Ex Parte Lee et al

Patent Trial and Appeal Board

Sep 12, 2018

14365267 (P.T.A.B. Sep. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/365,267 06/13/2014 Michael Chun-chieh Lee
24737 7590 09/14/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2011P02254WOUS 1039
EXAMINER
SMITH, PAULINHO E
ART UNIT PAPER NUMBER
2124
NOTIFICATION DATE DELIVERY MODE
09/14/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL CHUN-CHIER LEE and ERIC COHEN-SOLAL
Appeal2018-003358
Application No. 14/365,267 1
Technology Center 2100
Before MARC S. HOFF, JOHNNY A. KUMAR, and JOHN D. HAMANN,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 3, 4, 6-16, and 18-20. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appellants' invention is a processor that generates a model which
models a quality of findings in radiologist reports as a mathematical function
of a deposited dose of scans from which the radiologist reports are created,
1 The real party in interest is Koninklijke Philips N.V. App. Br. 2
2 Claims 2, 5, and 17 have been cancelled. Claims App'x.
Appeal2018-003358
Application 14/365,267
and that determines an optimal dose value for a planned scan based on the
model and one or more optimization rules.
Claim 1 is reproduced below:
1. A system, comprising:
a processor that generates a model which models a quality of findings
in radiologist reports as a mathematical function of deposited dose of
scans from which the radiologist reports are created and that
determines an optimal dose value for a planned scan
based on the model and one or more optimization rules.
Claims 1, 3, 4, 6-16, and 18-203 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. 4
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed June 26, 2017), the Reply Brief ("Reply Br.," filed Feb. 6,
2018), and the Examiner's Answer ("Ans.," mailed Dec. 15, 2017) for their
respective details.
ISSUES
Does the claimed invention incorporate particular rules that improve
an existing technological process?
PRINCIPLES OF LAW
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
3 The Examiner's Answer includes claims 1-20 in the§ 101 rejection. The
Claims Appendix attached to the Appeal Brief, however, lists claims 2, 5,
and 1 7 as cancelled.
4 The Examiner has withdrawn the§ 102(b) rejection of claims "1-20."
Ans. 2.
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Application 14/365,267
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017). Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78).
ANALYSIS
SECTION 101 REJECTION
Appellants argue, by analogy to McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), that the claims under appeal are
patent-eligible because they "incorporate particular rules that improve an
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Application 14/365,267
existing technological process." App. Br. 3; Reply Br. 2. Appellants refer
to the McRO court's description of rules that "improve computer-related
technology by allowing computer performance of a function not previously
performed by a computer." Reply Br. 2.
The claimed invention in McRO concerned "allowing computers to
produce 'accurate and realistic lip synchronization and facial expressions in
animated characters' that previously could only be produced by human
animators." See McRO at 1313. "[T]his computer animation is realized by
improving the prior art through 'the use of rules, rather than artists, to set the
morph weights and transitions between phonemes."' Id.
Unlike the invention claimed in McRO, the invention under
appeal merely "models a quality of findings in radiologist reports as a
mathematical function of deposited dose of scans." That is, the
invention determines a mathematical relationship between radiation
dose and quality of findings. The claimed invention then determines
an optimal radiation dose based on that "model" and "one or more
optimization rules." In contrast with McRO, the claimed process is
not a process that allows a computer to perform steps that previously
could only be produced by humans.
Appellants' argument that "the claimed invention is directed to
using a mathematical function and rules that improve computer-
related technology" is also not persuasive. App. Br. 4. The claimed
invention recites no details concerning any computer technology,
either hardware or software. Appellants' specification explicitly
discloses implementation on a "general-purpose computing system."
Spec. 3. Claim 1 recites only "a processor." Claim 20 further recites
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"a report and dose evaluator" that performs the function of
determining the optimal dose; no further hardware or software details
are recited. Claim 20 also recites a "validator," which merely
compares an estimated dose value to the previously-computed optimal
dose value.
We find that the claimed invention is analogous to the invention
claimed in Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016). The invention in Electric Power Group concerned
detecting events on an inter-connected electric power grid. The steps
of the claimed method recited receiving various data, detecting and
analyzing events in real-time based on the received data, and
displaying various data as well as event analysis results. Id. at 1355.
The court found that the claims expressed an abstract idea, without
reciting significantly more to transform the nature of the invention
into a patent-eligible application. Id.
Similarly, the invention under appeal gathers data concerning
radiation doses and outcomes, analyzes that data to determine a
function, and outputs a suggested dose based on that mathematical
function. As in Electric Power Group, the claims do not require a
new source or type of information, or new techniques for analyzing it.
Id. Neither do the claims require anything other than "off-the-shelf,
conventional computer, network, and display technology." Id. Thus,
as in Electric Power Group, we find that the claims describe an
abstract idea without reciting sufficiently more under Alice to
transform the claimed invention into a patent-eligible application.
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We therefore sustain the Examiner's§ 101 rejection of claims
1, 3, 4, 6-16, and 18-20 as being directed to patent-ineligible subject
matter.
CONCLUSION
The claimed invention does not incorporate particular rules that
improve an existing technological process.
DECISION
The Examiner's decision to reject claims 1, 3, 4, 6-16, and 18-20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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