KONINKLIJKE PHILIPS N.V.Download PDFPatent Trials and Appeals BoardApr 30, 202014428658 - (D) (P.T.A.B. Apr. 30, 2020) 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. 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. Appeal 2019-005011 Application 14/428,658 2 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 Appeal 2019-005011 Application 14/428,658 3 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. Appeal 2019-005011 Application 14/428,658 4 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.”). Appeal 2019-005011 Application 14/428,658 5 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.”). Appeal 2019-005011 Application 14/428,658 6 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. Appeal 2019-005011 Application 14/428,658 7 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 Appeal 2019-005011 Application 14/428,658 8 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. Appeal 2019-005011 Application 14/428,658 9 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 Appeal 2019-005011 Application 14/428,658 10 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. Appeal 2019-005011 Application 14/428,658 11 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. Appeal 2019-005011 Application 14/428,658 12 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 Appeal 2019-005011 Application 14/428,658 13 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. Appeal 2019-005011 Application 14/428,658 14 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 Copy with citationCopy as parenthetical citation