DETAILED ACTION
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 .
Response to Arguments
Applicant’s arguments that Yamashita fails to disclose identification of peak ratios and calculation of peak ratio errors have been fully considered and are persuasive. The rejections of the claims over Yamashita have been withdrawn.
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 1-4 and 7-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the abstract idea of a mental process without significantly more. Independent claim 1 recites “calculate retention time errors…and calculate peak ratio errors”; and “plot…a plurality of elements representing error sets”. Similarly, independent claims 10 and 11 recite steps of calculating retention time errors and peak ratio errors, and plotting elements representing error sets. These are steps of performing mathematical calculations and creating a graph, respectively.
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). Further, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
In the instant case, the functions of the independent claims can be performed by the human mind or by a human using pen and paper. For instance, humans are capable of performing error calculations and graphing data with a pen and paper.
This judicial exception is not integrated into a practical application because there is no claimed application of the mathematical calculations or the created graph which amounts to more than generally linking the use of the judicial exception to a particular technological environment or field of use, i.e., mass spectrometry.
The claims do not include additional elements that amount to significantly more than the judicial exception because all of the remaining claim limitations are generic descriptions of selecting a particular data source or type of data to be manipulated, i.e., “identify…measured retention times and measured peak ratios”.
The courts have found selecting a particular data source or type of data to be manipulated to be insignificant extra-solution activity. In Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016), the courts found selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, to be insignificant extra-solution activity. Similarly, the step of identifying measured retention times and measured peak ratios is insignificant extra-solution data selection.
Furthermore, the mass spectrometry device recited in independent claim 1 only serves to link the abstract idea to the general field of mass spectrometry. Limiting the application of an abstract idea to a particular technological environment is insufficient to integrate a judicial exception into a practical application. Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Similarly, specifying that the abstract idea is performed in a computer environment, as in independent claim 11 of the present application, merely limits the claim to execution on a generic computer. Limitation of the claim to a computer environment is insufficient to integrate the judicial exception into a practical application. FairWarning v. Iatric Sys., 839 F.3d 1089, 1094-95, 120 USPQ2d 1293, 1295 (Fed. Cir. 2016). “Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more” (MPEP 2106.05(b)(III)). See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011) (citations omitted) ("[N]othing in claim 3 requires an infringer to use the Internet to obtain that data. The Internet is merely described as the source of the data. We have held that mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’" 654 F.3d at 1375, 99 USPQ2d at 1694 (citation omitted)). See MPEP § 2106.05(g) & (h) for more information on insignificant extra-solution activity and field of use, respectively.
Dependent claims 2-4 and 7-9 fail to provide a practical application to the above abstract ideas, as they offer no application whatsoever. Furthermore, dependent claims 2-4 and 7-9, taken alone or in an ordered combination, fail to recite anything that is significantly more than the abstract idea at issue. Claims 2-4 simply describe evaluation of the calculated error data and displaying results of said evaluation, which is not significantly more than the abstract idea for the same reasons as noted above. Claims 7-9 recite only insignificant constraints regarding the data analysis and displayed results, which are not significantly more than the abstract idea for the same reasons as noted above.
Since the above abstract ideas are neither practically applied nor claimed with elements that might be considered to be significantly more than just the abstract ideas, the claims are rejected for failing the requirements of 35 USC 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALINA R KALISZEWSKI whose telephone number is (703)756-5581. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Kim can be reached at (571)272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.K./Examiner, Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
Prosecution Insights