Ex Parte Trovato et al

Patent Trial and Appeal Board

Oct 29, 2018

13139803 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/139,803 06/15/2011 Karen Irene Trovato
24737 7590 10/31/2018
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.
2008P0071 l WOUS 4048
EXAMINER
LUONG, PETER
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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 KAREN IRENE TROVATO and ALEKSANDRA POPOVIC
Appeal2017-009659
Application 13/139,803
Technology Center 3700
Before ERIC B. GRIMES, MICHAEL J. FITZPATRICK, and
DAVID COTTA, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Karen Irene Trovato and Aleksandra Popovic ("Appellants") 1 appeal
under 35 U.S.C. § 134(a) from the Examiner's decision finally rejecting
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification
According to Appellants, the claimed invention "relates to a method
and a system for computing a path for a minimally invasive device to reach a
1 The real party in interest is "Koninklijke Philips N.V., a corporation of
Netherlands having an office and a place of business at Groenewoudseweg
1, Eindhoven, Netherlands 5621 BA." See App. Br. 3.
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Application 13/139,803
target while avoiding critical structures and minimizing damage to
structures." Spec. 1 :4--6.
The claimed invention involves constructing "a configuration space
structure within a data storage medium, the configuration space structure
representing a discretized configuration space of an anatomical region of a
body, including free-space configuration nodes and forbidden configuration
nodes." Id. at 3:3---6. "Since the configuration space is a discretized space,
each state of the configuration space may be considered a 'node' in an N-
dimensional graph (frequently N = 2 or 3, but sometimes much higher)." Id.
at 1:16-18; see also id. at 1:18-19 ("'State' and 'node' are used
interchangeably herein.").
The claimed invention may further include generating "a structural
damage assessment for each free-space configuration node, the structural
damage assessment being indicative of a damage assessment of potential
damage to one or more anatomical areas of the anatomical region
represented by the forbidden configuration node( s) having an infinite
structural assessment cost." Id. at 3:6-10. The structural damage
assessment "provides a cost estimate or penalty accrued by traversing
specific anatomical areas ( e.g., critical anatomical structures within an
anatomical region and fragile entry points into the anatomical region)."
4:32-5:4. Thus, "[t]he structural damage assessment will facilitate path
planning within the anatomical region that minimizes overall damage." Id.
at 5:5---6.
Figure 13 is reproduced below.
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Application 13/139,803
FIG. 13
/ 164
)
Figure 13, reproduced above, "illustrates an exemplary structural damage
assessment map [164] in accordance with the present invention." Id. at
4: 17-18. The black states/nodes enclosed by thin white perimeters are
"forbidden areas." Id. at 10:15-17, see also id. at 11:6-10. The darker the
state/node, the higher the cost of traversing it. Id. at 10: 13 ("ranging from a
zero white coded cost to an infinity black coded cost"). The map "has color
coded areas with values collectively derived from the forbidden areas and
empirical data in a manner to avoid the forbidden areas to the greatest extent
possible to thereby minimize, if not prevent, any structural damage to
anatomical structures associated with the forbidden areas." Id. at 11:6-10.
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Application 13/139,803
The Rejected Claims
Of the pending and finally rejected claims, claims 1 and 14, are
independent. Appeal Br. 36-40. Claim 1 is representative and reads as
follows:
1. A method for use in a surgical application, the
method comprising:
constructing a configuration space node structure within
a data storage medium, the configuration space node structure
including free-space configuration nodes and forbidden
configuration nodes representing a discretized configuration
space of an anatomical region of a body; and
generating a structural damage assessment for each free-
space configuration node, the structural damage assessment
being indicative of an assessment of potential damage to at least
one critical anatomical area of the anatomical region
represented by the forbidden configuration nodes, each
forbidden configuration node having an infinite structure
damage assessment cost.
Id. at 36.
The Appealed Rejections
The following rejections are before us for review:
(1) Claims 1-15 under the judicial exception to 35 U.S.C. § 101
(Final Act. 2);
(2) Claims 1-5 and 10-15 under 35 U.S.C. § I03(a) as obvious
over Trovato2 and Hartlep3 (Final Act. 3); and
(3) Claims 4--9 under 35 U.S.C. § I03(a) as obvious over Trovato,
Hartlep, and Poole4 (Final Act. 4).
2 WO 2008/032230 Al, published Mar. 20, 2008 ("Trovato").
3 EP 1,844,725 Al, published Oct. 17, 2007 ("Hartlep").
4 US 7,379,062 B2, issued May 27, 2008 ("Poole").
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Application 13/139,803
DISCUSSION
Rejection 1
The Examiner rejected all pending claims under the judicial exception
to 35 U.S.C. § 101. Final Act. 2; see, e.g., Alice Corp. Pty. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2354 (2014) ("We have long held that this provision
[35 U.S.C. § 101] contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.").
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, we "first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice Corp., 134 S. Ct. at 2355.
This is sometimes referred to as step 2a. 5 If the claims are directed to an
ineligible concept in step 2a, then, in step 2b, we "consider the elements of
each claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id. ( quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)).
Pursuant to step 2a, the Examiner determined that the rejected claims
are directed to "the abstract idea of obtaining and comparing intangible data
and comparing data to determine a risk level." Nov. 21, 2016, Advisory
Act. 2; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1146-47 (Fed. Cir. 2016) ("[W]e continue to 'treat[] analyzing information
by steps people go through in their minds, or by mathematical algorithms,
5 Step 1 of Alice is determining whether the claims are directed to a
"process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' as recited in 35 U.S.C. § 101. Whether the
rejected claims pass step 1, which they do, is not at issue here.
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Application 13/139,803
without more, as essentially mental processes within the abstract-idea
category.'" (quoting Electric Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016)). Appellants do not identify any error in the
Examiner's determination that the claims are directed to an abstract idea.
See generally Appeal Br. 11-14 ( comparing "hypothetical" claims directed
purely to abstract ideas with Appellants' actual claims 1 and 14, which they
argue "provide significantly more than an abstract idea").
Thus, we tum to step 2b. Pursuant to that step, the Examiner stated
the following:
Final Act. 2.
The claim( s) does/ do not include additional
elements that are sufficient to amount to
significantly more than the judicial exception
because the claim recites a data storage medium to
store data. The addition of general purpose
computer components alone to perform such steps
is not sufficient to transform a judicial exception
into a patentable invention. The computer
components are recited at a high level of generality
and perform the basic functions of a computer (in
this case, storing an algorithm) that would be
needed to apply the abstract idea via a computer.
Merely using generic computer components to
perform the above identified basic computer
functions to practice or apply the judicial
exception does not constitute a meaningful
limitation that would amount to significantly more
than the judicial exception.
Appellants argue that the independent claims----claims 1 and 14---
"provide significantly more than an abstract idea." Appeal Br. 11. For
example, Appellants identify the following underlined claim language as
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Application 13/139,803
allegedly transforming claim 1 into patent-eligible applications of the
abstract idea.
1. A method for use in a surgical application, the
method comprising:
constructing a configuration space node structure within
a data storage medium, the configuration space node structure
including free-space configuration nodes and forbidden
configuration nodes representing a discretized configuration
space of an anatomical region of a body; and
generating a structural damage assessment for each free-
space configuration node, the structural damage assessment
being indicative of an assessment of potential damage to at least
one critical anatomical area of the anatomical region
represented by the forbidden configuration nodes, each
forbidden configuration node having an infinite structure
damage assessment cost.
Appeal Br. 11-12. Appellants identify similar, corresponding limitations for
claim 14. Id. at 13-14.
We are not persuaded. All of the underlined matter is a description of
information. Simply put, "[i]nformation as such is an intangible." Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d at 1353.
"[C]onstructing a configuration space node structure within a data
storage medium" ( as recited in claim 1) is collecting information, which is
abstract. See id. This is true even when, as here, the data are limited to
particular content such as information "representing a discretized
configuration space of an anatomical region of a body" ( as recited in claim
1 ). See id. ("[W]e have treated collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas." (emphasis added)).
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"[G]enerating a structural damage assessment for each free-space
configuration node" ( as recited in claim 1) is analyzing information, which
is also abstract. See id. at 1354 ("[A]nalyzing information by steps people
go through in their minds, or by mathematical algorithms, without more,
[are] essentially mental processes within the abstract-idea category.").
In sum, claim 1 recites a two-step method, with both steps involving
the mere manipulation of data. Appellants have not shown error in the
Examiner's rejection of claim 1 as patent-ineligible.
Claim 14 is an apparatus claim but Appellants concede that its only
tangible elements, "a data storage medium; and a data processing device,"
do not provide patent eligibility. See Appeal Br. 13 (not underlining those
elements). Instead, Appellants argue patent eligibility of claim 14 based on
recitations of intangible data. See id. at 13-14. For the same reasons as
claim 1, Appellants have not shown error in the Examiner's rejection of
claim 14 as patent-ineligible.
We have considered all of Appellants' arguments, including their
reliance on the underlined language of claims 1 and 14 on pages 12-14 of
their Appeal Brief, but none of them persuades us the Examiner erred in
rejecting the claims as patent ineligible.
We find no error in the Examiner's rejection of claims 1-15 under the
judicial exception to 35 U.S.C. § 101. Accordingly, that rejection is
affirmed.
Rejection 2
The Examiner rejected 1-5 and 10-15 under 35 U.S.C. § 103(a) as
obvious over Trovato and Hartlep. Final Act. 3.
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The Examiner found that Trovato, which is a published patent
application by one of the two Appellants, discloses all of the claimed subject
matter save a structural damage assessment. Id. (citing Trovato 6:25-8:4,
10:8-13:29, Figs. 1-3). The Examiner next found that Hartlep "teaches in
the same field of path planning a method of structure damage assessment."
Final Act. 3 (citing Hartlep i-fi-fl3, 24, Figs. 1-3). The Examiner concluded
that it, thus, "would have been obvious to one of ordinary skill in the art at
the time the invention was made to have provided Trovato with the
structural damage assessment as taught by Hartlep in order to reduce risk to
the patient." Id. at 3--4.
Appellants state that the:
Trovato Reference describes a construction of "a
configuration space node structure within a data storage
medium, the configuration space node structure including free-
space configuration nodes and forbidden configuration nodes
representing a discretized configuration space of an anatomical
region of a body" as recited in claims 1-5 and 10-15 ....
Generally, Hartlep teaches a risk assessment for a
planned trajectory of a device within the body whereby the
internal structure of a body of a patient is analyzed to determine
if one or more specific or critical regions or structures lie within
the planned trajectory of the device.
Appeal Br. 18 (underlining omitted).
Appellants, however, argue that the combination does not meet the
limitation of "generating a structural damage assessment for each free-space
configuration node," as recited in claim 1, because the combination of
teachings "exclusively provides a manner by which a free-space
configuration node may be distinguished from a forbidden configuration
node." Id. In other words, Appellants implicitly construe the limitation at
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issue to require more than a binary structural damage assessment such as the
non-binary assessment embodiment that is mapped in Figure 13 of the
Specification. Id. at 18-22.
We are not persuaded by Appellants' arguments, which are premised
on their reading of Hartlep as teaching binary-only risk assessment. We read
Hartlep, contrary to Appellants, to teach non-binary risk assessment. For
example, Examiner-cited portions of Hartlep state the following, which
fairly suggest a non-binary risk assessment:
[T]he levels of risk e.g. resulting from a specifically planned
trajectory or the difficulty in carrying out a surgical plan or
medical examination associated with planned stereotactic
trajectories can be assessed and related to a specific plan or
trajectory of a device to be introduced into, placed in and/or
moved in the body or patient. Especially, when considering a
particular plan for placing a device in a body, the proximity of a
treatment approach, e.g. a trajectory of the device, to risk
structures can be determined and the riskiness of a particular
treatment approach can be weighted, so that for example a plan
can be drawn up that the catheter to be placed in the body has a
predetermined mm1mum distance from certain critical
structures and stays e.g. at least 5 mm away from sulci or 7 mm
away from the optical nerve.
* * *
Another embodiment is the use of information for creation of
suggestions for trajectories that are placed in a predefined
distance to areas of predefined risk levels. This distance can be
the same constant distance for every critical structure with a
risk level above a predetermined risk level or can be related to
or proportional to the extent o(each level o(risk.
Hartlep 3: 12-18, 5:42--48 (all emphasis added).
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In view of these teachings, we do not find error in the Examiner's
rejection of claims 1-5 and 10-15 as obvious over Trovato and Hartlep. 6
Lastly, we acknowledge that Appellants superficially "argued"
various subsets of claims 1-5 and 10-15 under separate headings. Appeal
Br. 23-27. However, under none of those headings, do Appellants present
substantive arguments. Instead, under each such heading, Appellants merely
argue that the prior art "fails to render obvious the aforementioned
limitations of' various claims. See id. These arguments do not meet the
requirements of 37 C.F.R. § 4I.37(c)(l)(iv). See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) ("[T]he Board [has] reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art."). See also In re Huai-Hung Kao,
639 F.3d 1057, 1065 (Fed. Cir. 2011) (Statements in a brief that "merely
mention [a] claim ... and lack any type of separate, substantive argument
concerning the claim" are not sufficient to constitute separate argument
regarding that claim under 37 C.F.R. § 4I.37(c)(l)(iv)).
For the foregoing reasons, we affirm Rejection 2.
6 Additionally, it is not clear to us that the broadest reasonable construction
of generating/ generate "a structural damage assessment for each free-space
configuration node" excludes generation of a binary-only risk assessment.
Because the prior art is not so limited and because the Examiner and
Appellants did not squarely address this issue, we do not decide it. See Vivid
Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
("only those terms need be construed that are in controversy, and only to the
extent necessary to resolve the controversy").
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Application 13/139,803
Rejection 3
The Examiner rejected claims 4--9 under 35 U.S.C. § 103(a) as
obvious over Trovato, Hartlep, and Poole. Final Act. 4. Each of claims 4--9
depends directly or indirectly from claim 1.
Appellants argue Rejection 3 only on the basis that the additional
reference, Poole, fails to cure the alleged error in Rejection 2. Appeal Br.
29-34. As we find no error in Rejection 2, we likewise affirm Rejection 3.
SUMMARY
For the reasons discussed, we affirm the Examiner's rejection of all
claims on appeal.
TIME PERIOD
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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