Andrew Smellie et al.

Patent Trials and Appeals Board

Nov 14, 2019

13714312 - (D) (P.T.A.B. Nov. 14, 2019)

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.
13/714,312 12/13/2012 Andrew Smellie 008916.00142 6197
155218 7590 11/14/2019
BANNER & WITCOFF, LTD.
Client 008916
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
11/14/2019 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):
PTO-155218@bannerwitcoff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW SMELLIE, MIKE STAPLETON, and ROBIN SMITH

Appeal 2018-003849
Application 13/714,312
Technology Center 1600
____________

Before DONALD E. ADAMS, ULRIKE W. JENKS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

SCHNEIDER, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, 5, and 10–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

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
PerkinElmer Informatics, Inc. Appeal Br. 2.
2 We have considered and herein refer to the Specification of Dec. 13, 2012
(“Spec.”); Non-Final Office Action of Mar. 23, 2017 (“Non-Final Act.”);
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STATEMENT OF THE CASE

The Specification discloses systems, method and apparatuses that
allow a user to electronically draw and edit a biological sequence and its
resulting structure. Spec. ¶ 3. The invention offers the user pre-selected
portions of the biological sequence. Id.
Claims 1, 2, 4, 5, and 10–21 are on appeal.3 Claim 1 is representative
of the claims on appeal and reads:
1. An apparatus for creating a representation of a
biological sequence using a draw-ahead feature, the apparatus
comprising:
a memory for storing a set of instructions; and
a processor for executing the set of instructions, wherein
the instructions, when executed, cause the processor to:
provide a representation of at least a portion of an in-
progress biological sequence for presentation on a graphical
display;
receive an input corresponding to an amendment to the
portion of the in-progress biological sequence;
identify a review portion (up to all) of the amended in-
progress biological sequence for comparison with a collection
of stored biological sequence scaffolds;
identify, by comparing the review portion to the
collection of stored biological sequence scaffolds, one or more
candidate biological sequence scaffolds,
wherein each biological sequence scaffold of the one or more
identified candidate biological sequence scaffolds is determined
to, upon one or both of (i) appending to the review portion of
the in-progress biological sequence and (ii) replacing or
partially replacing the review portion of the in-progress

Appeal Brief of Aug. 23, 2017 (“Appeal Br.”); Examiner’s Answer of Jan.
16, 2018 (“Ans.”); and Reply Brief of Feb. 17, 2018 (“Reply Br.”).
3 Claims 6–9 are pending in the application but have been withdrawn from
consideration as being drawn to a non-elected species. Non-Final Act. 2.
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biological sequence, provide at least a portion of a biological
sequence scaffold from the collection of biological sequence
scaffolds;
provide the one or more identified candidate biological
sequence scaffolds for presentation on the graphical display as
option(s) for selection by a user in creating the graphical
representation of the biological sequence,
wherein providing the one or more identified candidate
biological sequence scaffolds for presentation on the graphical
display comprises visually rendering at least one of the
identified candidate biological sequence scaffolds as an
extension of the in-progress biological sequence;
receive an indication of user selection of a selected
biological sequence scaffold from the one or more identified
candidate biological sequence scaffolds provided; and
append the selected biological sequence scaffold to the
review portion of the in-progress biological sequence or replace
or partially replace the review portion of the in-progress
biological sequence with the selected biological scaffold,
thereby updating the representation of the in-progress biological
sequence.

The claims have been rejected as follows:
Claims 1, 2, 4, 5, and 10–21 have been rejected under 35 U.S.C. § 101
are directed to ineligible subject matter.
Claims 1, 2, 4, 5, and 10–21 have been rejected under 35 U.S.C.
§ 112, first paragraph for failure to comply with the written description
requirement.
Claims 1, 2, 4, 5, and 10–21 have been rejected under 35 U.S.C.
§ 112, second paragraph as indefinite.

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INELIGIBLE SUBJECT MATTER
The issue with respect to this rejection is whether the Examiner has
properly determined that the present claims are directed to subject matter
that is not eligible for patent protection.
The Examiner finds that the present claims are directed to an abstract
idea that is merely applied to a general purpose computer. Non-Final Act. 3.
The Examiner finds that the steps listed in the claims are those which could
“normally be performed by hand on a chalk board or with pen and paper.”
Id. The Examiner finds that the recited steps are themselves generic and
embrace “only routine and conventional operations to be used in graphical
and data analysis.” Id. at 4. The Examiner finds that the additional elements
only call for the use of a general computer. Id.
Appellant contends that claim 1 is directed to a specific structure for
improving a technology that was previously done manually. Appeal Br. 13.
Appellant contends that the claims are not directed to an abstract idea that is
merely applied on a general purpose computer but instead recited “specific
limitations that improve the functioning of the computer itself and the
technology used to create representations of biological sequences.” Id. at
19.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
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To determine if a claim falls within an excluded category, we are
guided by the Supreme Court’s two-step framework, described in Mayo and
Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 75–77 (2012)). 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.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against 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, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 187 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 192 (“We
view respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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
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). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“2019 Revised Guidance”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
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organizing human interactions 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)).
See 84 Fed. Reg. at 54–55. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, do we
then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(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 2019 Revised guidance.
Step 2A, Prong One
Following the Revised Guidance, we first consider whether the claims
recite a judicial exception, such as a mental process.4 If a claim “covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.” 84 Fed. Reg. at 52, n.14. As
discussed below, the steps of claim 1 can practically be performed in the
mind.

4 Although claim 1 recites a “memory,” a “processor for executing a set of
instructions” and providing a presentation on a graphical display, these
recitations by themselves do not distinguish the steps of the claim from
mental processes.
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Claim 1, with italics added to emphasize the pertinent limitations
recites:
1. An apparatus for creating a representation of a
biological sequence using a draw-ahead feature, the apparatus
comprising:
a memory for storing a set of instructions; and
a processor for executing the set of instructions, wherein
the instructions, when executed, cause the processor to:
provide a representation of at least a portion of an in-
progress biological sequence for presentation on a graphical
display;
receive an input corresponding to an amendment to the
portion of the in-progress biological sequence;
identify a review portion (up to all) of the amended in-
progress biological sequence for comparison with a collection
of stored biological sequence scaffolds;
identify, by comparing the review portion to the
collection of stored biological sequence scaffolds, one or more
candidate biological sequence scaffolds,
wherein each biological sequence scaffold of the one or more
identified candidate biological sequence scaffolds is determined
to, upon one or both of (i) appending to the review portion of
the in-progress biological sequence and (ii) replacing or
partially replacing the review portion of the in-progress
biological sequence, provide at least a portion of a biological
sequence scaffold from the collection of biological sequence
scaffolds;
provide the one or more identified candidate biological
sequence scaffolds for presentation on the graphical display as
option(s) for selection by a user in creating the graphical
representation of the biological sequence,
wherein providing the one or more identified candidate
biological sequence scaffolds for presentation on the graphical
display comprises visually rendering at least one of the
identified candidate biological sequence scaffolds as an
extension of the in-progress biological sequence;
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receive an indication of user selection of a selected
biological sequence scaffold from the one or more identified
candidate biological sequence scaffolds provided; and
append the selected biological sequence scaffold to the
review portion of the in-progress biological sequence or replace
or partially replace the review portion of the in-progress
biological sequence with the selected biological scaffold,
thereby updating the representation of the in-progress biological
sequence.

Claim 1 recites the instruction “receive an input corresponding to an
amendment to the potion of the in-process biological sequence.” Such an
amendment can be printed on paper and accessed by a person by reading the
biological sequence off the paper. Since this step of claim 1 can be
performed simply by observation, it is a mental step. 84 Fed. Reg. at 52 (A
mental process can be “performed in the human mind (including an
observation, evaluation, judgment, opinion).”). See also CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (“All of
claim 3’s method steps can be performed in the human mind, or by a human
using a pen and paper. . . . First, step (a) . . . can be performed by a human
who simply reads records of Internet credit card transactions from a
preexisting database.”).
Next claim 1 recites “identify a review portion (up to all) of the
amended in-process biological sequence for comparison with a collection of
stored biological sequences scaffolds.” This again is a mental step in that it
can be done by person simply selection all or part of the sequence received
in the previous step.
Claim 1 next recites “identify, by comparing the review portion to the
collection of stored biological sequence scaffolds, one or more candidate
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biological sequence scaffolds.” Claim 1 goes on the recited the criteria used
to select the candidate biological sequence scaffolds. Again this step can be
performed by the human mind as it involved observation and comparison.
The remaining instructions recited in claim 1 such as provide a
graphically representation of the candidate sequence, receive an indication
of selection of the sequence and appending the selected sequence to the in-
process sequence fail to distinguish the steps of the claim from the mental
process.
In summary, each of the steps of claim 1 encompasses a “concept []
performed in the human mind (including an observation, evaluation,
judgment, opinion)”; i.e., a mental process. 84 Fed. Reg. at 52.
Furthermore, the additional elements do not reflect an improvement in the
functioning of the computer or any other technology; apply the judicial
exception to effect a particular treatment or prophylaxis of a disease/medical
condition; apply the judicial exception to effect a transformation or
reduction of a particular article to a different state or thing; or apply or use
the judicial exception in some other meaningful way beyond generally
linking it to a particular technological environment. Thus, we agree with the
Examiner that claim 1 recites an abstract idea.
Step 2A, Prong Two
Following the Revised Guidance, we next consider whether “the claim
as a whole integrates the recited judicial exception into a practical
application of the exception”; i.e., whether the claim “appl[ies], rel[ies] on,
or use[s] the judicial exception in a manner that imposes a meaningful limit
on the judicial exception.” 84 Fed. Reg. at 54. This analysis includes
“[i]dentifying whether there are any additional elements recited in the claim
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beyond the judicial exception(s)” and “evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.” Id. at 54–55.
As noted above, the instructions recited in claim 1 are implemented
using a processor and a graphical display. However, the claim only requires
a generic processor to carry of the recited instructions and a generic
graphical display to show the results. Consistent with claim 1 the
Specification states “the systems, methods, and apparatus utilize or include a
tablet computer, a mobile phone device, or any other computer device or
system capable of receiving input.” Spec. ¶ 4. The Specification also states
that “[t]he computing device may be, for example, a personal computer, a
workstation, a tablet computer (e.g., an Apple® IPad® by Apple Inc. of
Cupertino, CA), or a mobile phone device.” Id. ¶ 32.
Thus, the claimed method does not use the recited abstract idea in
conjunction with a particular machine or manufacture, but instead simply
“includes instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea.” 84 Fed. Reg.
at 55. Because claim 1 recites an abstract idea and does not integrate the
abstract idea into a practical application, it is directed to an abstract idea.
Step 2(B)
Finally, the Revised Guidance directs us to consider whether claim 1
includes “additional elements . . . [that] provide[] ‘significantly more’ than
the recited judicial exception.” 84 Fed. Reg. at 56. The Revised Guidance
states that an additional element that “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
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at a high level of generality, to the judicial exception, . . . is indicative that
an inventive concept may not be present.” Id.
Here, as discussed above, claim 1 is directed to an abstract idea, and
includes only routine and conventional computer functions, recited at a high
level of generality, to implement that idea. Claim 1 does not recite, and the
Specification does not describe, any unconventional computer hardware or
software as being necessary for the claimed method. Nor does the claim
include, for example, any unconventional data gathering steps or other
unconventional subject matter. See id.
Therefore, claim 1 requires using only a generic computer system, and
“the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at
223. The combination of elements recited in the method of claim 1 does not
amount to significantly more than the judicial exception itself, and under
35 U.S.C. § 101 the claimed method is ineligible for patenting.
Appellant’s Arguments
Appellant contends “the approach of the instant claimed subject
matter also improves the complex, lengthy, and error-prone process
previously used to create graphical representations, in this case, of biological
sequences, by hand.” Appeal Br. 14. Appellant contends that the claims
process “effectively automat[es] part of the preexisting manual approach.”
Appellant contends that the present claim is similar to the claims in McRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)
(“McRO”).
We do not agree that instant claim 1 is analogous to the invention
claimed in McRO. Rather, “[t]he claims here are ineligible because their
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innovation is an innovation in ineligible subject matter.” SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). As in SAP, “the
advance lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm. An advance of that nature
is ineligible for patenting.” Id.
The SAP court distinguished that case from McRO as follows:
The claims in McRO were directed to the creation of something
physical—namely, the display of “lip synchronization and
facial expressions” of animated characters on screens for
viewing by human eyes. [McRO, 837 F.3d] at 1313. The
claimed improvement was to how the physical display operated
(to produce better quality images), unlike (what is present here)
a claimed improvement in a mathematical technique with no
improved display mechanism.

Id. at 1167. The same distinction holds true here: Appellant claims an
improved technique for analyzing biological sequence data, with no creation
of something physical like an improved display mechanism.
Therefore, McRO does not support the patent eligibility of Appellant’s
claims.
Appellant contends that like McRO, the current invention does result
in an improved graphical representation in that the representation is more
complete. Appeal Br. 17. We are not persuaded by this argument. In
McRO, the result of the process was an improve quality of the representation
of a lip-sync character, a change on the appearance of the graphic
representation. McRO, 837 F.3d at 1313. In the present invention, the only
change is a presentation of a more complete data set. Appeal Br. 17. No
change in the appearance of the data occurs. As the Examiner points out the
“The recited steps involving data gather[ing] from user selection and
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displayed information fails to delineate anything significantly more than
routine and conventional input/output procedures delineated only by the
information content involve in said procedure. There is no improvement the
computer or any component involved in performing the recited process.”
Ans. 11.
Claims 16 and 18
While claims 16 and 18 have been argued separately, Appellant’s
arguments are that they are analogous to claim 1 and are patentable for the
same reasons. Appeal Br. 30–31. For the reasons states above, we find
these claims are directed to patent ineligible subject matter.
Conclusion
We conclude that the Examiner has properly determined that claims 1,
16, and 18 are directed to patent ineligible subject matter under 35 U.S.C.
§ 101. Claims 2, 4, 5, 10–15, 17, and 19–21 were not argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
WRITTEN DESCRIPTION
The issue with respect to this rejection is whether the Examiner has
properly determined that the claims recite subject matter that is not described
in the specification such as to reasonably convey to one skilled in the art that
the inventor had the invention in his possession at the time the application
was filed.
The Examiner finds that while the claims set for the use of a processor
and a graphical display, the claims only set forth the objective results to be
achieved by these elements. Non-Final Act. 6. The Examiner finds that the
claims invoke an interpretation under 35 U.S.C. §112, sixth paragraph. Id.
The Examiner finds that while the claims do not expressly recited the terms
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means for or steps for, the claims recite terms that are purely functional in
nature without reciting any structure for performing that function. Id.
The Examiner finds
The instant specification does not provide the specific
algorithm, specific algorithmic procedures or their prose
equivalents that is required as the disclosed “structure” for these
computer implemented functions. Therefore, the instant
disclosure is inadequate as it fails specify any structure
corresponding to the means as instantly claimed. It is further
noted that the recent CAFC decision in Biomedino v. Waters
Technology (Fed. Cir. 2007) held that the structure must be
disclosed in the specification even if one of skill in the art could
implement a structure without such a disclosure.

Id. at 6–7.
Appellant contends that one skilled in the art would know what is
meant by the functional terms recited in the claims and that there is no need
to describe the algorithms which perform those functions. Appeal Br. 32.
Appellant also contends that the claims should not be construed as
containing means plus function limitations as the limitations are not stated in
mean plus function format and that the claims recited a sufficiently defined
structure for performing the function. Id. at 34. Appellant contends that
claim 1 recites a memory for storing instructions and a processor for
performing the instructions as well as specific limitations as to how the
processor performs those instructions. Id. Appellant contends that this
demonstrates that the claims recite sufficient structure to preclude construing
the claims as including means plus function claims. Id. at 35.
Appellant contends that even if the claims were construed as
containing means plus function limitations, the Specification provides
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adequate disclosure of the equipment that can be used to proactive the
invention as well as specific, detailed examples of the processes used to
perform the various steps in the instructions. Id at 36–39.
Means plus function
We begin by analyzing whether the Examiner properly construed the
claims as invoking means plus function limitations. While we agree with
Appellant that the claims do not contain limitations in a means plus function
format, that does not end the inquiry. While the absence of the term
“means” normally triggers a presumption that the limitation should not be
construed as a means plus function limitation, that presumption can be
overcome by showing that the claim recites a generic pace holder or nonce
term which has no specific structural meaning.
Claim 1 recites “a processor for executing the set of instructions.”
“Processor” may not be a nonce word, but the term “processor for executing
the set of instruction” does not set forth or connote sufficient structure for
performing the recited functions to prevent applicability of § 112, sixth
paragraph, which “is intended to prevent such pure functional claiming.”
Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1317 (Fed. Cir. 2012). We
agree with the Examiner that the claims are properly construed as containing
means plus function limitations.
Adequate Written Description
Having determined that the claims are properly construed as including
means plus function limitations, we now turn to the issue of whether there is
adequate written description for those limitations.
A description adequate to satisfy 35 U.S.C. § 112, first paragraph,
“must ‘clearly allow persons of ordinary skill in the art to recognize that [the
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inventor] invented what is claimed.’ In other words, the test for sufficiency
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation omitted, alteration
in original).
The Federal Circuit emphasized that “[t]he written description
requirement is not met if the specification merely describes a ‘desired
result.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671,
682 (Fed. Cir. 2015) (quoting Ariad, 598 F.3d at 1349). Thus, in applying
this standard to the computer-implemented functional claim at issue, the
Federal Circuit stated that “[t]he more telling question is whether the
specification shows possession by the inventor of how [the claimed
function] is achieved.” Vasudevan, 782 F.3d at 683.
For computer-implemented functional claims, the determination of the
sufficiency of the disclosure will require an inquiry into the sufficiency of
both the disclosed hardware and the disclosed software (i.e., ‘‘how [the
claimed function] is achieved,” Vasudevan, 782 F.3d at 683), due to the
interrelationship and interdependence of computer hardware and software.
Upon careful consideration of the arguments advanced by Appellant
and the Examiner’s response as well as the teachings of the Specification,
we conclude that the Examiner has the better positon. As the Examiner
points out, the Specification does not include any specific algorithms or
prose equivalents to show how to perform the recited instructions. Non-
Final Act. 6–7.
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Appellant contends that one skilled in the art would understand what
is required for each step of the instructions, especially in light of the flow
diagram in Figure 5. Appeal Br. 32. Appellant contends that is it not
necessary to provide the specific algorithms to execute each instruction. Id.
We are not convinced by Appellant’s argument. We agree with the
Examiner that Appellant appear to confuse the standard for enablement with
that for adequate written description.
While both requirements view the claim from the vantage of one
skilled in the art, the inquiries are different. In the case of enablement, the
knowledge of one skilled in the art can be used to supplement the disclosure.
“The enablement requirement is often more indulgent than the written
description requirement. The specification need not explicitly teach those in
the art to make and use the invention; the requirement is satisfied if, given
what they already know, the specification teaches those in the art enough
that they can make and use the invention without ‘undue experimentation.’”
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334, (Fed.
Cir. 2003).
The question of whether there is an adequate written description
focuses on what one skilled in the art would understand reading the
specification. “[T]he test requires an objective inquiry into the four corners
of the specification from the perspective of a person of ordinary skill in the
art. Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Ariad, 598 F.3d at 1351. In determining
the issue of whether the written description is adequate, it is the specification
itself and not the knowledge of one skilled in the art which is determinative.
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In the present case, while the Specification appears to adequately
describe the hardware that can be used, we agree with the Examiner that the
Specification fails to set forth the software or algorithms that can be used.
Ans. 13.
Appellant contends that the flow diagram of Figure 5, reproduced
below, provides the necessary algorithm. Appeal Br. 34, Reply Br. 8.

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Figure 5 of the present application showing a flow chart of an example of
the claimed method.

Appellant’s argument is unpersuasive. Figure 5 and the
accompanying text in the Specification “only outlines the decisions that are
to be made and the expected functions and actions that the computer system
to automatically implement. This does not provide any specific or detailed
description of how the computer system solves the problems assigned to it or
otherwise achieve the special purpose functions prescribed by the claims.”
Ans. 12–13.
We conclude that the Examiner has properly determined that the
claims do not meet the written description requirement.
INDEFINITENESS
The issue with respect to this rejection is whether the Examiner has
properly determined that the claims are indefinite.
The Examiner reiterates the finding that the claims invoke
interpretation as means plus function claims. Non-Final Act. 8. The
Examiner finds that the Specification does not provide a “specific algorithm,
specific algorithmic procedures or their prose equivalents that is required as
the disclosed ‘structure’ for these computer implemented functions.
Therefore, the instant disclosure is inadequate as it fails specify any structure
corresponding to the means as instantly claimed.” Id. at 9.
Appellant contends that the claims should not be interpreted as means
plus function claims. Appeal Br. 40–41.
For a computer-implemented 35 U.S.C. § 112 sixth paragraph claim
limitation, the specification must disclose an algorithm for performing the
Appeal 2018-003849
Application 13/714,312

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claimed specific computer function, or else the claim is indefinite under
35 U.S.C. § 112, second paragraph. See Net MoneyIN, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1367 (Fed. Cir. 2008). In cases ‘‘involving a special purpose
computer-implemented means-plus function limitation, ‘[the Federal Circuit]
has consistently required that the structure disclosed in the specification be
more than simply a general purpose computer or microprocessor’ and that
the specification must disclose an algorithm for performing the claimed
function.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir.
2012).
As discussed above, we agree with the Examiner’s finding that the
claims invoke an interpretation as means plus function claims. We also
agree with the Examiner that the Specification fails to provide a specific
algorithm or equivalent description as to how to accomplish the recited
functions. Therefore, we affirm this rejection.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5,
10–22
101 Eligibility 1, 2, 4, 5,
10–22

1, 2, 4, 5,
10–22
112, first
paragraph
Written description 1, 2, 4, 5,
10–22

1, 2, 4, 5,
10–22
112 second
paragraph
Indefiniteness 1, 2, 4, 5,
10–22

Overall
Outcome
1, 2, 4, 5,
10–22

AFFIRMED