Ex Parte Averbuch

Patent Trial and Appeal Board

Dec 14, 2018

12170385 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/170,385
107146 7590
Covidien LP
5920 Longbow Drive
Mail Stop A36
07/09/2008
12/18/2018
Boulder, CO 80301-3299
FIRST NAMED INVENTOR
Dorian A verbuch
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H-IL-00045 (1988-45) 1989
EXAMINER
LI, QIAN JANICE
ART UNIT PAPER NUMBER
1633
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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@cdfslaw.com
rs. patents. two@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DORIAN A VERBUCH 1
Appeal2017-000769
Application 12/170,385
Technology Center 1600
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and JEFFREY
N. FREDMAN, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a method of modeling lung
movements due to breathing in a patient. The Examiner rejected the claims
as obvious under 35 U.S.C. § 103 and as ineligible for a patent under 35
U.S.C. § 101. Pursuant to 35 U.S.C. § 134, Appellant appeals the
Examiner's determination that the claims are unpatentable. We have
jurisdiction under 35 U.S.C. § 6(b ). We reverse the rejections.
1 The Appeal Brief ("Appeal Br."; entered March 11, 2016) identifies
Covidien LP as the real party in interest.
Appeal2017-000769
Application 12/170,385
STATEMENT OF THE CASE
Claims 1 and 8, the only claims in this appeal, stand finally rejected
by the Examiner as follows:
1. Claims 1 and 8 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view ofNehrke et al. (Magn. Reson. Med., 2005, 54:1130-1138) ("Nehrke")
and Zaporozhan et al. (Invest. Radial., 2006, 41:468--475) ("Zaporozhan") as
evidenced by Manke et al. (IEEE Transact. Med. !mag., 2002, 21 1132-
1141) ("Manke"). Ans. 4.
2. Claims 1 and 8 under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. Ans. 2.
Claim 1, the only independent claim on appeal, is reproduced below:
1. A method of modeling lung movements due to breathing in a
patient comprising:
acquiring at least one static image of a patient's lungs
during a fully inhaled phase of the breathing cycle;
acquiring at least one static image of a patient's lungs
during a fully exhaled phase of the breathing cycle;
generating at least one electromagnetic field;
identifying locations of a plurality of points of interest on
said static images, wherein location sensors are attached to said
patient proximate said points of interest;
detecting the at least one electromagnetic field with said
location sensors;
determining location data from signals received from said
location sensors; and
using said location data to model the lung movements by
predicting mathematically locations of said plurality of points
of interest at phases of the breathing cycle between said fully
inhaled and fully exhaled phases of the breathing cycle.
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Application 12/170,385
REJECTION BASED ON OBVIOUSNESS
Claim 1 is directed to a method of modeling lung movement due to a
patient breathing. The Specification explains that the method is useful when
locating a medical tool, such as a catheter, endoscope, or needle, inside a
patient's lung. Spec. ,r 3. The method enables accurate representation of the
tool in the lungs as the patient's body moves during a breathing cycle. Id.
The Examiner found that N ehrke describes a method of modeling lung
movements due to breathing which includes all the steps recited in claim 1
(Final Act. 9--10), but does not specify acquiring static images of the lung at
a "fully inhaled phase" and "fully exhaled phase" of the breathing cycle as
recited in the first two steps of claim 1 (id. at 11 ). For this limitation, the
Examiner further cited Zaporozhan which the Examiner found established it
was routine when performing lung imaging to acquire static images, making
it obvious to do so in Nehrke's method. Id. at 11. Manke was also cited by
the Examiner for teaching the fully inhaled and fully exhaled points of the
breathing cycle in a model correcting for respiratory motion when
performing cardiac imaging. Id. at 1 O; Manke, Abstract.
The Examiner found that the "navigators" utilized in Nehrke's method
serve as the "location sensors" recited in claim 1. Final Act. 9. Appellants
contend that the navigators described by N ehrke do not perform the required
function of the location sensors of claim 1, namely, "detecting the at least
one electromagnetic field with said location sensors." Appeal Br. 22.
Nehrke describes using navigators which produce "outputs." Nehrke
1135 (first column in section titled "Discussion"). A navigator, according to
Manke, is "pulse." Manke 1133. The Examiner did not establish that the
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Appeal2017-000769
Application 12/170,385
navigator disclosed in Nehrke and Manke detects an electromagnetic field as
required by claim 1. To the contrary, the Examiner found the navigators
were "generated" by an MRI scanner and that detection was performed by a
body coil of the system. Ans. 5 ("the radio frequency pencil beam
navigators generated by MRI scanner served as instantly claimed location
sensors and through radio transmitter, the body coil of the scanner system
served as signal receiver/detector"). In other words, the Examiner did not
find that the navigator, itself, detected the electromagnetic field.
The Examiner also cited Nehrke's teaching that "the use of external
motion sensors ( e.g., respiration sensors, EKG signal, or microcoils) as a
straightforward extension of the navigator concept could be considered.~'
Nehrke 1135 (column l under "Discussion"); see Ans. 13. The Examiner
stated that "[i]t is clear that both navigators and external motion sensors
were known in the art and obvious variants capable of detecting an
electromagnetic field as instantly claimed." Ans. 13. The Examiner further
stated"[ w ]hen Nehrke states external motion sensors could be incorporated
into the model, there must have been art known technology to detect the
signal." Id. at 14.
However, as argued by Appellants, the Examiner did not explain how
the external motion sensors detect an electromagnetic field or make it
obvious to do so. Rather, the Examiner states the technology to detect the
"signal" must have been known. The Examiner did not meet the burden of
establishing that the external motion sensor, itself, detects the "signal," and
how it would be modified to detect an electromagnetic field as required by
the claim. An examiner bears the initial burden of presenting a prima facie
case of obviousness. In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
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Application 12/170,385
2011 ). Since this burden was not met, we are compelled to reverse the
obviousness rejection of claim 1 and dependent claim 8.
REJECTION UNDER§ 101
The Examiner found that the claimed method of modeling lung
movements due to breathing in a patient "is carried out by mathematic
formulas that are deemed to be law of nature or abstract ideas, hence claims
recite judicial exceptions" to patent eligibility under 35 U.S.C. § 101. Ans.
2. The Examiner further found the claimed method does not
include additional elements that are sufficient amounting to
significantly more than the judicial exception because the
recited "using said location data to model the lung movements
by predicting mathematically" is merely an instruction to
implement an abstract idea in a specific technical environment
generally ( equivalent to "apply it"), and because the recited
"modeling" requires ''predicting mathematically", involving
application of mathematic relationships/formulas ( as listed in
pages 11-15), which may be executed by a generic computer
( e.g. platforms in a commonly used MRI machine).
Final Act. 3.
As found by the Examiner, the claimed method collects data from
images and location sensors, and uses the collected data to model lung
movement due to breathing. The modeling is accomplished mathematically
("using said location data to model the lung movements by predicting
mathematically locations"), but no specific mathematical formula is recited
in claim 1. While these steps could be considered "abstract" to the extent
that they do not generally involve physical manipulations, the claim also has
explicit physical steps of "generating at least one magnetic field" and
"detecting the at least one electromagnetic field with said location sensors"
which are "attached to said patient proximate said points of interest."
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Application 12/170,385
Under the two part test of Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134
S. Ct. 2347, 2355 (2014) for determining whether a claim is eligible for a
patent under 35 U.S.C. § 101, it is first asked whether the claims are directed
to patent ineligible subject matter, such as an abstract idea or law of nature.
When the claim is found to be directed to an ineligible "concept," the second
step of Alice is invoked in which "a search" of the claims as a whole is made
"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.
We proceed directly to the second step of Alice's two-part test
because, when that step is applied to the claim, it is evident that the
Examiner failed to establish that when the claim is considered in its entirety
it is not "significantly more than a patent" on an abstract idea.
Specifically, as discussed above in the obviousness analysis, claim 1
requires the use of "location sensors" which are devices that are enabled to
detect an electromagnetic field. See Substitute Spec. ,r 2 (referencing, inter
alia, U.S. Pat. No. 6,380,732); Appeal Br. 2. The claimed method employs
the data from the location sensors to predict the movement of the lung. As
explained in the Specification:
In one embodiment of the present invention, one or more static
images, such as a CT data set, may be "brought to life" by
applying a mathematical model that predicts how a given point
in the lungs will move during the breathing cycle, based on a
large sample of statistical data. The mathematical model is tied
to one or more external position sensors on the patient's chest.
Hence, by monitoring the external sensor(s), and applying the
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Application 12/170,385
mathematical movement model, an instantaneous position of a
given point in the lungs can be predicted.
Substitute Spec. ,r 10. The location sensor of the claims is an example of an
external sensor.
The Specification further explains:
The data from these sensors are not only used as an entering
argument for the upcoming mathematical modeling step 70, but
also to monitor the physical location of the patient in order to
register a real-time image (such as that acquired to show the
position of the locatable guide) to the CT scan image(s).
Id. ,I 24.
Thus, it is evident from reading the Specification that the location
sensors, which are physical devices attached to a patient, are a significant
and required element necessary to enable the claimed method. See Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017). ("The
claims specify a particular configuration of inertial sensors and a particular
method of using the raw data ... Far from claiming the equations
themselves, the claims seek to protect only the application of physics to the
unconventional configuration of sensors as disclosed.") The claim is not
merely an abstract idea, but the practical application of the steps to a
location sensor to locate breathing movements in a patient, useful when
imaging a medical tool in the patient's body.
While "well-understood, routine, conventional activity previously
engaged in by scientists who work in the field" is not enough to establish
patent eligibility for an otherwise ineligible claim (Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79 (2012), the Examiner did
not establish that the claimed location detectors are used in a routine,
conventional way to enable the claimed method to modeling lung
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Application 12/170,385
movements due to breathing in a patient. Rather, as discussed above, the
obviousness rejection was reversed because the Examiner did not provide
persuasive evidence that the claimed location sensors had been used by those
who work in the field to locate detect and electromagnetic field and model
breathing movements as they are required to do so in claim 1.
For this reason, we conclude that the claimed method is eligible for a
patent under 35 U.S.C. § 101. The rejection of claims 1 and 8 under§ 101 is
reversed.
REVERSED
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