Wednesday, August 24, 2016

PTAB Reverses Examiner’s Patent-Ineligible Subject Matter Rejection of Method Claims for Using Multi-Pixels Spectral Images to Identify Microorganisms

Takeaway: The PTAB reversed an Examiner's rejection of claims for utilizing multi-pixel spectral images to identify microorganisms under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.  In part, the PTAB focused on the practical application of the claimed subject matter to find that the claims do not preempt the abstract idea or any natural law.  (Ex parte Ismail, Appeal No. 2014-005477, PTAB, July 1, 2016).
Ex parte Ismail
Appeal 2014-005477; Application No. 11/630,856; Technology Center 1600
Decided: July 1, 2016
Details:  In Ex parte Ismail, the PTAB reversed an Examiner’s rejection of claims for using multi-pixels spectral images to identify microorganisms under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
Claim 1, which is representative of the claimed subject matter, recites:
1. A method for characterizing a microorganism said method comprising:
a) obtaining at least one multi-pixels spectral image of a sample of said microorganism, wherein each pixel of said multi-pixels spectral image has a corresponding spectrum;
b) selecting one or more spectra from said multi-pixels spectral image, wherein said selecting is based on one or more spectral characteristics of said corresponding spectrum; and
c) identifying said microorganism by comparing said one or more selected spectra with spectra of reference microorganisms from a database to determine an identity of said microorganism.
At step one of the Alice/Mayo framework, the Examiner found that the claims were directed to the abstract idea of data manipulation.  More specifically, the Examiner found that the claims recite “methods for characterizing a microorganism by determining an identity of an organism” through “empirical and data analysis and acquisition steps [that] are well-understood, conventional, and routine in diagnosing imaging microorganisms.”   Additionally, the Examiner found “there is no clear-cut practical application of the objective of the claim” and thus concludes the claims are drawn to a patent-ineligible “law of nature/natural principle.”  The Examiner then went on to find that the claims “recite neither a physical transformation nor a critical tie of a significant step to a particular machine.”
The PTAB agreed with the Appellant in finding that the Examiner did not persuasively show that the claims, considered in their entirety, are limited to an abstract idea or natural principle. For example the Appellants argued that the claim limitations of claim 1 require obtaining a multi-pixels spectral image of a sample and then selecting a spectra from that image based on its spectral characteristics.  Additionally, the claim limitations required that selected spectral data of the sample be compared with spectral data of reference microorganisms in a database to identify the sample microorganism.  The Appellants argued that these limitations tied the claim to a particular machine and that comparing spectra from pixels of the image with spectra from a database is not merely a mental process as argued by the Examiner.  For instance, the Examiner argued that the “body of independent claim 1 relies on image data analysis of image data … [that] may be interpreted to be obtained empirically.”  However, the PTAB found that the Examiner did not adequately explain this contention to find that the claimed subject matter was not an abstract idea under step one of the Alice/Mayo framework.
The PTAB then addressed the claimed subject matter under step two of the Alice/Mayo framework (whether the claimed subject matter includes an “inventive concept”).  Similar to the findings with respect to step one, the PTAB was unconvinced that the Examiner set forth reasoning that the “steps recited in the claims are so conventional and routine that the claims, in their entirety, lack any inventive concept.” For this portion, the PTAB seemed to focus on whether the claims would wholly preempt “access to the building block itself.” More specifically, the PTAB stated that “the Examiner has not persuasively demonstrated that the claim elements here add nothing of substance such that the claims stand to preempt any law of nature or abstract idea alone.”  In contrast, the PTAB found that “the rejected claims include multiple steps directed to a practical application of a particular type of spectral-image analysis.”
Based upon these findings, the PTAB reversed the Examiner’s rejections of the claims as being directed to patent-ineligible subject matter.
My two cents:  In line with the decision in BASCOM, the PTAB and courts are starting to focus on whether the claims are directed to a practical application of the alleged abstract idea or whether the claims encompass the abstract idea (and thus preempt that abstract idea).  Applicants may wish to utilize these type of arguments, as it appears that some decisions are relying on the practical application aspect of the claimed subject matter.  


  1. The sad part is that inventors should bring their case to the PTAB to decide on issues that are completely clear-cut by the statute, and were made up by the Courts. Courts making up the Law are destructive in any field, and modern democracies should find a way to combat this situation, or they are doomed.

  2. Tell me, if one were to replace "micro-organism" with "object" would the claim be novel? I assume not. So the "invention" is identifying a micro-organism the same way you would identify any other object, namely, by looking at it and comparing what you see with a collection of stored images in a book.

    There has to be some effective and efficient way to stop people getting 20 years of exclusive rights on such non-inventions.

    1. "There has to be some effective and efficient way to stop people getting 20 years of exclusive rights on such non-inventions."

      Yes, there is an effective and efficient way: 102 and 103. The problem has arisen that 101 criteria has become confounded with 102 and 103 criteria.

  3. The question is not are the claims patentable as being either novel or non-obvious. Rather, the question is whether the subject matter of the claims is patentable subject matter under 101. The current fad for rejecting almost anything as being directed to an abstract idea completely distorts the history of patentability going back at least as far as Morse.

  4. The application of section 101 "jurisprudence" is simply out of control. I saw one accused infringer argue that a drill bit used in oil wells was ineligible as being "directed to the abstract idea of rotation." Thankfully the trial court judge denied their motion.

    It's going to take a change to 35 USC to fix this. And that's very unlikely to happen. So we'll have to fight on.

  5. Going to need a change to 35 USC? I don't agree. Now you all know the Rules of the 101 Game, you can draft to get past that filter.

    1. Ah ... who's rules? The Examiner's? The PTAB's? The CAFC's? The Supreme Court's During which phase of the moon? I agree that 35 USC needs to be changed to bring us into the 21st century.