Ex Parte Lujan et al

Patent Trial and Appeal Board

Jun 20, 2018

13839906 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/839,906 03/15/2013
50638 7590 06/21/2018
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
FIRST NAMED INVENTOR
J. Luis Lujan
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.
BSNC-1-562.2 3489
EXAMINER
SECK, ABABACAR
ART UNIT PAPER NUMBER
2122
MAIL DATE DELIVERY MODE
06/21/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. LUIS LUJAN, ASHUTOSH CHATURVEDI,
and CAMERON MCINTYRE
Appeal2018-000757
Application 13/839,906
Technology Center 2100
Before JOHN A. JEFFERY, JOHN D. HAMANN, and JOYCE CRAIG,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-3, 5, 7, 8, 10-16, 18, and 21-25. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention estimates a region for activating tissue, such as
for stimulating a patient's brain or spinal cord. To this end, a volume of
activation of tissue is determined using a parametric equation that is a
function of an input vector that includes stimulation parameters. After
1 Appellants identify the real party in interest as Boston Scientific
Neuromodulation Corporation. App. Br. 2.
Appeal2018-000757
Application 13/839,906
receiving input data, the input vector is applied to the function to obtain
parameters for the parametric equation. The equation is then solved to
obtain a calculated volume of activation. See generally Abstract; Spec. ,r 2.
Claim 1 is illustrative:
1. A computer-implemented method, comprising:
having one or more parametric equations that define a volume of
activation, wherein the one or more parametric equations represent a
geometric shape, wherein the parameters for the one or more parametric
equations are given as a function of an input vector that includes stimulation
parameters;
receiving input data that includes values for the stimulation
parameters and defining the input vector using the input data:
applying the input vector to the function and obtaining the parameters
for the one or more parametric equations;
solving the parametric equation to calculate the volume of activation;
displaying the calculated volume of activation on a display screen;
comparing the calculated volume of activation to a target volume; and
based on the comparison, initiating delivery of the stimulation
parameters for the calculated volume of activation to an electrical
stimulation device for delivery of electrical stimulation to a patient
according to the stimulation parameters.
THE REJECTION
The Examiner rejected claims 1-3, 5, 7, 8, 10-16, 18, and 21-25
under 35 U.S.C. § 101 as directed to ineligible subject matter. Ans. 3-9.2
FINDINGS AND CONTENTIONS
The Examiner finds that the claimed invention is directed to an
abstract idea, namely ( 1) mathematical relationships or formulas for
2 Throughout this opinion, we refer to (1) the Appeal Brief filed February
13, 2017 ("App. Br."); (2) the Examiner's Answer mailed September 6,
2017 ("Ans."); and (3) the Reply Brief filed October 10, 2017 ("Reply Br.").
2
Appeal2018-000757
Application 13/839,906
calculating a volume of activation, and (2) an idea of itself by collecting,
analyzing, and displaying associated results. Ans. 3-5, 21-23. According to
the Examiner, the claimed elements do not add significantly more to the
abstract idea to render the claimed invention patent-eligible. Ans. 5---6, 21-
23.
Appellants argue that the claims are not directed to an abstract idea,
but rather describe a specific way to solve the problem of producing an
accurate and realistic calculated volume of activation, namely by using
parametric equations. App. Br. 5-12; Reply Br. 2-11. According to
Appellants, this technique requires less time and computational resources to
obtain a volume of activation as compared to previous methods. Reply Br.
5.
ISSUE
Has the Examiner erred in rejecting claims 1-3, 5, 7, 8, 10-16, 18,
and 21-25 by concluding that they are directed to ineligible subject matter
under § 101? This issue turns on whether the claimed invention is directed
to a patent-ineligible abstract idea and, if so, whether the claims' elements-
considered individually and as an ordered combination-transform the
nature of the claims into a patent-eligible application of that abstract idea.
ANALYSIS
To determine whether claims are patent-eligible under§ 101, we
apply the Supreme Court's two-step test articulated in Alice Corp.
Proprietary Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). First,
we determine whether the claims are directed to a patent-ineligible concept:
3
Appeal2018-000757
Application 13/839,906
laws of nature, natural phenomena, and abstract ideas. Id. at 2354--55. If so,
we then proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
Applying Alice step one, we agree with the Examiner that the claimed
invention is directed to an abstract idea, namely (1) mathematical
relationships or formulas for calculating a volume of activation, and (2) an
idea of itself by collecting, analyzing, and displaying associated results.
Ans. 3-5, 21-23.
Independent claim 1 recites, among other things, at least one
parametric equation that defines a volume of activation, where the
equation's parameters are given as a function of an input vector that includes
stimulation parameters. Input data is received that includes values for the
stimulation parameters, and the input data is used to define the input vector
that is applied to the function. The equation's parameters are obtained, and
the equation is solved to calculate the volume of activation that is then
displayed on a screen. Based on comparing the calculated volume of
activation to a target volume, delivery of stimulation parameters for the
calculated volume of activation to an electrical stimulation device is initiated
for delivering electrical stimulation to a patient according to the stimulation
parameters.
Our emphasis underscores that claim 1 does not recite electrically
stimulating the patient according to the stimulation parameters, but rather
4
Appeal2018-000757
Application 13/839,906
initiating delivery of those parameters for delivery of electrical stimulation
to a patient-an intended use of those parameters that may or may not occur
at some future time. Accord Ans. 22 (noting that the claimed invention does
not use the stimulation parameters to stimulate the patient). Nor does the
claim require actually delivering the stimulation parameters to stimulate the
patient, but rather initiating their delivery.
As the Specification explains, the invention uses a parametric
equation to determine the volume of activation of neural tissue, where the
equations can represent various geometric shapes, such as ellipsoids. Spec.
,r 7 5. Stimulation parameters, that can include voltage or current amplitude,
frequency, pulse width, and pulse shape, are received as input data. Id. This
received input data is then used to define the input vector for the function
whose output can then be calculated and used to define parametric equation
parameters. Spec. ,r 7 6. The equation is then solved for the volume of
activation. Id.
As shown in Appellants' Figure 1, a correlator 42 mathematically
correlates a selected target volume and an output volume of tissue activation
(VTA) 12 to calculate a volume or area of overlap between the output VTA
and the model volume represented by the target VTA. Spec. ,r 55. The
corresponding results are then reproduced for visual presentation on display
40. Id.
When read in light of this disclosure, claim 1 is, in essence, directed to
(1) a mathematical algorithm, and (2) collecting, analyzing, and displaying
associated results-both of which are abstract ideas as the Examiner
indicates. Ans. 3-5, 21-23. That the claimed invention is directed to a
combination of abstract ideas is of no consequence here, for it is well settled
5
Appeal2018-000757
Application 13/839,906
that adding one abstract idea to another does not render the claim non-
abstract See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327
(Fed. Cir. 2017). As in RecogniCorp, the recited process (1) starts with data,
(2) adds an algorithm, and (3) ends with a new form of data, namely a
volume of activation-an abstract idea. See id. ( citing Digitech Image
Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014)).
Notably, the claimed invention is analogous to the mathematical
algorithm at issue in Gottschalk v. Benson, 409 U.S. 63 (1972). In Benson,
the U.S. Supreme Court held that claims involving a mathematical algorithm
and directed to a method for converting binary-coded-decimal (BCD)
numerals into pure binary numerals for use with a computer were ineligible
under§ 101. Benson, 409 U.S. at 68-72. That technique is analogous to the
case here, given the recited mathematical algorithm where a parametric
equation is solved to calculate a volume of activation. Accord Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (noting that
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, are essentially mental processes
within the abstract idea category); Ex parte Gutta, 93 USPQ2d 1025, 1027-
35 (BP AI 2009) (precedential) (holding that claims directed to a
mathematical algorithm, namely identifying mean items by (1) computing a
symbolic value variance, and (2) selecting a mean item with a symbolic
value minimizing the variance, were ineligible under § 101 ).
That this calculated volume of activation is displayed and compared to
a target volume does not render the claim less abstract, for these steps
merely collect, analyze, and display associated results as the Examiner
6
Appeal2018-000757
Application 13/839,906
indicates. Ans. 5. See Elec. Power, 830 F.3d at 1354 (noting that merely
presenting the results of abstract processes of collecting and analyzing
information, without more ( such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis).
Similar to the claims at issue in Electric Power, the claimed invention here
gathers, manipulates, analyzes, and presents information of a specified
content, but does not use any particular inventive technology for performing
those functions.
Appellants' reliance on McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (App. Br. 6-7; Reply Br. 3---6,
11) is unavailing. There, the claimed process used a combined order of
specific rules that rendered information in a specific format that was applied
to create a sequence of synchronized, animated characters. McRO, 837 F.3d
at 1315. Notably, the recited process automatically animated characters
using particular information and techniques-an improvement over manual
three-dimensional animation techniques that was not directed to an abstract
idea. Id. at 1316.
But unlike McRO, the claimed invention here (1) uses a mathematical
algorithm to solve an equation, (2) displays the associated results, and
(3) compares those results with other data to provide a basis for initiating
delivery of stimulation parameters. Although these steps may be beneficial,
a claim for a useful or beneficial abstract idea is still an abstract idea. See
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379--80
(Fed. Cir. 2015).
Alice Step Two
7
Appeal2018-000757
Application 13/839,906
Nor do the recited elements----considered individually and as an
ordered combination-transform the nature of the claims into a patent-
eligible application of the abstract idea to ensure that the claimed invention
amounts to significantly more than that idea. See Alice, 134 S. Ct. at 2357.
That the claims recite computer implementation does not change our
conclusion, for the claimed invention merely uses generic computing
components to implement the recited abstract idea. Accord Spec. ,r 83
(noting that computer-executable instructions associated with the disclosed
invention can be provided to a processor of general-purpose computer); Id.
,r 85 (noting that computer system 500 in Figure 7 can be a general-purpose
networked computer system). Merely reciting these generic computing
components cannot transform a patent-ineligible abstract idea into a patent-
eligible invention. Alice, 134 S. Ct. at 2358. In other words, merely reciting
an abstract idea while adding the words "'apply it with a computer"' does
not render an abstract idea non-abstract: there must be more. See id. at
2359.
Indeed, these generic computing components merely do that which
can be performed mentally or with a pen and paper----exclusive functions
ineligible for patent protection under § 101. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375 (Fed. Cir. 2011) ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in [Benson]").
Nor does the claimed invention improve the computer's functionality or
efficiency, or otherwise change the way that device functions. Cf Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
8
Appeal2018-000757
Application 13/839,906
To be sure, Appellants' disclosed invention requires less time and
computational resources to obtain a volume of activation as compared to
previous methods as Appellants indicate. Reply Br. 5 ( citing Spec. ,r,r 62-
68). But "[ u ]sing a computer to accelerate an ineligible mental process does
not make that process patent-eligible." Bancorp Services, L.L. C. v. Sun Life
Assurance Co., 687 F.3d 1266, 1279 (Fed. Cir. 2012). Accord FairWarning
IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing
Bancorp, 687 F.3d at 1278 ("[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.")). Although the claimed
invention may be beneficial, a claim for a useful or beneficial abstract idea is
still an abstract idea. See Ariosa, 788 F.3d at 1379-80.
That the calculated volume of activation is displayed on a screen is of
no consequence here, for this presentation is merely insignificant extra-
solution activity that does not add significantly more to the abstract idea to
render the claimed invention patent-eligible. See Bilski, 545 F.3d at 957; see
also Parker v. Flook, 437 U.S. 584, 590 (1978) (insignificant post-solution
activity found to be insufficient to impart patentability). Accord Apple, Inc.
v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (same). And, as
noted previously, merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis. Elec. Power, 830 F.3d at 1354.
That delivery of stimulation parameters is initiated based on the
recited comparison does not change our conclusion, for the claim does not
specify the particulars of this initiation apart from the fact that it is
9
Appeal2018-000757
Application 13/839,906
computer-implemented. In any event, this initiation merely commences
transferring data to an electrical stimulation device-a data transfer that does
not add significantly more to the abstract idea. Cf EasyWeb Innovations,
LLC v. Twitter, Inc., 689 F. App'x 969, 969--71 (Fed. Cir. 2017)
(unpublished) (holding claims reciting receiving, authenticating, and
publishing data in a different format as directed to an abstract idea).
Notably, this stimulation parameter delivery could involve manual
steps. That is, nothing in the claim precludes a computer sending
stimulation parameters based on results of the recited comparison to a
human ( e.g., a physician) who then configures the electrical stimulation
device based on the received parameters. In this scenario, the computer
would at least initiate delivering the stimulation parameters for the
calculated volume of activation to an electrical stimulation device despite
human involvement in that delivery. To the extent that Appellants contend
that the recited parameter delivery initiation adds significantly more to the
recited abstract idea (see App. Br. 9--12; Reply Br. 8-10), we disagree.
For the foregoing reasons, the recited elements----considered both
individually and as an ordered combination----do not contain an "inventive
concept" sufficient to transform the claimed abstract idea into a patent-
eligible application. Therefore, we are not persuaded that the Examiner
erred in rejecting claim 1, and claims 2, 3, 5, 7, 8, 10-16, 18, and 21-25 not
argued separately with particularity.
CONCLUSION
The Examiner did not err in rejecting claims 1-3, 5, 7, 8, 10-16, 18,
and 21-25 under§ 101.
10
Appeal2018-000757
Application 13/839,906
DECISION
We affirm the Examiner's decision to reject claims 1-3, 5, 7, 8, 10-
16, 18, and 21-25.
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
11