Biju Jacob et al.Download PDFPatent Trials and Appeals BoardMar 19, 202014927244 - (D) (P.T.A.B. Mar. 19, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/927,244 10/29/2015 Biju Jacob 280862-US-1 (GEMS:0679) 7858 68174 7590 03/19/2020 GE HEALTHCARE c/o FLETCHER YODER, PC P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER LEE, SHUN K ART UNIT PAPER NUMBER 2884 NOTIFICATION DATE DELIVERY MODE 03/19/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docket@fyiplaw.com rariden@fyiplaw.com robinson@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BIJU JACOB, HAO LAI, REMY ANDRE KLAUSZ, and JOHN ERIC TKACZYK Appeal 2018-007960 Application 14/927,244 Technology Center 2800 Before BEVERLY A. FRANKLIN, DONNA M. PRAISS, and LILAN REN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 2–8 and 21–24. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as General Electric Company. Appeal Br. 3. Appeal 2018-007960 Application 14/927,244 2 CLAIMED SUBJECT MATTER Claim 21 is illustrative of Appellant’s subject matter on appeal and is set forth below (with text in bold for emphasis): Claim 21. An imaging method, comprising exposing an object to X-rays during an exposure time interval, wherein the x-rays pass through and around the object and impact a detector comprising a plurality of pixels configured to accumulate charge when exposed to X-rays; during the exposure time interval, at least one of a controller or a processing component sends instructions to readout circuitry to perform one or more non-destructive readout operations on a set of the plurality pixels comprising some or all of the plurality of pixels thereby producing read out pixels; wherein each non-destructive readout operation measures a charge at each read out pixel at the time of the non- destructive readout operation; and wherein each non-destructive readout operation does not reset the overall charge at the read out pixel; processing data from the readout operations in the processing component or in a second processing component to estimate charge accumulation information for a subset of read out pixels that saturate over the exposure time interval; and generating an image using the estimated charge accumulation information for the subset of pixels. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hayashida US 2007/0071171 A1 Mar. 29, 2007 Schemmann US 2009/0251580 A1 Oct. 8, 2009 Tsuji US 2013/0202086 A1 Aug. 8, 2013 Inoue US 2013/0322596 A1 Dec. 5, 2013 Appeal 2018-007960 Application 14/927,244 3 REJECTIONS 1. Claims 2–8 and 21–24 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more. 2. Claims 2, 8, and 21–24 are rejected under 35 U.S.C. § 103 as being unpatentable over Hayashida in view of Schemmann. 3. Claims 3 and 5–7 are rejected under 35 U.S.C. § 103 as being unpatentable over Hayashida in view of Schemmann as applied to claim 21 above, and further in view of Tsuji. 4. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Hayashida in view of Schemmann as applied to claim 21 above, and further in view of Inoue. OPINION Upon consideration of the evidence and each of the respective positions set forth by each party, we find that the preponderance of evidence supports Appellant’s position in the record. We thus reverse the Examiner’s decision to reject the appealed claims for essentially the reasons provided by Appellants in the Appeal Brief and in the Reply Brief, and add the following for emphasis. Rejection 1 A. Standard for Patent Ineligibility With regard to the 35 U.S.C. § 101 rejection, we note that an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit Appeal 2018-007960 Application 14/927,244 4 exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). Appeal 2018-007960 Application 14/927,244 5 In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2018-007960 Application 14/927,244 6 The PTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. B. Analysis For the reasons stated below, and based on the findings and analysis provided by Appellant on pages 16– 20 of the Appeal Brief and pages 7–11 of the Reply Brief, we determine that claim 21 is patent-eligible. We therefore reverse the Examiner’s rejection under 35U.S.C. § 101. Appeal 2018-007960 Application 14/927,244 7 1. Guidance Step 1 Under Step 1 of the Guidance, we consider whether the claimed subject matter falls within the four statutory categories set forth in § 101, namely a “[p]rocess, machine, manufacture, or composition of matter.” Guidance, 84 Fed. Reg. at 53—54; see 35 U.S.C. § 101. Claim 21 recites a “method” and, thus, falls within the “process” category. Consequently, we proceed to the next step of the analysis. 2. Guidance Step 2A Prong 1 Under Step 2A Prong 1 of the Guidance, we evaluate “whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon.” Guidance, 84 Fed. Reg. at 54; see Alice, 573 U.S. at 216. Claim 21 recites an imaging method that includes (1) exposing an object to X-rays during an exposure time interval, wherein the x-rays pass through and around the object and impact a detector comprising a plurality of pixels configured to accumulate charge when exposed to X-rays; (2) during the exposure time interval, at least one of a controller or a processing component sends instructions to readout circuitry to perform one or more non-destructive readout operations on a set of the plurality pixels comprising some or all of the plurality of pixels thereby producing read out pixels; wherein each non- destructive readout operation measures a charge at each read out pixel at the time of the non-destructive readout operation; Appeal 2018-007960 Application 14/927,244 8 and wherein each non-destructive readout operation does not reset the overall charge at the read out pixel; (3) processing data from the readout operations in the processing component or in a second processing component to estimate charge accumulation information for a subset of read out pixels that saturate over the exposure time interval; and (4) generating an image using the estimated charge accumulation information for the subset of pixels. The Examiner identifies the recitation in claim 21 of estimating charge accumulation information as an abstract idea (a mathematical algorithm). Final Act. 3. Consistent with the Examiner’s analysis, we agree that claim 1 recites a judicial exception, i.e., an abstract idea, in the form of mathematical concepts (processing data to estimate charge accumulation information). The mere fact, however, that claim 1 recites an abstract idea in the form of mathematical concepts does not automatically render the claim patent-ineligible. Diehr, 450 U.S. at 187 (“A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.”). Thus, we proceed to the Step 2 A Prong 2 of the Guidance. 3. Guidance Step 2A Prong 2 Under Step 2 A Prong 2 of the Guidance, we must “(a) [i]dentify whether there are any additional elements recited in the Appeal 2018-007960 Application 14/927,244 9 claim beyond the judicial exception(s); and (b) evaluate those additional elements individually and in combination to determine whether they integrate the exception into a practical application.” Guidance, 84 Fed. Reg. at 54—55. Additional elements that merely add insignificant extra-solution activity to an abstract idea fail to integrate the abstract idea into a patent-eligible practical application. See id. at 55. On the record before us, we determine that claim 21 recites additional elements that integrate the abstract idea of estimating charge accumulation information into a practical application. As correctly argued by Appellant, the estimation of charge accumulation is “meaningfully limited” to a method that exposes an object to X-rays, performs non-destructive reads during the exposure interval, and generates images using the estimated charge accumulation for a subset of pixels. Appeal Br. 17. Appellant submits that the generation of images that includes use of the estimated charge accumulation of a subset of pixels is “significantly more” than calculation of the estimated charge accumulation. Appeal Br. 17. We are persuaded by such argument. Claim 21 integrates the abstract idea into a practical application by expressly generating an image using the estimated charge information for a subset of pixels. As a result, Appellant’s claims do not attempt to monopolize the abstract idea of estimating charge accumulation information, but rather define a specific Appeal 2018-007960 Application 14/927,244 10 method that employs the abstract idea to achieve an improvement in the technical field of X-ray imaging. To summarize, Appellant’s claims as a whole applies, relies on, or uses the abstract idea in a manner that imposes a meaningful limit on the abstract idea and integrates the abstract idea into a practical application of employing a specific manner of X-ray imaging. For this reason, we do not sustain the Examiner’s rejection of claims 2–8 and 21–24 under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. In view of the above, we reverse Rejection 1. . Rejections 2–4 We agree with Appellant’s position that contrary to the position made on pages 6 and 7 of in the Final rejection, Hayashida’s paragraphs [0040]–[0041] do not disclose generating an image using the estimated charge accumulation information for the subset of pixels. Appeal Br. 10. Reply Br. 3–4. We also agree with Appellant that Shemmann does not cure this deficiency of Hayashida. Appeal Br. 10. Reply Br. 4. As stated by Appellant, Schemmann’s disclosure is limited to generating an output signal. Id. In view of the above, we reverse Rejections 2–4. CONCLUSION We reverse the Examiner’s decision. Appeal 2018-007960 Application 14/927,244 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Affirmed 2–8, 21–24 101 Eligibility 2–8, 21–24 2, 8, 21–24 103 Hayashida, Schemmann 2, 8, 21–24 3, 5–7 103 Hayashida, Schemmann, Tsuji 3, 5–7 4 103 Hayashida, Schemmann, Inoue 4 Overall Outcome 2–8, 21–24 REVERSED Copy with citationCopy as parenthetical citation