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NOTE: This disposition is nonprecedential.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
2 IN RE: GOPALAN
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
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IN RE: GOPALAN 3
[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
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4 IN RE: GOPALAN
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
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IN RE: GOPALAN 5
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
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6 IN RE: GOPALAN
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
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IN RE: GOPALAN 7
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
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8 IN RE: GOPALAN
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.
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IN RE: GOPALAN 9
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.