Eric Cohen-Solal et al.

Patent Trials and Appeals Board

Sep 13, 2019

14906608 - (D) (P.T.A.B. Sep. 13, 2019)

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.
14/906,608 01/21/2016 ERIC COHEN-SOLAL 2013P00310WOUS 3095
24737 7590 09/13/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
SHIN, SOO JUNG
ART UNIT PAPER NUMBER
2667
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC COHEN-SOLAL,
GABRIEL RYAN MANKOVICH, YUECHEN QIAN, and
THUSITHA DANANJAYA DE SILVA MABOTUWANA
____________

Appeal 2018-006841
Application 14/906,6081
Technology Center 2600
____________

Before KEVIN F. TURNER, JOHNNY A. KUMAR, and
JASON M. REPKO Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from a Final Office
Action dated November 9, 2017 (“Final Act.”), rejecting claims 1–4, 6, 8,
11, 13, 15, 16, and 20. Claims 5, 7, 9, 10, 12, 14, and 17–19 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 According to Appellants, the real party in interest is Koninklijke Philips
N.V., the assignee of this application. Appeal Brief 2 (“App. Br.”).
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STATEMENT OF THE CASE
According to the Specification, radiologists review medical scans to
monitor the course of treatment or recovery from surgery. Spec. 1:1–14. To
do this, the radiologist will compare a current scan with prior corresponding
scans and look for changes in the structure of interest. Id. at 1:14–19.
However, this can be very time consuming because the radiologist must
locate the prior corresponding scans, which can be within a data set
containing hundreds of scans, and then compare each of those scans to the
current image. Id. Accordingly, the claimed invention is directed to an
improvement to matching of images between data sets. See generally Spec.
In one embodiment, a method, a system, and a computer readable storage
medium include: (1) detect a focus of attention of an observer of an
anatomical image; (2) determine a location of the anatomical image based on
the detected focus of attention; (3) identify the corresponding anatomical
image from a prior data set; and (4) display the images for the radiologist.
Id. at 2:3–8.
Claims 1, 15, and 20 are independent and are reproduced below:
1. A method, comprising:
detecting a focus of attention of an observer of a first
anatomical image of a set of images;
determining, in response to the detected focus of attention,
that a location of the first anatomical image includes a tissue
with a finding of interest;
identifying a second anatomical image from an earlier
acquired imaging data set comprising earlier acquired images,
with a same portion of the tissue as the first anatomical image
by determining that a distance between a first annotation of
the first anatomical image and a second annotation of the
second anatomical image is below a threshold; and
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visually displaying graphical indicia, concurrently with the
first anatomical image, that identifies the second anatomical
image.
15. A system, comprising:
a sensor that senses a focus of attention of an observer of
a first anatomical image of a set of images;
a processor configured to:
map the sensed focus of attention to the first
anatomical image based on a display geometry of the monitor,
determine a metric based on the map,
compare the metric with a predetermined metric
and determine a location of the first anatomical image includes
tissue with a finding of interest in response to the metric
satisfying the predetermined metric,
identify a second anatomical image from an earlier
acquired imaging data set with a same tissue as the first
anatomical image by computing a normalized weighted score
between the first anatomical image and a plurality of images
of the previously generated imaging data set; and
a display monitor that displays graphical indicia that
identifies the second anatomical image.
20. A computer readable storage medium encoded with
computer readable instruction, which, when executed by a
processor, causes the processor to:
detect a focus of attention of an observer of a first
anatomical image of a set of images;
determine, in response to the detected focus of attention,
that a location of the first anatomical image includes a tissue
with a finding of interest;
determine a pattern of scrolling back and forth between a
plurality of anatomical images of the set of images; and
identifying an anatomical image from an earlier acquired
imaging data set with a same tissue as the first anatomical
image based on the pattern; and
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visually displaying graphical indicia, concurrently with
the first anatomical image, that identifies the second
anatomical image.
App. Br. 6–9 (Claims Appendix).

The Rejection on Appeal
Claims 1–4, 6, 8, 11, 13, 15, 16, and 20 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to a judicial exception
without significantly more. Final Act. 3–7, Ans. 2–7.

ANALYSIS
We have reviewed the Examiner’s rejection in light of the Appellants’
arguments. For the reasons set forth below, we reverse the Examiner’s 101
rejection.
Principles of Law
Patent eligibility is assessed under 35 U.S.C. § 101, which states 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. The U.S. Supreme
Court has held that this statutory provision contains an important implicit
exception: laws of nature, natural phenomena, and abstract ideas are not
patentable. E.g., Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354
(2014). But claiming the practical application of these concepts may be
deserving of patent protection. Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Alice, the Supreme Court
reaffirmed the framework set forth previously in Mayo “for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
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from those that claim patent-eligible applications of those concepts.” Alice,
134 S. Ct. at 2355.
The first step in the analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. If the
claims are directed to a patent-ineligible concept, the second step in the
analysis is to consider the elements of the claims “individually and ‘as an
ordered combination’” to determine whether there are additional elements
that ‘“transform the nature of the claim’ into a patent-eligible application.”
Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second
step is to ‘“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) (quoting Mayo, 132 S. Ct. at 1294).
The USPTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Guidance”). Under that 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
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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.
Discussion
Appellants argue that the Examiner erred in determining the claims
are directed to an abstract idea, and therefore constitute patent-ineligible
subject matter. App. Br. 3–5, Reply Br. 2–4.2 Specifically, Appellants
argue that the claims are not directed to a mental process because the claims
do not “automate a method that was previously performed by a radiologist,”
as the Examiner concludes. Reply Br. 2. Rather, Appellants argue, the
“claims present a new set of rules that were not previously performed by
humans in order to automate a computer related task that previously relied
on subjective human decisions.” Id. at 3.
For the reasons set forth below, we determine that (1) claim 20 is
directed to non-transitory storage medium and is therefore patent-eligible;
(2) claims 1–3, 6, 8, 11, and 13 are patent-eligible because the mental
processes abstract idea is integrated into a practical application; and (3)
claims 4, 15, and 16 are patent-eligible because the claims are not directed to
an abstract idea.

2 Appellants argue claims 1–4, 6, 8, 11, 13, 15, 16, and 20 as a group. We
choose to address the claims in separate groups. As such, we determine that
claims 2–3, 6, 8, 11, and 13 will stand or fall with claim 1, and claims 4 and
16 will stand or fall with claim 15. We choose these groups based on the
subject matter recited in the claims. See C.F.R. § 41.37(c)(1)(iv).
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Claim 20
The Examiner determined that claim 20 is not patent-eligible subject
matter because, under its broadest reasonable interpretation, the claim
includes transitory signals. Final Act. 6–7, Ans. 5–6. We do not agree.
Specifically, we agree with Appellants that the claims are to be given their
broadest reasonable interpretation consistent with the specification, and the
computer readable storage medium in claim 20 is limited to a non-transitory
storage medium. Reply Br. 3. According to the Specification, “the
computer system 100 includes . . . [a] computer readable storage medium
(memory) 106 (i.e., physical memory and other non-transitory storage
medium).” Spec. 3:19–21 (Emphasis added). Thus, the Specification clearly
limits computer readable storage medium to a non-transitory storage
medium, which is not, per se, patent-ineligible subject matter.
We believe that the Examiner may have applied line 28 of page 3 of
the Specification when interpreting the computer readable storage medium
of claim 20. However, the other transitory storage medium of line 28
clearly refers to the functioning of microprocessors, and not to the type of
computer readable storage medium. In relevant part, lines 26–28 state that
“[t]he one or more microprocessors can . . . execute instruction carried by . .
. other transitory storage medium.” Id. at 3:26–28. Thus, this line describes
the functioning of microprocessors—it can execute instruction carried by
other transitory storage media—and not to the computer readable storage
medium claimed in claim 20.
For this reason, we are persuaded that the Examiner erred in
determining that claim 20 is directed to patent-ineligible subject matter.
Accordingly, we reverse the rejection of claim 20 under 35 U.S.C. § 101.
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Claims 1–3, 6, 8, 11, and 13
We begin with Step 2A Prong 1 of the Revised Guidance, which
requires that we determine whether the claim recites any judicial exceptions.
Guidance 53. Claim 1 recites the following method to detect a focus of
attention of an observer of a first anatomical image of a set of images:
[1] detecting a focus of attention of an observer . . . ; [2]
determining, in response to the detected focus of attention, that
a location of the first anatomical image includes a tissue . . . ;
[3] identifying a second image . . . by determining that a
distance between a first annotation . . . and a second
annotation . . . is below a threshold; and [4] visually
displaying graphical indicia, concurrently with the first
anatomical image, that identifies the second anatomical
image.
App. Br. 6 (Claims Appendix) (emphasis added).
We agree with the Examiner’s determination that claim 1 recites the
abstract idea of “detecting a focus of attention.” Final Act. 3–5, Ans. 2–4.
Specifically, under the Guidance, we agree with the Examiner that claim 1
recites the mental processes judicial exception because under its broadest
reasonable interpretation claim 1 could be performed in a person’s mind. Id.
For example, the scope of claim 1 is not limited to any particular method of
detecting a focus of attention; determining a location; identifying a second
anatomical image by determining a distance between a first annotation and a
second annotation; and visually displaying the images. Thus, as the
Examiner determined, the scope of claim 1 would allow all of the limitations
to be performed in a person’s mind.
Accordingly, we determine that claims 1–3, 6, 8, 11, and 13 recites
the mental processes judicial exception.
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Because we determine that claim 1 recites a judicial exception, we
turn to Step 2A Prong 2 to determine if the judicial exception is integrated
into a practical application. Guidance 54. A practical application is one
where the claim “will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception.” Id. at 54. For example, one instance when a judicial exception
is integrated into a practical application is when those additional elements
result in an improvement to a technical field. Id. at 55.
The Examiner determined that claim 1 is not directed to a
technological improvement because the “ability to automate a mental
process does not illustrate a technological improvement that solves a
technological problem.” Ans. 6. We do not agree. Specifically, we agree
with Appellants’ argument that the claims are directed to an improvement in
the technical field of image matching. App. Br. 3–5, Reply Br. 2–3.
The Federal Circuit has held that improvements to technology beyond
improvements in computer functionality may indicate patent-eligibility. See
generally McRO, Inc v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016). According to the MPEP, to show an improvement in the
technical field, the specification must contain a technical explanation
describing how to implement the claimed invention such that a person of
ordinary skill in the art would recognize the claimed invention as providing
an improvement, and the claims must also reflect this improvement in
technology. MPEP § 2106.05(a).
We determine that the Specification contains disclosure describing the
technical problem and a technical description describing the improvement to
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the claimed invention. See Spec. 1:1–2:2 (describing the technical problem
of matching images between data sets), id. at 5:21–7:17 (describing a
technical solution that improves matching between data sets). Further, we
determine that the claims do reflect the improvement in matching between
data sets. See claim 1 (describing the steps to identify a second anatomical
image from an earlier acquired image), see claim 13 (describing how the
earlier acquired image is evaluated).
In addition, it is also evident that the Examiner views the processes
occurring in the claims as more than automation of a single mental process.
In the Final Office Action, the Examiner acknowledges that “a person can
look at another person observing image(s) [, and] determine where the
observer’s eyes are directed to.” Final Act. 4. Whereas, in the Answer, the
Examiner asserts that “the disclosure focuses on how to automate the
method that was previously performed by a radiologist (or mental steps that
are performable by a radiologist).” Ans. 6. Claim 1 makes it clear that it
would be the mental processes of the additional person “detecting a focus of
attention of an observer,” i.e., person observing the radiologist, that would
need to be automated, in terms of the mental processes judicial exception,
and not merely an automation of the mental processes of the radiologist.
Accordingly, we determine that claims 1–3, 6, 8, 11, and 13 integrate
the mental processes judicial exception into a practical application, and thus,
are not directed to the judicial exception.
For this reason, we are persuaded that the Examiner erred in
determining that claims 1–3, 6, 8, 11, and 13 are directed to patent-ineligible
subject matter. Accordingly, we reverse the rejection of claims 1–3, 6, 8, 11,
and 13 under 35 U.S.C. § 101.
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Claims 4, 15, and 16
With respect to claims 4, 15, and 16, we return to Step 2A Prong 1 of
the Revised Guidance, which requires that we determine whether the claim
recites any judicial exceptions. Guidance 53. Claim 15 recites the following
system:
[1] a sensor that senses a focus of attention of an observer . . .
; [2] a processor to: [a] map the sensed focus of attention . . .
, [b] determine a metric based on the map, [c] compare the
metric with a predetermined metric and determine a location
of the first anatomical image . . . , [d] identify a second
anatomical image from an earlier acquired imaging data set;
and [3] a display monitor.
App. Br. 8 (Claims Appendix) (emphasis added). Claim 4 is similarly
directed to an eye tracker. Id. at 6–7. According to the Specification, an eye
tracker includes a sensor. Spec. 5:24–25. Because the eye tracker includes a
sensor, claim 4 is structurally similar to claim 15.
The Examiner determined that claim 15 is a system claim that is
directed to the abstract idea of “detecting a focus of attention.” Final Act. 3–
5, Ans. 2–4. Specifically, the Examiner determined that the limitations of
claim 15 can be performed by a “human mind.” Final Act. 4–5, Ans. 3–4.
We do not agree. All the reasons discussed above in connection with claim
1 apply to claim 15 because claim 15 recites method similar to the one in
claim 1 as functions performed by a processor. Also, claim 15 includes a
sensor (App. Br. 8 (Claims Appendix)), which can be a video camera. Spec.
5:24–27. Specifically, this sensor, in order to detect a focus of attention of
an observer, is able to detect visible light, infrared light, and near-infrared
non-collimated light, which is required for calculating the gaze direction. Id.
at 5:28–33. For the additional reason that the sensor can detect light at
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wavelengths that are invisible to the human eye, the claim limitations cannot
be performed by a person’s mind alone. Thus, claim 15 does not recite a
mental process.
Accordingly, we determine that claims 4, 15, and 16 are not directed
to the mental processes judicial exception.
For this reason, we are persuaded that the Examiner erred in
determining that claims 4, 15, and 16 are directed to patent-ineligible subject
matter. Accordingly, we reverse the rejection of claims 4, 15, and 16 under
35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1–4, 6, 8, 11, 13, 15, 16, and 20
under 35 U.S.C. § 101 is reversed.

REVERSED