37(c)(1)(iv). “The arguments
shall explain why the examiner erred as to each ground of rejection
contested by appellant.” Id.
The opportunities to present new arguments, after the Appeal Brief
has been filed, are narrowly drawn. Id. (“Except as provided for in
§§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the
appeal brief will be refused consideration by the Board for purposes of the
present appeal.”) “Any argument raised in the reply brief which was not
raised in the appeal brief, or is not responsive to an argument raised in the
examiner's answer, including any designated new ground of rejection, will
not be considered by the Board for purposes of the present appeal, unless
good cause is shown.” 37 C.F.R. § 41.41(c)(2). Likewise, in an Oral
Hearing, “[u]pon a showing of good cause, appellant and/or the primary
examiner may rely on a new argument based upon a recent relevant decision
of either the Board or a Federal Court.” 37 C.F.R. § 41.47(e)(2).
Similar restrictions apply in the rehearing context. “Arguments not
raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41,
or 41.47 are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1).
The noted exceptions pertain to “a new argument based upon a recent
relevant decision of either the Board or a Federal Court (§ 41.52(a)(2)) and a
new argument relating to a new ground of rejection (§ 41.52(a)(3)–(4)).
The claimed subject matter at issue, in the present Appeal, concerns a
technique for “reducing the number of erroneously duplicated entries when
two databases are merged.” Req. Reh’g 6. In the Final Office Action, the
Examiner states that “an abstract idea is recited in” each of independent
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claims 1, 10, and 15. Final Action 3. Further, the Examiner states that the
recited abstract idea is “analogous” to the concepts held to be abstract ideas
in Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758
F.3d 1344, 1350 (Fed. Cir. 2014) (“organizing information through
mathematical correlations”) and In re TLI Communications LLC Patent
Litigation, 823 F.3d 607, 611 (Fed. Cir. 2016) (“classifying and storing
digital images in an organized manner”). Id. at 3–4.
The Appellant admits that the Appeal Brief did not dispute the
Examiner’s determination — which corresponds to Step 2A, Prong One, of
the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50, 52 (Jan. 7, 2019) (“2019 Revised Guidance”). According to
the Appellant, “[h]ad the Revised Guidance been issued prior to the
completion of briefing (in 2018), Appellant would have expressly attacked
the ‘mental processes’ category that is now being used to reject Appellant’s
claims.” Req. Reh’g 7.
Yet, the 2019 Revised Guidance did not alter the legal analysis of
subject-matter eligibility; rather, the 2019 Revised Guidance was created
“[i]n accordance with judicial precedent.” 84 Fed. Reg. at 52. Nor does the
Request for Rehearing identify any applicable legal principles altered, on
account of the 2019 Revised Guidance. Indeed, the Federal Circuit’s
decision in Thales Visionix Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017), a
principal resource for the Appeal Brief (cited, e.g., on pages 10–13 and
included therewith, as Attachment B), employs the same analytical structure
as the 2019 Revised Guidance. The Thales opinion acknowledges that the
claims include judicially excepted subject matter — characterized by the
trial court as “the abstract idea of using ‘mathematical equations for
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determining the relative position of a moving object to a moving reference
frame.’” Thales, 850 F.3d at 1348 (citation omitted). This much of the
analysis corresponds to Step 2A, Prong One, of the 2019 Revised Guidance.
The court in Thales goes on to explain that simply identifying a judicial
exception does not establish that a claim is directed to that patent-ineligible
subject matter. Id. at 1349 (quoting Rapid Litigation Management Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016)). According to the
Thales opinion:
Just as a natural law can be utilized to create an improved
laboratory technique for preserving liver cells, [Rapid
Litigation, 827 F.3d] at 1048, so can the application of physics
create an improved technique for measuring movement of an
object on a moving platform. Just as claims directed to a new
and useful technique for defining a database that runs on
general-purpose computer equipment are patent eligible, Enfish,
[LLC v. Microsoft, Corp., F.3d 1327, 1337–38 (Fed. Cir.
2016)], so too are claims directed to a new and useful technique
for using sensors to more efficiently track an object on a
moving platform. That a mathematical equation is required to
complete the claimed method and system does not doom the
claims to abstraction.
Id. In other words, the Thales court proceeded to an analysis corresponding
to Step 2A, Prong Two, of the 2019 Revised Guidance.
Further, there can be no dispute that the Examiner’s above-cited
statements in the Final Office Action amounted to a determination that the
claims include a mental process. The Examiner (Final Action 4) explicitly
relied upon Digitech and TLI, which have concepts that the Federal Circuit
— well before the submission of the Appeal Brief (April 24, 2018) —
described as “essentially mental processes within the abstract-idea
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category.” Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016).
In any event, whatever the particular categorization of the judicial
exception contained in the claims of the Appeal, the critical issue (in regard
to the Request for Rehearing) remains that the Appellant did not dispute the
Examiner’s determination that the claims do include a judicial exception.
Nevertheless, the Appellant contends that “there is no way, as a
practical matter, for the claimed invention to be carried out entirely in a
human’s mind” (Req. Reh’g 5) — i.e., the inquiry for ascertaining whether
a claim recites an ineligible mental process. See 2019 Revised Guidance, 84
Fed. Reg. at 52 & n.14. See also CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[C]omputational methods
which can be performed entirely in the human mind are the types of methods
that embody the ‘basic tools of scientific and technological work’ that are
free to all men and reserved exclusively to none.’”) (quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)) (footnote omitted).
Yet, as set forth in our Decision at pages 8–9, the present record is
contrary to the Appellant’s assertion. To begin with, the Appellant does not
direct us to anything in the claims considered in light of the Specification
indicating that the process cannot be performed mentally. Further, during
the Oral Hearing (March 4, 2020), the Appellant’s counsel explained that the
basis for the Appellant’s “belief that none of the claims is directed to a
mental process” is that “the claims are all directed to the operation of a
machine that is configured to obtain data sets made up of millions of data
points,” such that “[t]here is absolutely no practical way that a human could
carry out the processes described in Appellant’s application.” Tr. 5–6.
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During the colloquy with the panel that followed, counsel stated that “having
said millions [of data points], I would back off and say thousands.” Id. at 6.
However, independent claims 1, 10, and 15 do not recite “millions” or even
“thousands” of “data points,” but instead recite only “multiple data points”
(see id. at 7) — i.e., at least two “data points.” Accordingly, the Appellant
does not show error in the determination that the claims recite a particular
operation — involving two “data points,” as claimed — that can, as a
practical matter, be performed mentally.
The Request for Rehearing also “requests guidance/clarification with
regard to what is absent from Appellant’s currently claimed technological
improvement to prior art database content integration systems and their
method of operation.” Req. Reh’g 2. The Appellant’s arguments, regarding
the alleged technological improvement, are addressed in the Decision, at
pages 6–9. The Request for Rehearing does not present any explanation as
to why this aspect of the Decision might include any issue that could have
been misapprehended or overlooked. See 37 C.F.R. § 41.52(a)(1).
In view of the foregoing, the Appellant does not persuade us that any
point presented for review, in the Request for Rehearing, has been
misapprehended or overlooked. See 37 C.F.R. § 41.52(a)(1).
DECISION
The Appellant’s Request for Rehearing is denied.
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Reversed
1–19 101 Eligibility 1–19

Appeal 2018-007458
Application 14/293,918

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Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 101 Eligibility 1–19

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DENIED