In Re GOPALAN

• Court: Court of Appeals for the Federal Circuit
• Decided: April 13, 2020
• Docket: 19-2070
• Status: Unpublished

Opinion

Case: 19-2070 Document: 39 Page: 1 Filed: 04/13/2020

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

IN RE: SURESH GOPALAN, Appellant ______________________

2019-2070 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 13/926,096. ______________________

Decided: April 13, 2020 ______________________

SURESH GOPALAN, Cambridge, MA, pro se.

MOLLY R. SILFEN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for appellee Andrei Iancu. Also represented by THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA YASMEEN RASHEED. ______________________

Before MOORE, CLEVENGER, and CHEN, Circuit Judges. CHEN, Circuit Judge. Suresh Gopalan seeks review of a Patent Trial and Ap- peal Board (Board) decision affirming the examiner’s rejec- tion of all pending claims of his U.S. Patent Application No. 13/926,096 (the ’096 Application) under 35 U.S.C. § 101. See Ex Parte Suresh Gopalan, No. 2018–003363, 2019 WL Case: 19-2070 Document: 39 Page: 2 Filed: 04/13/2020

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764513 (P.T.A.B. Jan. 31, 2019). Because we agree with the Board that the claims are directed to an ineligible ab- stract idea, we affirm. BACKGROUND In June 2013, Mr. Gopalan filed the ’096 Application, which is generally directed to methods and systems for de- signing measurement strategies. J.A. 58–127. The speci- fication theorizes that the number of independent measures to be taken of a parameter of interest might be optimized for the number of true positives and false posi- tives detected in the resulting data set. J.A. 64. In the context of measuring spectral signals, such as from fluores- cent probes for detecting gene transcripts, the specification explains that these independent measurements can be made at different parts of an emission spectrum. J.A. 63. The ’096 Application’s claims purport to provide a method for designing a measurement strategy that starts with a data set, applies an undefined optimization tech- nique “resulting” in an optimal combination of true posi- tives and false positives, and outputs the optimal number of measurements. Claim 1 is representative: 1. A computer implemented method for-devising spectrally based measurements, wherein a signal is measured at different point along a spectrum, the method comprising the steps of: [1] selecting a number of measurements along the spectrum, constituting at least one data set; [2] selecting a metric for determining sub- stantially optimal combination of true pos- itives and false positives in said at least one data set; [3] applying an optimization technique; and Case: 19-2070 Document: 39 Page: 3 Filed: 04/13/2020

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[4] obtaining, from the results of the opti- mization technique, a value for at least one optimization parameter, said value for at least one optimization parameter resulting in substantially optimal combination of true positives and false positives; wherein the obtaining at least one optimization pa- rameter comprises obtaining a value of a number of independent measures; wherein obtaining a value of a number of independ- ent measures comprises obtaining at least one combination of a value of a number of independent measures and a value for a confidence measure; said independent measures comprising measures of a param- eter of spectral property being measured obtained using different measurement cri- teria; [5] implementing a measurement strategy by placement of sensors or design of compo- nents that allow design of measurement by sensors to implement the number of inde- pendent measures; wherein the measure- ment strategy for the spectrally based measurements results from the number of independent measures; [6] wherein a number of true positives and false positives are a function of at least one combination of the number of independent measures and the confidence measure; and [7] wherein the steps of selecting a metric, applying an optimization technique, and obtaining, from the results of the optimiza- tion technique, a value are performed by means of a non-transitory computer usable medium having computer readable code Case: 19-2070 Document: 39 Page: 4 Filed: 04/13/2020

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that causes a processor to perform the steps; [8] whereby such measurement are used in systems used in applications including nu- cleic acid sequencing, high spatial density measurement of spectrally based measure- ment, including fluorescence, based signals using scanners and cameras including for nucleic acid and protein measurements. ’096 Application at claim 1 (numbering added). The preamble of claim 1 reveals that the claimed method is a design strategy for “spectrally based measure- ments.” The measurement strategy begins with [1] select- ing a number of measurements along a spectrum that constitutes at least one data set. Then the claim recites [2] selecting a metric for the purpose and desired result of ob- taining a substantially optimal combination of true posi- tives and false positives in the data set. But the claims are not limited to any specific “metric,” nor do they specify any metric’s use to achieve the desired result. The claim next recites [3] applying an optimization technique, which is [7] performed on a generic computer, and [4] obtaining the desired result of the optimization technique, i.e., a value for at least one optimization param- eter “resulting in substantially optimal combination of true positives and false positives.” The claim states that obtain- ing this value for the optimization parameter includes ob- taining a value of a number of independent measures, which, in turn, includes obtaining a combination of a value of independent measures and a value for a confidence measure. According to the claim, [6] “a number of true pos- itives and false positives are a function of at least one com- bination of the number of independent measures and the confidence measure.” None of these variables—the metric, the optimization technique, the value for the optimization parameter, the value of the number of independent Case: 19-2070 Document: 39 Page: 5 Filed: 04/13/2020

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measures, or the value for the confidence measure—are de- fined in the claims. The claims do not specify the use of these variables, but instead merely claim the desired result of optimizing the number of true positives and false posi- tives. The claim then recites [5] implementing the measure- ment strategy based on the value of the number of inde- pendent measures by placing sensors or design components. But neither the claims nor specification con- tain any concrete specificity regarding the placement or de- sign of the sensors or components. The final limitation does not meaningfully limit the claim, as it recites [8] using the measurement strategy in applications optionally in- cluding nucleic acid sequencing and high spatial density measurement of spectrally based measurement. The examiner rejected all pending claims under § 101 as being directed to the abstract ideas of collecting and or- ganizing data and the mathematical concept of optimiza- tion. J.A. 601–03. Proceeding to step two of Alice, the examiner found that the claim elements do not provide any “inventive concept” that transforms the abstract idea into a patent-eligible application; rather, the claims require no more than the performance of generic functions that were well-understood, routine, and conventional. J.A. 603, 607– 08. Mr. Gopalan appealed the examiner’s rejection to the Board. The Board affirmed the examiner’s § 101 rejection in an initial decision on appeal in January 2019 and a sub- sequent rehearing decision in May 2019. Gopalan, 2019 WL 764513, at *14; J.A. 26–33. Mr. Gopalan appeals the Board’s decision. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). DISCUSSION Patent eligibility under 35 U.S.C. § 101 is a question of law that may contain underlying issues of fact. Interval Case: 19-2070 Document: 39 Page: 6 Filed: 04/13/2020

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Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)). We review an ultimate conclusion on pa- tent eligibility de novo. See id. Section 101 allows inventors to obtain patents on “any new and useful process, machine, manufacture, or compo- sition of matter, or any new and useful improvement thereof.” § 101. However, “this provision contains an im- portant implicit exception”: an inventor may not patent laws of nature, natural phenomena, or abstract ideas. Al- ice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). To assess whether a patent claim violates this ex- ception to the terms of § 101, the Supreme Court has set forth a two-step framework, in which a court determines: (1) whether the claim is “directed to a patent-ineligible con- cept,” i.e., a law of nature, natural phenomenon, or abstract idea, and, if so, (2) whether the elements of the claim, con- sidered “both individually and ‘as an ordered combina- tion,’” add enough to “‘transform the nature of the claim’ into a patent-eligible application.” Id. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012)). A. Alice Step 1: Abstract Idea Reading the claims in light of the specification, the Board agreed with the examiner that the claims at issue “are directed to the abstract idea of using algorithms or mathematical relationships to devise a measurement strat- egy for spectrally based measurements.” Gopalan, 2019 WL 764513, at *9. As the Board explained, this court has held that claims focused on analyzing information using mathematical algorithms are directed to an abstract idea. Id. at *10; see, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (finding claims di- rected to an abstract idea because “[t]he advance they pur- port to make is a process of gathering and analyzing information of a specified content, then displaying the Case: 19-2070 Document: 39 Page: 7 Filed: 04/13/2020

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results, and not any particular assertedly inventive tech- nology for performing those functions”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (find- ing claims “focused . . . on selecting certain information, an- alyzing it using mathematical techniques, and reporting or displaying the results of the analysis” are directed to an abstract idea). Mr. Gopalan argues that his claimed invention results in optimizing “the number of true positives and false posi- tives . . . such as to avoid or reduce the effect of stray sig- nals” “in spectrally based measurements,” which he claims is a “novel and useful result obtained with the help of opti- mization.” Appellant’s Br. at 12, 14, 22. But, as the Board correctly found, the claims are recited at a “high level of generality [that] does not limit the claims to rules with spe- cific characteristics.” Gopalan, 2019 WL 764513, at *13 (explaining that “[a]lthough mathematical relationships and algorithms are implicated in the recitations of [the in- dependent] claims, these claims do not actually recite any particular rules”). The claims only generically recite “a metric,” “an opti- mization technique,” an “optimization parameter,” “a value of a number of independent measures,” and “a value for a confidence measure.” None of these variables are defined, and the claims do not concretely limit these variables such that the claims do not merely claim the result of obtaining a “substantially optimal combination of true positives and false positives” in the data set. Thus, the claims do not “embody a concrete solution to a problem” because they lack “the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.” Interval Licensing, 896 F.3d at 1343 (citing SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021–22 (Fed. Cir. 2018) (collecting cases)). In- deed, the claims provide result-oriented limitations like others we have held to be directed to abstract ideas. See Case: 19-2070 Document: 39 Page: 8 Filed: 04/13/2020

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Elec. Power Grp., 830 F.3d at 1356 (“Indeed, the essentially result-focused, functional character of claim language has been a frequent feature of claims held ineligible under § 101, especially in the area of using generic computer and network technology to carry out economic transactions.”); Interval Licensing, 896 F.3d at 1345 (finding claim directed to “non-interfering display of two information sets, without any limitation on how to produce that result” to be ineligi- ble). B. Alice Step 2: Inventive Concept Nor do the claims recite any transformative inventive concept. We agree with the Board “that the additional ele- ments of [the independent] claims . . . , both individually and as an ordered combination, do not integrate . . . [the] abstract concepts, into a practical application.” Gopalan, 2019 WL 764513, at *11. The Board also correctly reasoned that performing the steps of the optimization technique “on a generic processor does not transform it into a patentable apparatus.” Id. at *12. Further, the limitation “implementing a measurement strategy [based on the number of independent measures] by placement of sensors or design components” is recited at “a high level of generality” with no details concerning how the sensors or components are placed or their design, as the Board explained. Id. at *11; J.A. 32. Indeed, the specifica- tion does not recite any particular sensor placement or de- sign, only generally stating that the specification’s “teachings can be applied . . . us[ing] offset measures of sensor based measurements” through “placement of sen- sors or design aberrations.” J.A. 64 ¶33. And Gopalan con- cedes that implementing the measurement strategy was well-known, because “anyone of skill in the art” would have known how to place the sensors to make the appropriate measurements once the measurement strategy was de- signed. Appellant’s Br. at 8, 19. Case: 19-2070 Document: 39 Page: 9 Filed: 04/13/2020

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CONCLUSION We have considered Mr. Gopalan’s remaining argu- ments and find them unpersuasive. For the foregoing rea- sons, we conclude that the claims are ineligible under § 101 and affirm the decision of the Board. AFFIRMED COSTS No costs.