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Ex Parte Jeffrey A. Seder

Representative Claim

  1. A method of selecting an unraced racehorse candidate having a better than average likelihood of becoming a high earner, said method comprising:

(i) measuring the width of the ventricular septal wall of said racehorse candidate utilizing an ultrasound machine;

(ii) comparing said measurement to a collection of ultrasonographically-obtained measurements from a group of horses, wherein said collection of measurements comprises ventricular septal wall width measurements for at least about 75 horses of about the same age, sex, and weight as said racehorse candidate; and

(iii) selecting said racehorse candidate if it has an ultrasonographically-obtained ventricular septal wall width measurement that is greater than the mean ultrasonographically-obtained ventricular septal wall width measurement from said collection of measurements.

Posture:

Appellate review of examiner’s decision to reject the claims.

Abstract Idea: Yes

The Board agreed with the Examiner that representative claim 1 of the ’571 Application is directed to the abstract idea algorithmically “selecting a racehorse candidate based on comparing the width of the potential candidate’s ventricular septal wall to the mean value of the measurements of similar horses.”  No detailed analysis was provided[1], the Board merely stated:

“Claim 1 sets forth three steps, which can be summarized as follows: (1) measuring part of a horse’s heart using an ultrasound machine; (2) comparing that measurement to similar measurements from a group of horses; (3) selecting a horse as a racehorse candidate if the horse’s measurement is greater than the mean of the group. See Appeal Br. 4 (similarly summarizing claims 1-25).”

[1] Presumably, because the Appellant acknowledged that the claims were drawn to the use of an algorithm.

Something More: No

The Board considered the claim elements individually and as an ordered combination, yet could not find any additional elements to “transform the nature of the claim into a patent-eligible application” of the above-described abstract idea.

“Here, the second and third steps of claim 1 . . . are no more than steps reciting the algorithm.  And the first step . . . is no more than a data-gathering step required by the ‘subsequent algorithm’.”

“Moreover, to consider the three steps as an ordered combination adds nothing to the abstract idea that is not already present when the steps are considered separately. Anyone who wants to use the identified algorithm must first measure a horse’s ventricular septal wall, and then compare that measurement with similar measurements of other horses, before selecting a candidate based on the prior comparison. Thus, the combination amounts to nothing significantly more than instructions to apply the abstract idea. See Mayo, 132 S. Ct. at 1298.”

Appellant’s argument that claim 1 is rendered patent eligible because the first step must be performed utilizing an ultrasound machine was rejected.  Instead, the Board agreed with the examiner that the use of a general-purpose ultrasound machine to gather data does not involve more than insignificant extra-solution activity.  The Board went on to state:

Appellant also contends that the “measuring” step is more than “insignificant extra-solution activity” because “the ultrasound machine is integral to the claim–[i.e.,] without the involvement of the ultrasound machine, a user could not perform the steps of the claim.” Reply Br. 4. That a “machine-related” step is recited in a claim, however, does not show that the step is any more than routine and conventional, as here. See Alice, 134 S. Ct. at 2359-60. Concluding otherwise would risk interpreting § 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.”’ Mayo, 132 S. Ct. at 1294 (quoting Parker v. Flook, 437 U.S. 584, 593 (1978)).