In a previous post, we defined what a good bioinformatics claim looks like. Such a claim does not suffer from divided infringement issues and it does not recite steps to be performed by hospitals or doctors (e.g., medical procedures, administration of therapies) for maximum damages. We also reported that the US Patent Office resists granting such claims, alleging a lack of statutory subject matter. Here, we report on the PTAB continuing a trend of reversing such rejections of these types of claims.
In Ex parte Shioyama, Appeal No. 2016-001637 (PTAB October 20, 2017), claims recited a cell analyzer for determining a malignancy grade of cancer. While the representative claim is an apparatus claim (i.e., cell analyzer), the claim set also included a method claim. See representative claim below.
The Board reversed the abstract idea under step 1. In its reasoning, the Board held that the Examiner failed to provide evidence to support a prima facie case of lack of patentable subject matter. Drawing support from Enfish, the Board looked to the specification to analyze the claimed invention. It agreed with the appellant that “there is something more than a mere abstract idea”.
In its holding, the Board’s overturned the Examiner’s rejection (including that the abstract idea is routine and conventional) for not being supported by sufficient objective evidence. The Board recharacterized the alleged abstract idea. Instead of “determining the malignancy of a sample by analyzing a histogram”, as asserted by the Examiner, the Board found that the claim was directed to the abstract idea of “configuring a conventional processor to obtain a number of strong area cells that are distributed in an area where the fluorescence intensity is stronger than normal cells, and determine a malignancy grade of cancer using the number of strong-area cells and the histogram.” The Board then found that in light of these elements missing from the Examiner’s asserted abstract idea, the abstract idea claim step was not routine and conventional.
The Board made it very clear that the burden to provide evidence that an alleged abstract idea is routine and conventional is squarely on the Examiner’s shoulders.
Another interesting note about this representative claim relates to the word count. The Anticipat team has been informally observing claims where the Board has reversed abstract idea rejections to see if any patterns jump out. But with the various technical fields from which these claims arise, the relatively small sample size of these claims, and diverse claim drafting styles for these claims, the most telling pattern we found for predicting a patent-eligible claim was word count. That is, the longer the claim, the more likely the Board will overturn an Examiner’s Section 101 rejection. Here, however, this claim certainly bucks this theory that a hefty word count is needed for a patent-eligible claim, the representative claim having only 85 words. See below. It turns out brevity and patent-eligibility can go hand in hand.
And while we’re on the topic of predicting patent-eligibility, yes we checked “Ask Alice” for this claim, and it outputs a 55% patent-eligible score.
1. A cell analyzer comprising:
a cytometric device which measures cells that are nuclear stained;
a display which displays a histogram of a fluorescence intensity by using a result of the measurement by the cytometric device; and
a computer comprising at least one processor configured to obtain a number of strong area cells that are distributed in an area where the fluorescence intensity is stronger than normal cells, and determine a malignancy grade of cancer using the number of strong-area cells and the histogram.