Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are directed to an abstract idea without significantly more.
1. The claims recite the abstract idea of obtaining sequence information, analyzing or identifying alternative nucleotide orders, and generating and transmitting corresponding synthesis instructions.
2. These operations are directed to the collection, analysis, and communication of information, which are mental processes and methods of organizing human activity, and thus fall within a judicial exception.
3. Facilitating synthesis is not found to be a practical application since the broad recitation could encompass merely presenting the sequence, generating synthesis instructions, or transmitting the sequence to a synthesizer or vendor.
4. The inoperable instructions, even if construed to be an ordered combination of steps, do not weigh in favor of there being significantly more than the idea.
5. Again, the method does not use a particular machine for any step, and the different formats must stand or fall together for abstract idea analyses, and cannot be separately parsed / saved.1
Response to Arguments
Response to Arguments Under 35 U.S.C. § 101
Applicants argue that the Office has not properly identified the claimed abstract idea at Step 2A, Prong One, and that the claims do not recite a mental process because the recited operations allegedly require genomic-scale processing, thresholding, and context-dependent probability determinations. Applicants further argue that the claims integrate any exception into a practical application because the claims are implemented using processors and machine-readable instructions, and point to the disclosure as purportedly describing a technological solution. These arguments are not persuasive.
Under the broadest reasonable interpretation, the claims are directed to collecting sequence information, identifying promoter regions, detecting CpG islands using threshold criteria, determining methylation probabilities from context information, selecting candidate nucleotide alternatives, analyzing those alternatives, and presenting results. The training materials make clear that a claim recites a mental process when it encompasses observation, evaluation, judgment, or opinion, and the fact that the data are genomic or that the analysis may be computationally intensive does not remove the claim from the mental process grouping where the recited activities are fundamentally comparative and evaluative. Here, the claimed steps are, at bottom, reviewing information, applying criteria, determining whether the criteria are met, and selecting among alternatives. Those are mental acts under the USPTO guidance.
Applicants’ assertion that the Office must identify a single exact abstract idea phrase from the claim is also not persuasive. The analysis is based on the claim under its broadest reasonable interpretation, and the claim language itself reflects the abstract concept of information gathering, analysis, comparison, and selection. The Office has identified the claim limitations that correspond to the abstract idea, namely the sequence review, CpG island identification, methylation probability determination, alternative sequence identification, and presentation of the results. That is sufficient under the guidance. The claims need not contain an express recital of “mental process” to fall within the judicial exception.
Applicants’ reliance on computer implementation language is likewise unavailing. As explained in the training materials, merely adding generic processor language or instructions to carry out the claimed analysis does not integrate the judicial exception into a practical application unless the claim recites a specific technological improvement. Here, the claims do not improve the functioning of a computer or any other technology. Rather, they use a computer as a tool to perform the same underlying evaluative sequence-analysis steps. The claims therefore do not recite a practical application at Step 2A, Prong Two, and the recited computer components do not amount to significantly more at Step 2B.
Applicants’ discussion of Desjardins is also not persuasive. The training materials explain that Desjardins does not create a blanket rule for eligibility of computer-implemented or machine-learning-related subject matter. Instead, the proper inquiry remains whether the claim reflects a technological improvement. The present claims do not recite an improvement to computer functionality or to another technical field in the manner contemplated by the guidance. Rather, the claims continue to focus on analyzing sequence information and selecting alternatives based on predetermined criteria. That is an abstract mental process, notwithstanding the use of processors, machine-readable instructions, or computational terminology.
As to claim 12, applicants’ arguments are equally unavailing. Although claim 12 is drafted as a method claim, it recites the same sequence of activities as claim 1: obtaining genomic information, identifying promoter regions, detecting CpG islands based on threshold criteria, determining methylation probabilities based on context, selecting alternatives, and presenting the alternatives. Under the broadest reasonable interpretation, these are evaluative and comparative steps that can practically be performed in the human mind, at least with pen and paper. The claim therefore recites a mental process at Step 2A, Prong One, and does not contain additional elements that integrate the exception into a practical application.
Applicants also argue that the claims are not methods of organizing human activity. The Office maintains the rejection primarily on the mental process grouping, and therefore need not rely on that separate grouping to sustain the rejection. In any event, the claims still recite the collection, analysis, and presentation of information in a way that further supports the abstract character of the claims. The rejection is properly sustained based on the mental process analysis alone.
For these reasons, the § 101 rejection is maintained for claims 1-20.
Conclusion
THIS ACTION IS MADE FINAL. Applicants are reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no case, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FUELLING whose telephone number is (571)270-1367.
Applicants are hereby advised of the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL FUELLING/Supervisory Patent Examiner
1 In the past, having one statutory component in a system and/or using a machine/processor in the inventive step might suffice, individually / separately, but the US Supreme Court has instructed that the claim set must be looked at as a whole.
Prosecution Insights