Please Find Below And/or Attached An Office Communication Concerning This Application or Proceeding
Please Find Below And/or Attached An Office Communication Concerning This Application or Proceeding
Please Find Below And/or Attached An Office Communication Concerning This Application or Proceeding
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
7590 04/30/2018
EXAMINER
MySkin, Inc.
123 Town Square Place, Suite 324 JANG, CHRISTIAN YONGKYUN
3735
04/30/2018 PAPER
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.
Appeal2016-004417
Application 13/036,783
Technology Center 3700
DECISION ON APPEAL
Appeal2016-004417
Application 13/036,783
DISCUSSION
The Rejection of Claims 27-34
as Directed to Non-statutory Subject Matter
The Supreme Court set forth a "framework for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 71-72 (2012)).
According to the Supreme Court's framework, we must first determine
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). Id. If so, we must secondly
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Id. The Supreme
Court characterizes the second step of the analysis as "a search for an
'inventive concept' - i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Id. (alteration in
original). To transform an abstract idea into a patent-eligible concept, the
claims require "more than simply stating the abstract idea while adding the
words 'apply it."' Id. at 2357 (citations omitted).
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Application 13/036,783
Appellants' argument that the Examiner "has failed to produce prior art for
optomagnetic fingerprinting, and therefore any device utilized would not be
considered part of an insignificant extra-solution activity," the Examiner
merely states that "optomagnetic fingerprinting itself is disclosed in
disclosures dating back to 2008, prior to the effective filing date of the
instant claims." Ans. 3.
The Examiner's analysis of the second step of the Alice analysis is
conclusory and unsupported. The Examiner does not persuasively explain
why or how subjecting the first and second sublayers of a person's epidermis
to optomagnetic fingerprinting recited in claim limitations 27a-b are steps of
"data gathering" or "insignificant post-solution activity." Similarly, the
Examiner identifies no support for the finding that "optomagnetic
fingerprinting itself is disclosed in disclosures dating back to 2008" or that
subjecting first and second epidermis sublayers is known in the art. Simply
because the additional element of optomagnetic fingerprinting may appear in
a prior disclosure is not adequate to show that the additional element would
not be an activity sufficient to transform a claim into a patent-eligible
application of an abstract idea. See Berkheimer v. HP Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018) (cautioning that "[t]he mere fact that something is
disclosed in a piece of prior art[] does not mean it was well-understood,
routine and conventional").
Thus, the Examiner does not properly consider the elements of claims
27-34, both individually and "as an ordered combination," to determine
whether the additional elements transform the Examiner's asserted abstract
idea into a patent-eligible application.
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Appeal2016-004417
Application 13/036,783
DECISION
For the above reasons, the Examiner's rejection of claims 27-34
under 35 U.S.C. § 101 is REVERSED.
REVERSED