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         NOTE: This disposition is nonprecedential.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
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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.
