KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Apr 30, 2020

14428658 - (D) (P.T.A.B. Apr. 30, 2020)

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.
14/428,658 03/17/2015 Robert Manzke 2012P01163WOUS 4011
24737 7590 04/30/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT MANZKE, RAYMOND CHAN,
BHARAT RAMACHANDRAN, and
MICHAEL CHUN-CHIEH LEE

Appeal 2019-005011
Application 14/428,658
Technology Center 3700

Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9, 11–15, 21–24, 27, 28, and 30–32.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.
According to Appellant, the invention “relates to medical instruments
and systems[,] and more particularly to systems and method[s] . . . [that]

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Koninklijke Philips N.V. as the real
party in interest. Appeal Brief filed Feb. 26, 2019 (“Appeal Br.”), 1.
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employ shape sensing information for training and decision making in
medical and other applications.” Spec. 1. Below, we reproduce independent
claims 1 and 30 as illustrative of the appealed claims:
1. A rating system configured for utilization of an
actual elongated medical device for intracorporeal intervention,
at least a portion of said elongated medical device being
capable of being manipulated into different shapes
intracorporeally, said rating system being configured to rate a
performance of manipulating said portion of said elongated
medical device during a procedure, said system comprising:
a shape sensing system that includes a plurality of
sensors configured for sensing actual shapes of said portion of
said elongated medical device at various times during a
performance of the procedure and for outputting feedback
indicating the actual shapes of said portion of said elongated
medical device during the performance of the procedure, the
plurality of sensors including a plurality of fiber optic Bragg
grating sensors or a plurality of electromagnetic tracking
devices distributed along a length of said portion of said
elongated medical device;
a database of possible shapes and sequences of shapes of
said portion of said elongated medical device, the possible
shapes and sequences of shapes including a collection of poses
derived by appropriately performing the procedure with said
elongated medical device, wherein the possible shapes are
stored in the database as a collection of (x, y, z, t) coordinates
for a plurality of points along a length of the portion of said
elongated medical device specifying (x, y, z) positions of the
points at given times t when appropriately performing the
procedure; and
a processor comprising:
a) a shape sensing module configured for
interpreting the feedback from said sensors of said shape
sensing system to derive the actual shapes of said portion
of said elongated medical device during the performance
of the procedure; and
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b) a comparison module configured to compare
said actual shapes with the possible shapes in the
database and in response to said comparison, to output a
numerical score for the performance of the procedure.

30. A system configured for utilization of an actual
elongated medical device for intracorporeal intervention, at
least a portion of said elongated medical device being capable
of being actually manipulated into different shapes
intracorporeally, said system being configured to rate a user
performance of a procedure by comparison to one or more
appropriate performances of the procedure, said system
comprising:
a shape sensing system that includes a plurality of
sensors configured for sensing actual shapes of said portion of
said elongated medical device at various times during a
performance of the procedure and for outputting feedback
indicating the actual shapes of said portion of said elongated
medical device during the performance of the procedure,
wherein said plurality of actual sensors include a plurality of
fiber optic Bragg grating sensors or a plurality of
electromagnetic tracking devices distributed along a length of
said portion of said elongated medical device;
a database of possible shapes and sequences of shapes for
said portion of said elongated medical device, the possible
shapes and sequences of shapes including a collection of poses
derived by appropriately performing the procedure with said
elongated medical device; and
a shape sensing module configured for interpreting the
feedback from said sensors of said shape sensing system to
derive the actual shapes of said portion of said elongated
medical device during the performance of the procedure,
wherein the system is configured to update the database
to include in the possible shapes the actual shapes of said
portion of said elongated medical device which were derived
from the feedback from said sensors of said shape sensing
system during the performance of the procedure.
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REJECTIONS
The Examiner rejects the claims as follows:
I. Claims 1–9, 11–15, 21–24, 27, 28, and 30–32 under
35 U.S.C. § 101 as reciting only patent-ineligible subject
matter; and
II. Claim 30 under 35 U.S.C. § 103 as unpatentable over Cinquin
et al. (US 2011/0046476 A1, published Feb. 24, 2011)
(“Cinquin”) and Laby et al. (US 2010/0099951 A1, published
Apr. 22, 2010) (“Laby”).
PRINCIPLES OF LAW CONCERNING 35 U.S.C. § 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, the
Supreme Court’s two-step framework, described in Mayo and Alice, guides
us. See id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” Id. at 219 (“On
their face, the claims before us are drawn to the concept of intermediated
settlement, i.e., the use of a third party to mitigate settlement risk.”); see also
Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
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Concepts that the courts determined to be abstract ideas—and, thus,
patent ineligible—include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
67 (1972)). Concepts that the courts determined to be patent eligible include
physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
(quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
In Diehr, although the claim at issue recited a mathematical formula,
the Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”).
Nonetheless, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
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If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, the inquiry proceeds to the second
step where the elements of the claims are considered “individually and ‘as
an ordered combination’” to determine whether there are additional elements
that “‘transform the nature of the claim’ into a patent-eligible application.”
Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). This is “a
search 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.
at 217–18 (alteration in original).
2019 Revised Patent Subject Matter Eligibility Guidance
In 2019, the U.S. Patent and Trademark Office published revised
guidance on the application of § 101. See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
Under that Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as i) a fundamental economic
practice, or ii) managing personal behavior or relationships or
interactions between people, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application (see MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)
(9th Ed., Rev. 08.2017, Jan. 2018)).
A practical application “appl[ies], rel[ies] on, or use[s] the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance at 54.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim either:
(3) adds a specific limitation beyond the judicial
exception which is not “well-understood, routine, [or]
conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See generally Guidance.
ANALYSIS
Rejection I—Rejection under § 101
In the Final Office Action, the Examiner rejects each of the pending
claims—claims 1–9, 11–15, 21–24, 27, 28, and 30–32—under
35 U.S.C. § 101. Final Action 3–4. The Final Office Action was mailed on
October 10, 2018; i.e., prior to the U.S. Patent and Trademark Office’s § 101
Guidance described above.
In the Appeal Brief, Appellant argues that the Examiner’s § 101
rejection is in error because the Examiner does not apply the Guidance. See,
e.g., Appeal Br. 8. In the Answer, the Examiner acknowledges that “the
Final [Office Action] that is the subject of this appeal pre-dated the release
of the . . . [G]uidance.” Appeal Br. 4. Nonetheless, despite acknowledging
the Guidance, the Examiner does not undertake a complete analysis of any
claim, under or otherwise consistent with the Guidance. See Reply Br. 2–3.
For example, as we set forth above, the Guidance requires that even if
a claim (1) recites a judicial exception and (2) does not integrate that
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exception into a practical application, the Office must look to whether the
claim either:
(3) adds a specific limitation beyond the judicial
exception which is not “well-understood, routine, [or]
conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception
to determine whether the claim recites patent-eligible subject matter in
accordance with § 101. See generally Guidance. Also as set forth above,
the Office must consider the elements of the claims “individually and ‘as an
ordered combination’” to determine whether there are additional elements
that “‘transform the nature of the claim’ into a patent-eligible application.”
Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).
In neither the Final Office Action, nor, importantly, the Answer does
the Examiner analyze any claim to determine whether the claim recites
additional elements that transform the claim into a patent-eligible
application, as the Guidance requires. See Reply Br. 2–3. It is true that the
Final Office Action does state that “the claims do not include additional
elements that taken individually, and also taken as an ordered combination,
are sufficient to amount to significantly more than the judicial exception.”
Final Action 4. Here, the Examiner relies solely on paragraph 32 of
Appellant’s Specification. Id. However, neither this paragraph of the
Specification nor any other portion of the Final Office Action analyzes how
the recitations of any claim (for example, claim 1), taken as an ordered
combination, simply append what is well-understood, routine, and
conventional to the recited abstract idea.
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Furthermore, The Examiner’s characterization of what the claim is
“directed to” is inaccurate. The Examiner indicates that the claim is directed
to “collecting information,” “analyzing that information,” “and displaying
certain results of the collection and analysis,” “analogous to the [abstract
idea] found to be patent ineligible in, e.g., [Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)].” Final Act. 3 (emphasis
omitted). But there is more going on than that. The claimed process may
involve processing information, but the claimed subject matter calls for,
inter alia, “a shape sensing module” (see independent claims 1, 11, and 30;
independent claim 15 calls for deriving shapes) that is configured to
accomplish a certain function; i.e., “for interpreting the feedback signals
from said shape sensing system to derive the virtual shapes or actual shapes
of said portion of said elongated medical device during the virtual user
performance or actual user performance of the procedure” (claim 1).
Characterizing the claim as being directed to collecting, analyzing, and
displaying information misses a focus of the invention and, given what the
Specification describes, glosses over the advance over the prior art.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex., LLC v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC, 830 F.3d at 1353); see also Enfish, 822
F.3d at 1335. As the Federal Circuit stated in Ancora Technologies, Inc. v.
HTC America, Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018):
We examine the patent’s “‘claimed advance’ to determine
whether the claims are directed to an abstract idea.” Finjan, Inc. v.
Blue Coat System, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018). “In
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cases involving software innovations, this inquiry often turns on
whether the claims focus on ‘the specific asserted improvement in
computer capabilities . . . or, instead, on a process that qualifies as an
“abstract idea” for which computers are invoked merely as a tool.’”
Id. (quoting Enfish, 822 F.3d at 1335–36); see BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1285–86 (Fed. Cir. 2018).
Computers are improved not only through changes in hardware;
“[s]oftware can make non-abstract improvements to computer
technology . . . .” Enfish, 822 F.3d at 1335; see Finjan, 879 F.3d
at 1304. We have several times held claims to pass muster under
Alice step one when sufficiently focused on such improvements.
The Specification’s description of the problem and solution shows the
advance over the prior art by the claimed invention is not in the realm of
information processing but, as Appellant explains, in crafting
a specific system, including specific components, which
accomplishes a specific task of deriving the actual shapes of a
medical device during the performance of a procedure, and
provides an improvement over prior art methods of evaluating a
user's performance of a procedure.
Appeal Br. 11. The Specification states the problem:
In medical procedures, skill level and experience of a
physician generally dictates clinical efficiency and efficacy of
the procedure. This creates a bias in favor of experienced
physicians over fellows who are inexperienced, resulting,
eventually, in patients and hospital administrators preferring
and opting for the physicians with higher experience. In many
instances, this bias can be overcome by the proper training of
less experienced physicians.
Spec. 1. The solution of “a training or rating system is provided which
includes a shape sensing enabled device and a database of possible shapes
and sequences of shapes for the shape sensing enabled device.” Id.
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In our view, the claim as a whole reflects a specific asserted technical
improvement in the clinical treatment field over that which was available in
the prior art. Accordingly, we find Appellant’s arguments that the claimed
subject matter is directed to a technical improvement persuasive, given the
present record.
Specific asserted improvements, when claimed, can render claimed
subject matter not to be directed to an abstract idea. Cf. McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016)
(“When looked at as a whole, claim 1 is directed to a patentable,
technological improvement over the existing, manual 3-D animation
techniques.”)
It should be noted that we have addressed purported specific asserted
improvements in technology under step one of the Alice framework. This is
consistent with the case law. See Ancora, 908 F.3d at 1347 (“We have
several times held claims to pass muster under Alice step one when
sufficiently focused on such improvements.”). It can be discussed under
step two of the Alice framework as well. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1354–55 (Fed. Cir. 2014). “[R]ecent Federal Circuit
jurisprudence has indicated that eligible subject matter can often be
identified either at the first or the second step of the Alice/Mayo
[framework].” Guidance at 53; see also id. n.17.
In any case, there is sufficient evidence in the record before us that the
claimed subject matter reflects a specific asserted improvement in
technology over that which was practiced in the art, and for that reason we
determine that the claimed subject matter is not directed to an abstract idea.
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Accordingly, within the meaning of the Guidance, we find there is an
integration into a practical application.
For the foregoing reasons, we do not sustain the Examiner’s § 101
rejection.
Rejection II—Rejection under § 103
As set forth above, independent claim 30 recites, in relevant part, “a
database of possible shapes and sequences of shapes for said portion of said
elongated medical device, the possible shapes and sequences of shapes
including a collection of poses derived by appropriately performing the
procedure with said elongated medical device.” Appeal Br., Claims App. In
the Final Office Action, the Examiner determines that “this feature will
inherently be taught by the combination of Cinquin and Laby.” Final
Action 8 (emphases omitted). In the Appeal Brief, Appellant argues that this
is error on the Examiner’s part. Appeal Br. 19–23. In response to
Appellant’s argument, the Examiner determines that rather than inherently
teaching the claim recitation, “the [claimed] database of shapes of
endoscopes . . . would result from . . . combin[ing]” Cinquin and Laby as the
Examiner proposes. Answer 14; see also id. at 10–14.
We sustain the Examiner’s obviousness rejection because Appellant
does not argue that the Examiner’s determination is erroneous, and does not
otherwise persuade us that the Examiner errs. In the Reply Brief, Appellant
acknowledges that “[t]he Examiner . . . [no longer relies on a determination]
that the combination of the teachings of Cinquin and Laby would . . .
inherently teach a database,” but argues that the rejection is still in error
because “the Examiner still does not cite anything in Laby which teaches or
suggests tracking sequences of shapes of an elongated medical device (as
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opposed to merely detecting individual shapes), and . . . [Appellant] do[es]
not see such a disclosure in Laby.” Reply Br. 9–10 (emphases omitted).
This argument is not persuasive of error, as claim 30 does not include
such a recitation. Claim 30 does not disclose tracking sequences of shapes.
Claim 30 recites “tracking” only once—i.e., “a plurality of electromagnetic
tracking devices distributed along a length of said portion of said elongated
medical device.” Appeal Br., Claims App. Claim 30 recites “sequences of
shapes” only twice—i.e., “a database of possible shapes and sequences of
shapes for said portion of said elongated medical device, the possible shapes
and sequences of shapes including a collection of poses derived by
appropriately performing the procedure with said elongated medical device.”
Id. It is not clear from these portions of the claim that claim 30 recites
tracking sequences of shapes. Further, to the extent that claim 30 recites
(what we understand to be) tracking shapes, the claim recites “a shape
sensing module configured for interpreting the feedback from said sensors of
said shape sensing system to derive the actual shapes of said portion of said
elongated medical device during the performance of the procedure.” Id.
That is, the claim appears to recite tracking shapes, rather than sequences of
shapes.
Accordingly, Appellant does not establish that the Examiner errs in
rejecting claim 30 as obvious based on Cinquin and Laby. Thus, we sustain
claim 30’s obviousness rejection.
CONCLUSION
We REVERSE the Examiner’s rejection under § 101.
We AFFIRM the Examiner’s rejection under § 103.

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In summary:
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.
§ 41.50(f).
AFFIRMED IN PART

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 11–15,
21–24, 27,
28, 30–32
101 Eligibility 1–9, 11–15,
21–24, 27,
28, 30–32
30 103 Cinquin, Laby 30
Overall
Outcome
30 1–9, 11–15,
21–24, 27,
28, 31, 32