Ex Parte Rigoutsos, No. 2009-010520 (BPAI Feb 7, 2012) involved techniques for annotating sequences, particularly query sequences. Patterns associated with a database, comprising annotated sequences, are accessed. Attributes are assigned to the patterns based on the annotated sequences. The patterns with assigned attributes are used to analyse the query sequence.
International Business Machines Corporation brought US Patent Application 10/305,582 before the Board of Technical Appeals and Interferences. The Examiner had objected that claims 1-17 were directed to a method for annotating a query sequence which does not qualify as a patent eligible process.
Claim 1 as a representative claim, read as follows:
The Board agreed with the examiner that claim 1 is not directed to a patent eligible process under 35 U.S.C. §101.
They found that the following steps were broad enough to encompass a manual method by a user:
The Appellant argued that the claimed method and apparatus transform the patterns with annotated sequences to derive patterns with assigned attributes. This transformation to patterns with assigned attributes, said the Appellant, provides a useful, concrete and tangible result.
The Board noted that the "useful, concrete, and tangible" test is no longer in fashion. The Board ignored the Appellant's argument to the extent that it relied on the “useful, concrete and tangible” test.
In any case, there was no transformation set out in claim 1. At most, independent claim 1 recited adding additional data to other data without expressly setting forth any of the specifics of the process.
For this reason, said the Board, there was no statutory transformation.
The underlying invention
The Board then lined up article claim 26.
The Board noted that independent claim 26 recites the same limitations and merely sets forth a preamble directed to an article of manufacture. The Board left it up to the Examiner to evaluate this claim with respect to the process which underlies the broad/generic system and article preamble.
Citing Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (see my blog post), the Board noted that the Examiner may analyse the underlying invention of an appropriate claim as a process.
Further steps
The Board affirmed the Examiner's rejection of claims 1-17 as based upon non-statutory subject matter. They also gave the Examiner a nudge toward a non-statutory rejection of the article claims.
Photo courtesy of author Tall Chris under Creative Commons licence.
International Business Machines Corporation brought US Patent Application 10/305,582 before the Board of Technical Appeals and Interferences. The Examiner had objected that claims 1-17 were directed to a method for annotating a query sequence which does not qualify as a patent eligible process.
Claim 1 as a representative claim, read as follows:
1. A method for annotating a query sequence, the method comprising the steps of:Claim 26 was directed to an article of manufacture as follows:
accessing patterns associated with a database comprising annotated sequences;
assigning attributes to the patterns based on the annotated sequences; and
using the patterns with assigned attributes to analyze the query sequence.
26. An article of manufacture for annotating a query sequence, comprising a machine readable medium containing one or more programs which when executed implement the steps of:A manual method
accessing patterns associated with a database comprising annotated sequences;
assigning attributes to the patterns based on the annotated sequences; and
using the patterns with assigned attributes to analyze the query sequence.
The Board agreed with the examiner that claim 1 is not directed to a patent eligible process under 35 U.S.C. §101.
They found that the following steps were broad enough to encompass a manual method by a user:
- accessing patterns associated with a database comprising annotated sequences;
- assigning attributes to the patterns based on the annotated sequences;
and - using the patterns with assigned attributes to analyze the query sequence.
The Appellant argued that the claimed method and apparatus transform the patterns with annotated sequences to derive patterns with assigned attributes. This transformation to patterns with assigned attributes, said the Appellant, provides a useful, concrete and tangible result.
The Board noted that the "useful, concrete, and tangible" test is no longer in fashion. The Board ignored the Appellant's argument to the extent that it relied on the “useful, concrete and tangible” test.
In any case, there was no transformation set out in claim 1. At most, independent claim 1 recited adding additional data to other data without expressly setting forth any of the specifics of the process.
For this reason, said the Board, there was no statutory transformation.
The underlying invention
The Board then lined up article claim 26.
The Board noted that independent claim 26 recites the same limitations and merely sets forth a preamble directed to an article of manufacture. The Board left it up to the Examiner to evaluate this claim with respect to the process which underlies the broad/generic system and article preamble.
Citing Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (see my blog post), the Board noted that the Examiner may analyse the underlying invention of an appropriate claim as a process.
Further steps
The Board affirmed the Examiner's rejection of claims 1-17 as based upon non-statutory subject matter. They also gave the Examiner a nudge toward a non-statutory rejection of the article claims.
Photo courtesy of author Tall Chris under Creative Commons licence.
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