Ex Parte Varghese et alDownload PDFPatent Trial and Appeal BoardNov 17, 201712026365 (P.T.A.B. Nov. 17, 2017) Copy Citation 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. 12/026,365 02/05/2008 Tomy Varghese 1512.225 2964 72088 7590 11/21/2017 WISCONSIN ALUMNI RESEARCH FOUNDATION C/O BOYLE FREDRICKSON S.C 840 North Plankinton Avenue Milwaukee, WI53203 EXAMINER LE, LONG V ART UNIT PAPER NUMBER 3768 NOTIFICATION DATE DELIVERY MODE 11/21/2017 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): docketing @boylefred.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOMY VARGHESE, ROBERT J. DEMPSEY, and BRUCE P. HERMANN Appeal 2015-004565 Application 12/026,365 Technology Center 3700 Before LISA M. GUIJT, JEFFREY A. STEPHENS, and GORDON D. KINDER, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 seek our review under 35 U.S.C. § 134(a) from the Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—23, 26, and 27, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is identified as the Wisconsin Alumni Research Foundation. App. Br. 4. Appeal 2015-004565 Application 12/026,365 Claimed Subject Matter The claimed invention relates to characterization of plaques on blood vessel walls, and in particular “attempts to better identify asymptomatic plaques that are prone to rupture releasing clinical emboli into the cerebral blood stream.” Spec. para. 7. Claims 1 and 14 are independent. Claim 1, reproduced below, illustrates the claimed subject matter. 1. An apparatus for a characterization of arterial plaque comprising: an imaging system configured to provide image data distinguishing plaque from at least a portion of a supporting arterial wall; an electronic computer configured to receive the image data, and to execute a stored program with the functions of: (1) isolate movement of the plaque from movement of the supporting arterial wall under a periodic force of pulsatile blood flow; (2) analyze the isolated movement of the plaque to extract a parameter characterizing a flexibility of the plaque; (3) compare the extracted parameter to a data structure relating flexibilities of plaque to quantitative risks of cognitive decline for a population of individuals; and (4) output a quantitative risk of cognitive decline based on the comparison of the extracted parameter to the data structure. Rejections I. Claims 1—23, 26, and 27 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Ans. 11—14. II. Claims 1—23, 26, and 27 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2—3. 2 Appeal 2015-004565 Application 12/026,365 III. Claims 1—8, 11—21, 23, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tang2 and Gorelick.3 Final Act. 4— 8. IV. Claims 9, 10, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tang, Gorelick, and Boese.4 Final Act. 8—9. DISCUSSION Rejection I— Subject Matter Eligibility The Examiner determines that the claims as a whole do not amount to significantly more than an abstract idea or a law of nature. Ans. 11. We sustain the Examiner’s rejection on the basis that the claims are directed to a law of nature and do not include additional elements that transform the nature of the claims into patent-eligible applications of the law of nature. The Examiner determines that “[t]he claims are directed towards the law of nature of certain types of plaques (and the movement of these plaques) correlate with a diagnosis and risk level of cognitive decline.” Ans. 13. Appellants, arguing all claims as a group, disagree, contending: Tellingly, these limitations are not directed to fundamental economic practices, certain methods of organizing human activities, mathematical relationships, or ideas themselves, nor do these limitations tie up the use of naturally occurring things. Instead, they properly serve to affirmatively define structural aspects of the claims, such as how the particular imaging system operably interrelates with the electronic computer. 2 US 2006/0149522 Al, published July 6, 2006. 3 Philip B. Gorelick, Risk Factors for Vascular Dementia and Alzheimer Disease, 35[suppl I] Stroke, 2620—22 (2004) (“Gorelick”), available at http://stroke.ahajoumals.org/content/35/ll_suppl_l/2620. 4 US 2005/0197559 Al, published Sept. 8, 2005. 3 Appeal 2015-004565 Application 12/026,365 Reply Br. 4. We select claim 1 as representative for purposes of the rejection under §101, and claims 2—23, 26, and 27 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We agree with the Examiner that claim 1 is directed to how “certain types of plaques (and the movement of these plaques) correlate with a diagnosis and risk level of cognitive decline,” which is a natural phenomenon or law. Ans. 13. Claim 1 involves analyzing movement of arterial plaque “to extract a parameter characterizing a flexibility of the plaque” and “compar[ing] the extracted parameter to a data structure relating flexibilities of plaque to quantitative risks of cognitive decline for a population of individuals.” Claim 1 recites that the ultimate purpose is to “output a quantitative risk of cognitive decline based on the comparison of the extracted parameter to the data structure.” As in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77 (2012), the relationship between flexibility of the plaque and the risk of cognitive decline is a consequence of natural processes within the body. None of Appellants’ arguments persuasively challenge the Examiner’s articulation of the natural law forming the basis of claim 1. The question remains, however, as to whether “the patent claims add enough to their statements of the correlations to allow the processes they describe to quality as patent-eligible processes that apply natural laws.” Id. The Examiner determines: The additional elements or combination of elements in the claims other than the law of nature amounts to no more than a generic “imaging system” and an “electronic computer,” both of which would be understood by a person of ordinary skill in the art to be “generic computers” for performing generic computer functions 4 Appeal 2015-004565 Application 12/026,365 that are well-understood, routine and conventional activities previously known to the industry. Ans. 13. Appellants, on the other hand, contend that the claims “provide a clear technological improvement, including in the field of medical imaging and treatment, without tying up a fundamental building block.” Reply Br. 4. Appellants contend the claims require “specialized, imaging capable hardware,” and that the limitations of the claims “go well beyond a mere recitation of excepted subject matter coupled with the words ‘apply if (to a generic computer).” Id. at 4—5. Appellants contend they do not attempt “to broadly claim a general concept, such as a relationship between arterial plaque and cognitive decline.” Id. at 5. Appellants also argue that the “specialized, imaging capable hardware, particular measurements characterizing flexibility of plaque, and comparisons to a population for producing an output” required by the claims make them more akin to Diamond v. Diehr, 450 U.S. 175 (1981), than to Gottschalkv. Benson, 409 U.S. 63 (1972), Parker v. Flook, 437 U.S. 584 (1978), ox Mayo. Reply Br. 5. In Mayo, the Court explained that “[t]he claims purport to apply natural laws describing the relationships between the concentration in the blood of certain thiopurine metabolites and the likelihood that the drug dosage will be ineffective or induce harmful side-effects.” Mayo, 566 U.S. at 72. The Court found that the “the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.” Id. at 73. In considering whether the claimed ordered combination of steps 5 Appeal 2015-004565 Application 12/026,365 requiring administration of the drug and determining the level of metabolites added enough to the natural laws, the Court determined that “[ajnyone who wants to make use of these laws must first administer a thiopurine drug and measure the resulting metabolite concentrations, and so the combination amounts to nothing significantly more than an instruction to doctors to apply the applicable laws when treating their patients.” Id. at 79. Here, there is no indication that what Appellants characterize as “specialized, imaging capable hardware” is anything more than a conventional ultrasound machine. See Spec, paras. 32—34. Appellants do not purport to have improved ultrasonic imaging machines, and any additional processing is performed by a generic “processor.” See Spec. para. 33. Moreover, although Appellants state that the claim does not attempt to broadly claim a relationship between arterial plaque and cognitive decline, anyone who wants to make use of this correlation would need to measure the flexibility of the plaque and compare it to risks of cognitive decline for a population of individuals as recited in the claim. Tellingly, Appellants do not argue there is any way to make use of the correlations between flexibility of plaque and risk of cognitive decline other than to analyze movement of the plaque isolated from the movement of the supporting arterial wall. Thus, similar to the claims in Mayo, the claims do not require anything more than gathering the necessary data from which an inference may be drawn in light of the correlations. See Mayo, 566 U.S. at 79 (“The upshot is that the three steps simply tell doctors to gather data from which they may draw an inference in light of the correlations.”). Therefore, we agree with the Examiner that claim 1 does not provide meaningful limitations to transform the law of nature into a patent eligible application. 6 Appeal 2015-004565 Application 12/026,365 Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claim 1 under 35 U.S.C. § 101, and we sustain the rejection. Claims 2—23, 26, and 27 fall with claim 1. Rejection II— Written Description The Examiner finds that the term “data structure” is not found in Appellants’ originally-filed application, and that one of ordinary skill in the art would not recognize that Appellants had possession of the claimed invention reciting “a data structure relating flexibilities of plaque to quantitative risks of cognitive decline for a population of individuals,” as recited in independent claims 1 and 14. Final Act. 2—3. Appellants contend the subject matter need not be described in haec verba in the Specification, and that the Specification “would clearly allow persons of ordinary skill in the art to recognize that Applicant was in possession of a ‘data structure’ as claimed.” App. Br. 8—9. In particular, Appellants point to paragraph 33’s description of “a processor 26 having a stored program 28” and paragraph 49’s description of a “multidimensional risk function embodied, for example, in a lookup table being part of program 28.” App. Br. 8 (emphasis omitted). Appellants contend the Examiner interprets a “data structure” to include any and all data formats, and Appellants argue that a multidimensional risk function, including the lookup table embodiment, fall under a “data structure” under the Examiner’s interpretation because they are data formats. Appellants’ arguments do not inform us of error in the Examiner’s rejection. Although we agree with Appellants that the exact terms need not 7 Appeal 2015-004565 Application 12/026,365 be used in the original Specification, we do not agree that it is sufficient merely to disclose any example of a broader genus introduced in the claims by amendment. We agree with the Examiner that “[t]he term ‘data structure’ encompasses a much broader genus,” Ans. 14, than the “multidimensional risk function embodied, for example, in a lookup table” described in the Specification at paragraph 49. Moreover, we do not discern how the example of a multidimensional risk function, including embodied as a lookup table, demonstrates possession of all possible data structures. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claims 1—23, 26, and 27 under 35 U.S.C. § 112, first paragraph, and we sustain the rejection. Rejection III— Obviousness (Claims 1—8, 11—21, 23, 26, and 27) Claims 1 and 14 Appellants argue claims 1 and 14 as a group. App. Br. 9-13. We select claim 1 as representative, and claim 14 stands or falls therewith. 37 C.F.R. § 41.37(c)(l)(iv). Appellants contend the Examiner cites Appellants’ own disclosure against the claims. App. Br. 9—11. The Examiner responds that the Examiner erroneously cited to the wrong document but that it did not affect prosecution of the application because the rejection also contained proper citations to the Tang reference. Ans. 15. The Examiner also provides a corrected rejection in the Answer. Ans. 4—8. Thus, Appellants’ argument regarding citations to the Specification does not inform us of error in the rejection, and Appellants do not provide any further response to this issue in the Reply Brief. See Reply Br. 2—3. 8 Appeal 2015-004565 Application 12/026,365 Appellants also argue the cited references (Tang and Gorelick) do not teach “measuring flexibility of arterial plaque and providing an output of cognitive decline.” App. Br. 11. Appellants argue “Tang generally discloses a ‘mechanical analysis’ measuring many different factors,” but argue that the particular claim limitations are not taught, suggesting it is insufficient for the Examiner to rely on the obviousness of minor modifications to measure the particular factors required by the claims. Id. at 12 (citing Tang para. 6). We agree with the Examiner that Tang teaches measuring flexibility of plaque in teaching strain measurements. Ans. 16. As the Examiner points out, strain measurements are the only example of measuring flexibility described in Appellants’ Specification. Id. (citing Spec. para. 45); see also Spec, paras. 42-44. Tang specifically teaches computational modeling that includes “unsteady stress/strain variations at critical locations under pulsating pressure conditions” and “sensitivity studies of stress/strain behaviors on plaque components.” Tang para. 66; see Ans. 5—6, 16; Final Act. 4—5. Tang’s characterization of strain behavior relates to flexibility of plaque in the same way as the strain measurements described in Appellants’ Specification. Accordingly, Appellants’ arguments as to “flexibility” do not inform us of error in the rejection. Appellants also contend “there is clearly no recognition in the art or in Gorelick that plaque flexibility relates in any respect to cognitive decline.” App. Br. 12. Appellants contend that Gorelick teaches other metrics and factors, and “describes merely an association between these factors, which is insufficient to suggest that one factor could predict the other.” Id. at 13. 9 Appeal 2015-004565 Application 12/026,365 Appellants’ arguments do not address the combined teachings of the references. As the Examiner finds, Tang teaches that its invention is applicable to “cardiovascular diseases” and “can be used for diagnosing carotid plaque rupture and coronary plaque rupture or aneurism rupture.” Ans. 19-20 (quoting Tang para. 11). In context, it is evident that the “unsteady stress/strain variations” and behaviors described in paragraph 66 of Tang are used in assessing plaque vulnerability to rupture. See Tang para. 62 (“In one specific embodiment, for providing assessment for plaque vulnerability to rupture, a method (at 203) of the invention provides the assessment preferably by identifying and analyzing a local maximum stress/strain in arteries having plaques, rather than by an overall maximum stress/strain.”). Thus, Gorelick is not relied on alone for teaching a correlation between plaque flexibility and cardiovascular disease, but rather to link cardiovascular disease and cognitive impairment. For example, the Examiner finds “Gorelick teaches a correspondence between Alzheimer’s disease and atherosclerosis, and discloses that vascular factors may increase the risk of cognitive impairment, Alzheimer’s disease or vascular cognitive impairment.” Ans. 7—8. Appellants do not persuasively dispute these findings. We also agree with the Examiner that Tang’s teaching of quantifying the degree of disease state suggests outputting the quantitative risk of cognitive decline, when viewed in connection with the teachings of Gorelick. See Ans. 17 (citing Tang para. 47). Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we 10 Appeal 2015-004565 Application 12/026,365 sustain the rejection of representative claim 1 and the rejection of claim 14, which is not argued separately. Claims 2 and 15 Dependent claims 2 and 15 are argued as a group. App. Br. 13. We select claim 2 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claim 2 depends from claim 1 and recites that “the analysis determines at least one of: axial strain in the plaque and axial displacement in the plaque.” Appellants argue that Tang does not describe an analysis to determine axial strain in the plaque or axial displacement in the plaque, and that “[bjroad citations to paragraphs relating to ‘stress/strain distribution(s)’ in ‘3D FSI models’ do not cure this deficiency.”5 App. Br. 13. The Examiner’s Answer further cites paragraph 66 of Tang in support of the rejection of claim 2, finding that “[o]ne of ordinary skill in the art would readily understand the connection between measuring strain variations and behaviors for plaques (as is disclosed in Tang), and measuring ‘lateral strain of the plaque’ as is claimed by [A]ppellant[s].” Ans. 21. Appellants do not address this finding. We agree with the Examiner because one of ordinary skill in the art would have understood that the strain taught in Tang may be measured in various directions, including axially. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we sustain the rejection of representative claim 2 and the rejection of claim 15, which is not argued separately. 5 “psi” refers to fluid-structure interaction(s). Tang para. 52. 11 Appeal 2015-004565 Application 12/026,365 Claims 3 and 16 Dependent claims 3 and 16 are argued as a group. App. Br. 14. We select claim 3 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claim 3 depends from claim 1 and recites that “the analysis determines at least one of lateral strain of the plaque and lateral displacement of the plaque.” Appellants argue the rejection of claim 3 is in error for the same reasons as the rejection of claims 2 and 15. App. Br. 14. For the same reasons as claim 2, we are not informed of error in the rejection of claim 3. We agree with the Examiner that “[o]ne of ordinary skill in the art would readily understand the connection between measuring strain variations and behaviors for plaques (as is disclosed in Tang), and measuring ‘lateral strain of the plaque’ as is claimed by [A]ppellant[s].” Ans. 21. In other words, one of ordinary skill in the art mapping stress/strain behaviors of plaques would have known to determine lateral strain of the plaque as part of the analysis. Appellants do not persuasively challenge this finding. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we sustain the rejection of representative claim 3 and the rejection of claim 16, which is not argued separately. Claims 4 and 17 Dependent claims 4 and 17 are argued as a group. App. Br. 14. We select claim 3 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claim 4 depends from claim 1 and recites that “the analysis determines shearing strain in the plaque.” Appellants note the Examiner’s 12 Appeal 2015-004565 Application 12/026,365 citation to paragraphs 20, 22, 57, 60, 61, and 84 of Tang, and argue that “Tang’s reference to depictions in modeled stress [does] not teach analysis to determine shearing strain in the plaque.'” App. Br. 14. As discussed above, the Examiner finds “Tang teaches measuring and analyzing parameters which are indicative of ‘flexibility’ which include ‘stress/strain variations’ and ‘stress/strain behaviors,” not merely modeling stress. Ans. 21—22. Appellants’ arguments do not inform us of error in this finding, or the finding that one of ordinary skill in the art would have understood Tang’s measurements to include measuring shearing strain in the plaque. Ans. 22. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we sustain the rejection of representative claim 4 and the rejection of claim 17, which is not argued separately. Claims 5 and 18 Dependent claims 5 and 18 are argued as a group. App. Br. 14—15. We select claim 5 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claim 5 depends from claim 1 and recites that “the imaging system is an ultrasonic imaging system.” Appellants assert that Tang “criticizes ultrasonic imaging in favor of ‘3D computational model’ analysis” because Tang teaches that available ultrasound medical imaging equipment does not have computational mechanical analysis and related predictive computational indices. App. Br. 14—15 (citing Tang para. 4). Appellants contend that “Tang limits any such as use of MRI or ultrasound data to 13 Appeal 2015-004565 Application 12/026,365 merely constructing the 3D model from which Tang computationally analyzes.” Id. at 15. Appellants’ argument is in error. As the Examiner finds, paragraph 48 teaches the use of “ultrasound/doppler measurements data.” Ans. 22. In addition, even if this measurement data is used to create a 3D model, as asserted by Appellants, App. Br. 15, the model is representative of an organ and is used to determine the disease status. See, e.g., Tang para. 48 (“For the construction of the 3D organ model. . ., the invention typically includes collecting data ... of an organ that is representative of disease status of a disease under investigation.”). Appellants do not persuasively explain how an “ultrasonic imaging system” (as recited in claim 5) used to “provide image data distinguishing plaque from at least a portion of a supporting arterial wall” (as recited in independent claim 1) differs in any relevant respect from constructing a 3D model of a blood vessel from ultrasound data, as taught in Tang. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we sustain the rejection of representative claim 5 and the rejection of claim 18, which is not argued separately. Claims 6 and 19 Dependent claims 6 and 19 are argued as a group. App. Br. 15. We select claim 6 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claim 6 depends from claim 1 and recites wherein the movement of the plaque is isolated from the movement of the portion of the supporting arterial wall by compensating for movement of the portion of the supporting 14 Appeal 2015-004565 Application 12/026,365 arterial wall from movement of the plaque by comparison of the movement of the portion of the supporting wall to movement of the plaque. Appellants argue “nowhere does Tang describe isolating movement of the plaque. Rather, paragraphs 51-53 merely describe techniques for constructing a 3D model of an artery having plaque(s). Consequently, Tang does not disclose these limitations.” App. Br. 15. The Examiner explains that Tang teaches a vessel layer in the models that accounts for the artery, and that a person of ordinary skill would recognize that in Tang the movement of the plaque is isolated from the movement of the portion of the supporting arterial wall as claimed. Ans. 22—23. This finding is further confirmed by the Examiner’s findings as to Tang’s paragraph 66, which describes “unsteady stress/strain variations at critical locations under pulsating pressure conditions” and “sensitivity studies of stress/strain behaviors on plaque components.” In order to determine strain at any particular plaque location, movement or displacement must be considered relative to other locations within the plaque, not based on movement with the arterial wall on which the plaque is located. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we sustain the rejection of representative claim 6 and the rejection of claim 19, which is not argued separately. Claims 7 and 20 Dependent claims 7 and 20 are argued as a group. App. Br. 15—16. We select claim 7 as representative. 37 C.F.R. § 41.37(c)(l)(iv). 15 Appeal 2015-004565 Application 12/026,365 Claim 7 depends from claim 1 and recites “wherein the isolation of movement of the plaque compares movement of a first portions [sic] of the plaque to movement of other portions of the plaque.” Appellants argue: [NJowhere does Tang describe comparing movement of portions of the plaque. Paragraph 59 describes “identifying one or more critical sites.” However, at best, using 3D FSI model, Tang compares such critical sites to a “standard value.” This does not disclose comparing movement of first portions of the plaque to movement of other portions of the plaque. App. Br. 16. The Examiner finds that “Tang teaches identifying ‘critical sites’ based on plaque movement features (such as mechanical and stress/strain distributions, see Paragraph 59).” Ans. 23. The Examiner further finds that one of ordinary skill in the art would have understood that the designation of “critical sites” must necessarily require some comparison with adjacent non- critical sites, thus teaching comparing movement of first portions of the plaque to movement of other portions of the plaque. Id. We agree. In addition, as discussed above for claims 6 and 19, in order to determine strain at any particular plaque location as taught in Tang, movement or displacement must be considered relative to other locations within the plaque. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we sustain the rejection of representative claim 7 and the rejection of claim 20, which is not argued separately. 16 Appeal 2015-004565 Application 12/026,365 Claims 8 and 21 Dependent claims 8 and 21 are argued as a group. App. Br. 16. We select claim 8 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claim 8 depends from claim 1 and recites “wherein the electronic computer further provides a display of the image data and a cursor for identifying a region of plaque and a region of supporting arterial wall.” Appellants argue: The Examiner again cites to Paragraph 59, which describes identifying one or more critical sites and using a 3D FSI model to compare such critical sites to a “standard value.” Though Applicant does not dispute that “system components such as mouse, keyboard and display” are well known, applying a cursor for identifying (1) a region of plaque and (2) a region of supporting arterial was not previously known as the benefit was not previously recognized. Tang does not disclose providing a cursor identifying a region of plaque and a region of supporting arterial wall, and as a result, Tang does not disclose these limitations. App. Br. 16. The Examiner explains that “Appellants] seek[] to impart the functional limitations of the second half of the claim onto only the ‘cursor,’ however this is inconsistent with a plain reading of the claim.” Ans. 24. The Examiner finds Appellants do not dispute that Tang teaches a display of the image data and a cursor. Id. The Examiner finds that Tang also teaches the function of identifying one or more sites where the plaque is vulnerable to rupture. Id. (citing Tang para. 59). The Examiner’s construction of claim 8 is reasonable because the claim does not specify a particular manner in which the cursor must be used “for identifying a region of plaque and a region of supporting arterial wall.” As part of Tang’s computer system, the 17 Appeal 2015-004565 Application 12/026,365 cursor contributes to the function of the computer system as a whole. Because the computer system taught in Tang is used to perform the function recited in the claim, we agree with the Examiner that all limitations of the claim are taught. In addition, one of ordinary skill in the art would have recognized that a cursor is used to identify a particular location on a display and would have known to use the cursor to locate both the plaque and supporting arterial wall on the display to analyze characteristics of the plaque as described in paragraph 59 of Tang. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we sustain the rejection of representative claim 8 and the rejection of claim 21, which is not argued separately. Claims 11—13 and 23 With respect to claims 11—13 and 23, Appellants merely quote the Examiner’s findings, recite the limitations of the claims with emphasis on certain terms, and argue these limitations are not taught by Tang. App. Br. 17—18. Appellants’ statements do not inform us of error in the Examiner’s findings or reasoning. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1356—57 (Fed. Cir. 2011) (holding that “the Board 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”). 18 Appeal 2015-004565 Application 12/026,365 Accordingly, we are not informed of error in the Examiner’s rejection of claims 11—13 and 23 under 35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick, and we sustain the rejection. Claims 26 and 27 Dependent claims 26 and 27 are argued as a group. App. Br. 18. We select claim 26 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claim 26 depends from claim 1 and recites “wherein the data structure is a stored look-up table providing an empirically based mapping of at least one measure of movement of plaque to risk of cognitive decline.” Appellants argue: Tang merely exemplifies varying material parameters used in a baseline model. Tang does this simply to illustrate “that obtaining accurate material property information is helpful for the accuracy of computational simulations.” Tang does not convey “empirically based mapping of at least one measure of movement of plaque to risk of cognitive decline,” nor “measuring movement of plaque and cognitive decline in a sample population to provide the output based on the comparison of the extracted parameter to the empirically derived data structure.” Consequently, Tang does not disclose these limitations. App. Br. 18. The Examiner finds Tang teaches the disputed limitations of claim 26 in teaching a data table with diagnostic relevance and the step of correlating plaque mechanical data with diagnostic data, citing paragraph 89 and Table 1. Ans. 27. The Examiner also finds “[a] person of ordinary skill in the art would recognize that the material property information acquired by [Tjang has immediate diagnostic relevance, and could be used for assessing risk of cognitive decline.” Id. We agree, and note also that the computational 19 Appeal 2015-004565 Application 12/026,365 mechanical indices taught in Tang are based on a standard value “provided by analyzing pathological data of plaques ... or by analyzing long-term tracking data of patients with advanced plaques and rate of clinical events (actual rupture rate).” Tang para. 59. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claim 26 under 35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we sustain the rejection of representative claim 26 and the rejection of claim 27, which is not argued separately. Rejection IV— Obviousness (Claims 9, 10, and 22) Appellants argue the rejection of dependent claims 9, 10, and 22 is in error because Boese fails to cure the deficiencies alleged as to independent claims 1 and 14. App. Br. 19. As discussed above, we are not informed of error in the rejection of claims 1 and 14. Appellants also assert relevant to claims 10 and 22 that “Boese does not disclose analyzing the ‘ensemble averaged’ data as claimed.” Id. Appellants’ mere assertion that this claim element is not found in Boese does not inform us of error in the Examiner’s findings or reasoning. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also Lovin, 652 F.3d at 1356—57 (holding that “the Board 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”). 20 Appeal 2015-004565 Application 12/026,365 Accordingly, we are not informed of error in the Examiner’s rejection of claims 9, 10, and 22 under 35 U.S.C. § 103(a) as unpatentable over Tang, Gorelick, and Boese, and we sustain the rejection. DECISION We affirm the Examiner’s rejections of: I. claims 1—23, 26, and 27 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter; II. claims 1—23, 26, and 27 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; III. claims 1—8, 11—21, 23, 26, and 27 under 35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick; and IV. claims 9, 10, and 22 under 35 U.S.C. § 103(a) as unpatentable over Tang, Gorelick, and Boese. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 21 Copy with citationCopy as parenthetical citation