Roberto Puch-Solis et al.

Patent Trials and Appeals Board

Feb 19, 2020

13583754 - (D) (P.T.A.B. Feb. 19, 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.
13/583,754 03/20/2013 Roberto Puch-Solis 14350.0009FPWO 3625
23552 7590 02/19/2020
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
RIGGS II, LARRY D
ART UNIT PAPER NUMBER
4111
NOTIFICATION DATE DELIVERY MODE
02/19/2020 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):
USPTO23552@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERTO PUCH-SOLIS and LAUREN RODGERS
Appeal 2018-007257
Application 13/583,754
Technology Center 4100

Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
ELIZABETH A. LAVIER, Administrative Patent Judges.
LAVIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–8. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to methods for comparing DNA samples.
Claim 1, reproduced below, is illustrative:

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Forensic Science
Service Limited. Appeal Br. 2.
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1. A computer implemented method comprising:

comparing a first sample result set with a second sample result
set using a computer to automatically identify a match between
the first sample result set and the second sample result set;

the first sample result set comprising identities of alleles
present at one or more loci in DNA of a first sample;

the second sample result set comprising identities of
alleles present at one or more loci in DNA of a second
sample; the first sample and the second sample each being
obtained from one or more donors; and

outputting by the computer an automatically identified match
between the first sample result set and the second sample result
set to provide an indication of a potential match between at least
one donor of the first sample and at least one donor of the second
sample;

wherein comparing the first sample result set and the second
sample result set includes consideration of a likelihood ratio
which provides an indication of a probability of the alleles being
present at their respective loci in the DNA, the likelihood ratio
being determined using one of the following probability density
functions:

ƒ(Cl(i)|gl(i), χl(i), δ) where gl(i) is the genotype of the donor
of sample Cl(i), δ is an effect parameter accounting for
variations in the allele identities caused by a method of
analyzing the sample to establish the allele identities
and/or degradation of the sample, and χl(i) denotes a sum
of peak magnitudes for the locus i; or

ƒ(cl(i)|gU,1,l(i), gU,2,l(i), χl(i), δ) where gU,1,l(i) is one of the
genotypes of the donor of sample cl(i), gU,l(i) is another of
the genotypes of the donor of the sample cl(i), δ is an effect
parameter accounting for variation in the allele identities
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caused by a method of analyzing the sample to establish
the allele identities and/or degradation of the sample, and
χl(i) denotes the sum of peak magnitudes for the locus i; or

ƒ(cl(i)|g1,l(i), g2,l(i),ω, χl(i), δ) where gU,1,l(i) is one of the
genotypes of the donor of sample cl(i), gU,l(i) is another of
the genotypes of the donor of the sample cl(i), δ is an effect
parameter accounting for variation in the allele identities
caused by a method of analyzing the sample to establish
the allele identities and/or degradation of the sample, χl(i)
denotes the sum of peak magnitudes for the locus i, and ω
is the mixing proportion of the DNA associated with the
donor.[2]
Appeal Br. 16–17 (Claims Appendix).
REJECTIONS
1. Claims 1 and 3–8 stand rejected under 35 U.S.C. § 101 as being
directed to subject matter ineligible for patenting. Ans. 5.
2. Claims 1 and 3–8 stand rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1–
10 of copending Application No. 14/126,615. Ans. 4.
OPINION
Subject Matter Eligibility
The Rejection
The Examiner determined that, as process claims, Appellant’s claims
fall within one of the statutory categories of invention. See Final Action 3;
Ans. 6. However, the Examiner rejected the claims as falling within one of

2 There seem to be some mismatches in the explanation of the variables in
the third probability density function; e.g., gU,1,l(i) is not recited in ƒ(cl(i)|g1,l(i),
g2,l(i),ω, χl(i), δ). Our analysis does not turn on the particular variables
involved, however.
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the judicially-created exceptions to eligibility, i.e., abstract ideas. See Ans.
6. More specifically, the Examiner found that the recited method of
comparing DNA sample result sets is “drawn to an abstract idea of
mathematical relationship that considers likelihoods” (id. at 6), and nothing
significantly more (see id. at 8–9), whether the limitations are considered
individually or as an ordered whole (see id. at 9).
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). In determining whether a claim falls within an excluded category,
we are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories., Inc., 566 U.S. 66
(2012) and Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski v. Kappos, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)). If the claim is “directed to” an abstract idea, we turn to the
second step of the Alice and Mayo framework, where “we must examine the
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elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
Early in 2019, the USPTO published revised guidance on the
application of § 101. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (“Memorandum” or
“2019 Office Guidance” or “Office Guidance”). The 2019 Office Guidance
was subsequently updated in October 2019. USPTO, October 2019 Patent
Eligibility Guidance Update, 84 Fed. Reg. 55942 (October 18, 2019)
(“October 2019 Guidance Update”).3
Following the Office Guidance, under Revised Step 2A, we first look
to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental
economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look, under Step 2B of the
Office Guidance, to whether the claim:
(3) adds specific limitations beyond the judicial exception that
are not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

3 The citation provided to the Federal Register for the October 2019
Guidance Update is for the notice only. As the notice indicates, the full text
of the October 2019 Guidance Update, including its appendices, is available
at https://www.uspto.gov/PatentEligibility. This website also includes a link
to the 2019 Office Guidance, among other documents.
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
Analysis
Office Guidance—Revised Step 2A, Prong 1
We select Appellant’s claim 1 as representative of the claims subject
to this rejection. Applying Revised Step 2A, Prong 1, of the 2019 Office
Guidance, we agree with the Examiner that Appellant’s claim 1 recites
abstract ideas in a number of instances.
Representative claim 1 recites a computer implemented method
comprising comparing a first sample result set with a second sample result
set “to automatically identify a match,” and wherein the sample sets
comprise identities of alleles at one or more loci in sample DNA. Appeal
Br. 16 (Claims Appendix). Next, the computer outputs the identified sample
match “to provide an indication of a potential match between” donor(s) of
the first and second samples. Id. Further, claim 1 specifies that the
comparison “includes consideration of a likelihood ratio,” determined by
one of three “probability density functions” recited in the claim. Id. at 16–
17. The recited probability function is a mathematical formula or equation.
As the probability density functions recited in claim 1 make clear,
claim 1 recites mathematical concepts. Accordingly, we agree with the
Examiner that claim 1 recites abstract ideas. See Office Guidance (84 Fed.
Reg. at 52 (abstract ideas include “(a) Mathematical concepts—
mathematical relationships, mathematical formulas or equations,
mathematical calculations”)).
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Office Guidance—Revised Step 2A, Prong 2
Having determined that Appellant’s representative claim 1 recites
abstract ideas under Revised Step 2A, Prong 1, of the 2019 Office Guidance,
we turn to Revised Step 2A, Prong 2, of the Office Guidance to determine
whether claim 1 recites additional elements that integrate the judicial
exceptions into a practical application. See Office Guidance (84 Fed. Reg. at
54–55). We agree with the Examiner that Appellant’s claim 1 does not
recite additional elements that integrate the judicial exceptions into a
practical application. The “output[]” generated in claim 1 is information,
i.e., “an automatically identified match . . . to provide an indication of a
potential match between” donors. Appeal Br. 16 (Claims Appendix). Thus
the output is as abstract as the input. See Alice, 573 U.S. at 223 (“[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.”).
Further, claim 1 does not “effect[] a transformation or reduction of a
particular article to a different state or thing” (MPEP § 2106.05(c) (citing
Bilski v. Kappos, 561 U.S. 593 (2010)), as only data are manipulated in
claim 1—nothing tangible is altered. In this respect, claim 1 effectively
amounts to reciting an abstract idea with instructions to apply it using a
computer. See Mayo, 566 U.S. at 72 (“[T]o transform an unpatentable law
of nature into a patent-eligible application of such a law, one must do more
than simply state the law of nature while adding the words ‘apply it.’”)
(citation omitted); see also MPEP § 2106.05(f).
Also, although Appellant showcases the applicability of the claimed
technology in the field of forensic analysis (see, e.g., Appeal Br. 11), claim 1
is not so limited. Even if claim 1 recited some generic limitations to forensic
analysis, however, that would not be sufficient to integrate the abstract idea
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into a practical application. See MPEP § 2106.05(h) (“[A] claim directed to
a judicial exception cannot be made eligible ‘simply by having the applicant
acquiesce to limiting the reach of the patent for the formula to a particular
technological use.’” (quoting Diamond v. Diehr, 450 U.S. 175, 192 n.14
(1981)); see also Office Guidance (84 Fed. Reg. at 55 (providing example in
which judicial exception is not integrated into a practical application
includes where “an additional element does no more than generally link the
use of a judicial exception to a particular technological environment or field
of use”)).
Office Guidance—Step 2B
For the reasons discussed above, we are persuaded that Appellant’s
representative claim 1 recites judicial exceptions (abstract ideas in the form
of mathematical concepts) under Revised Step 2A, Prong 1, of the 2019
Office Guidance, and does not integrate those judicial exceptions into a
practical application under Revised Step 2A, Prong 2. Accordingly, we turn
to Step 2B of the Office Guidance to determine whether (a) claim 1 recites
specific limitations beyond the judicial exceptions that are not well-
understood, routine, or conventional in the field, or (b) whether claim 1
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See Office Guidance (84 Fed. Reg. at 56).
As discussed above, the steps of claim 1 are “comparing” and
“outputting,” and these steps are carried out using a general purpose
computer. Whatever the utility of the invention in the forensic sciences,
claim 1 does not recite specific limitations beyond the judicial exceptions.
Appellant argues that the claimed invention “does provide an improvement
for investigation and forensics utilizing DNA, which is a technical field.”
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Appeal Br. 10. Relatedly, Appellant maintains that, when considered as a
whole, claim 1 amounts to significantly more than an abstract idea because
“real world application and tangible results have been obtained using the
recited method.” Id. at 11.
We are not persuaded. Whether claim 1 is viewed element-by-
element or as a whole, we agree with the Examiner (see Ans. 10–11) that
claim 1 does not recite significantly more than patent-ineligible abstract
ideas. As explained in the 2019 Office Guidance, however, it is the
“additional elements recited in the claims” beyond the judicial exceptions in
the claim that must provide significantly more than the recited judicial
exception. See Office Guidance (84 Fed. Reg. at 56) (emphasis added).
Thus, the fact that DNA analysis using the probability density functions
recited in claim 1 might be a highly significant discovery in the field of
forensic science is insufficient to establish eligibility for patenting. See In re
BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d
755, 759 (Fed. Cir. 2014) (explaining that making a “‘groundbreaking,
innovative, or even brilliant discovery’” is “not enough” to establish patent
eligibility) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2117 (2013)). Specifically, the improvement described by
Appellant is in the abstract idea itself, namely the use of probability density
functions. However, “the prohibition against patenting abstract ideas
‘cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment.’” Bilski v. Kappos, 561 U.S. 593, 610
(2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–192 (1981).
Eligibility: Conclusion
In the present case, as discussed above, under the Mayo framework as
implemented by the 2019 Office Guidance, we are persuaded that the
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preponderance of the evidence supports the Examiner’s determination that
Appellant’s claim 1 is directed to subject matter that is ineligible for
patenting. In sum, for the reasons discussed, Appellant does not persuade us
that the Examiner erred in determining that Appellant’s claim 1 is directed to
subject matter that is ineligible for patenting. We, therefore, affirm the
Examiner’s rejection of claim 1 as being ineligible for patenting. Claims 3–
8 are not argued separately, and fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2016).
Provisional Nonstatutory Obviousness-type Double Patenting
Appellant does not argue the provisional nonstatutory obviousness-
type double patenting rejection. See Appeal Br. 14; Reply Br. 1.
Accordingly, we summarily affirm this rejection. See 37 C.F.R.
§ 41.37(c)(1)(iv); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008);
MPEP § 1205.02 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it.”).
CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–8 101 Eligibility 1, 3–8
1, 3–8 Nonstatutory
Obviousness-type
Double Patenting
1, 3–8
Overall
Outcome
1, 3–8
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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).
AFFIRMED