Ex Parte Averbuch

Patent Trial and Appeal Board

Feb 5, 2019

13286947 (P.T.A.B. Feb. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/286,947
107146 7590
Covidien LP
5920 Longbow Drive
Mail Stop A36
11/01/2011
02/07/2019
Boulder, CO 80301-3299
FIRST NAMED INVENTOR
Dorian A verbuch
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.
H-IL-00045DIV2(l988-45DIV 3861
EXAMINER
TRAN,THOQ
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
02/07/2019 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):
rs. patents. two@medtronic.com
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DORIAN A VERBUCH 1
Appeal2018-003805
Application 13/286,947
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN and
ROBERT A. POLLOCK, Administrative Patent Judges.
POLLOCK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of representing a real-time location of a probe on a previously
acquired image, which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party-in-interest is Covidien LP, and the
ultimate parent of Covidien LP is Medtronic, plc. App. Br. 1.
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Application 13/286,947
STATEMENT OF THE CASE
"The method of the present invention relates generally to the accurate
registration of a detected sensor located in moving lungs to a static image of
the lungs." Spec. ,r 2. This method
provides a representative modeling of the human lungs, based
on statistical anatomical data, which can be tailored to the size
and shape of an individual patient. The method of the present
invention also utilizes a compilation of statistical anatomical
data regarding lung movement in order to predict the movement
of an individual patient's lungs during the breathing cycle.
Id. ,I 8.
The Specification describes embodiments of the invention with
respect to the reference numbers of Figure 1. For example, "[a]t 80 the
procedure begins on the patient. The patient movement sensors are placed
on or in the patient. The physician intubates the patient and the LG
[locatable guide] is inserted and tracked. The CT scan from 40 is displayed
and registered to the superimposed LG display." Id. ,r 26. "[T]he data
acquired at 80 may be used to determine which CT scan most accurately
depicts the configuration of the lungs and can thus be superimposed onto the
LG display." Id. ,I 29.
As the LG is being inserted, the location( s) of the patient
location sensors are constantly monitored and entered into the
algorithm to provide three dimensional location data on the
AOI(s) [areas of interest]. This information is then used at 90
to ensure that the display is modified such that the LG display
maintains an accurate registration with the CT scan, despite the
movement of the lungs, which cause the LG to move.
Id. ,I 27.
The measured location of the LG can be corrected using the
data acquired at 80. Rather than displaying the real-time data
acquired by the LG system, which represents the position of the
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Application 13/286,947
LG in relation to a magnetic field filling the AOI, the real-time
data is manipulated so the LG appears in the correct location on
the CT scan, which may be static or dynamic. In this way the
tool may be localized more correctly inside the CT volume.
The geometric model derived from the CT volume can thus be
more accurately represented relative to the tool inside the body.
Id. ,I 30.
Claims 22, 23, and 25-30 are on appeal. Claim 22, the only
independent claim at issue, is reproduced below with key limitations
emphasized:
22. A method of representing a real-time location of a
probe on a previously acquired image, comprising:
acquiring a plurality of images of a patient;
generating an electromagnetic field;
detecting at least one field strength of the generated
electromagnetic field with at least one sensor applied to an
exterior portion of the patient;
determining a location of the sensor applied to an exterior
portion of the patient in the generated electromagnetic field
based on the detected at least one field strength;
measuring a breathing cycle of the patient using the
determined location of the sensor applied to an exterior portion
of the patient during a respiration cycle of the patient;
detecting a real-time location of a sensor operatively
connected to a probe inserted into the patient;
identifying an image from the plurality of acquired
images corresponding to a detected location at which the at
least one sensor applied to the exterior portion of the patient is
located during at least one period of the respiration cycle;
manipulating real-time data associated with one of the
detected real time location of the sensor operatively connected
to the probe or the identified image from the plurality of
acquired images to depict the correct location and orientation
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Application 13/286,947
of the sensor operatively connected to the probe in the
identified image from the plurality of acquired images; and
superimposing a representation of the probe on the
identified image from the plurality of acquired images at the
detected location and orientation of the sensor operatively
connected to the probe.
The Examiner rejects claims 22, 23, and 26-30 under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Soper2 and Edwards. 3 Final Act. 6-
14.
The Examiner rejects claim 25 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Soper and Edwards as applied to claim 22 and further in
view ofWood. 4 Id. at 13-14.
The Examiner rejects claims 22, 23, and 25-30 as drawn to
unpatentable subject matter pursuant to 35 U.S.C. § 101. Id. at 5---6.
REJECTIONS UNDER 35 U.S.C. § I03(a)
The Examiner rejects claims 22, 23, and 25-30 over, inter alia, Soper
and Edwards. As Appellant does not argue the independent claims
separately, we limit our discussion to claim 22.
Appellant argues that the cited art fails to teach or suggest the step of
"manipulating real-time data associated with one of the detected real time
location of the sensor operatively connected to the probe or the identified
image from the plurality of acquired images to depict the correct location
and orientation of the sensor operatively connected to the probe in the
identified image," as recited in the independent claim. See App. Br. 9
2 Soper et al., US 2006/0149134 Al, published July 6, 2006.
3 Edwards et al., US 2009/0281566 Al, published Nov. 12, 2009.
4 Wood et al., US 2007/0167806 Al, published July 19, 2007.
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Application 13/286,947
(emphasis added). In sum, we adopt the Examiner's findings of fact and
reasoning regarding the scope and content of the prior art. (Final Act. 6-14;
Ans. 4--5) and agree that claim 22 is obvious over Soper and Edwards.
As noted by the Examiner, the disputed limitations encompass two
alternatives. See Final Act. 10. The first requires "manipulating real-time
data associated with . . . the detected real time location of the sensor
operatively connected to the probe ... to depict the correct location and
orientation of the sensor operatively connected to the probe in the identified
image." The second requires "manipulating real-time data associated with ..
. the identified image from the plurality of acquired images to depict the
correct location and orientation of the sensor operatively connected to the
probe in the identified image." Id.
Soper teaches a system for guiding an endoscope within a lung during
a bronchoscopy procedure including a continually updated visual display
showing the present position and orientation of the endoscope tip in a 3-D
graphical airway model generated from image reconstruction. Soper,
Abstract. According to the Examiner, it would have been obvious "to
modify Soper to select an image corresponding to the location of the
externally applied sensor during ... at least on[ e] period of the respiration
cycle as taught by Edwards." Final Act. 9.
Edwards teaches systems for image-guided interventions and viewing
the location of an instrument or probe inside a body, i.e., a bronchoscope
within a lung or other target anatomy. Edwards, Abstract, ,r 32. Images of
the target anatomy taken during various stages of periodic movement (e.g.,
during respiration) are gated or correlated to a specific point in the periodic
movement. Id. ,r,r 50-52, 124. Positional information from the instrument is
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Appeal2018-003805
Application 13/286,947
transformed into image space. Id. ,r 87. During navigation, data regarding
periodic movement of the target anatomy provides for the correct position
and orientation view of the instrument superimposed on the image. See id.
,r,r 88, 112, 113; Final Act. 9. As explained by the Examiner, Edwards
teaches "conversion of the location of the sensor in tracking space (i.e. the
general location in the field) to image space (i.e. location within the body; a
certain volume of space in the field corresponds to the person's body- this
transformation identifies the specific location in the body)." Ans. 4 ( citing
Edwards ,r,r 7 6, 79) ( emphasis added).
Appellant responds that the transformation taught by Edwards does
not render obvious the "manipulating" step of claim 22 because the "real-
time data associated with the location and orientation of the 'sensor' in claim
22 is manipulated," which requires a change or alteration in the real-time
data. Reply 6-7. Thus, Appellant argues, the "manipulation" of data in
claim 22 renders it "no longer identical to the real-time data that was
detected ... whereas the correlation disclosed in Edwards does not change
the real-time data, but merely calculates a difference in location of the probe
between the tracking space and the image space." Id. (emphasis removed).
We do not find Appellant's argument persuasive for the reasons
identified by the Examiner. Moreover, as noted by the Examiner, in
superimposing the correct position and orientation of an instrument on the
image of the target anatomy, Edward's employs a transformation of sensor
data. See Ans. 4. Edwards's integrative transformation renders obvious the
"manipulating" step of claim 22.
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Application 13/286,947
Accordingly, we affirm the Examiner's obviousness rejection of claim
22. Claims 23, and 25-30, which are not separately argued, fall with claim
22. 37 C.F.R. § 4I.37(c)(l)(iv).
PRINCIPLES OF LAW
A. SECTION 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. But the
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) and
Alice. 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 75-77). In accordance
with that framework, we first determine what concept the claim is "directed
to." See Alice, 573 U.S. 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. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk.").
Concepts 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, 69 (1972)). Concepts
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Application 13/286,947
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but 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 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, 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.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted).
"A claim that recites an abstract idea must include 'additional features' to
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ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
B. USPTOSECTION 101 GUIDANCE
The United States Patent and Trademark Office ("USPTO" or "the
Office") recently published revised guidance on the application of§ 101.
USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance ("Memorandum" or "Office Guidance"). 5
Under that guidance, we first look to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental processes);
and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)). 6
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:
5 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf.
6 We acknowledge that some of these considerations may be evaluated
properly under Step 2 of Alice (Step 2B of the Office Guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
this inquiry under Step 1 of Alice (Step 2A of the Office Guidance).
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(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
C. ANALYSIS
The Examiner rejects all pending claims as directed to ineligible
subject matter under 35 U.S.C § 101. Final Act. 2---6. At core, the rejection
contends that the steps recited in claim 22 comprise an abstract idea or
"mental steps capable of being carried out with pen and paper," and that the
"manipulating" step "amount[ s] to the application of mathematical
algorithms to accomplish the claimed objective." See Final Act. 3--4; Reply
2. In light of the recent Office Guidance, however, we do not reach that
conclusion.
As an initial matter, claim 22 does not recite, with any level of
particularity, a mathematical concept. See Diehr, 450 U.S. at 1051
("respondents do not seek to patent a mathematical formula but instead, they
seek patent protection for a process of curing synthetic rubber"). Nor is it
clear that the claim recites mental processes as contemplated under the
Office Guidance. To the contrary, claim 22 requires "generating an
electromagnetic field," "detecting at least one field strength of a generated
electromagnetic field," "determining a location ... based on the detected at
least on field strength," and "detecting a real-time location of a sensor
operatively connected to a probe inserted into the patient." The Examiner
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provides no evidence that these steps can be performed by purely mental
processes. Rather, these steps would appear to require apparatus for
generating and detecting a magnetic field, as well as instrumentation for
visualizing "a sensor ... inserted into the patient." See Research Corp.
Techs. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010) ("The fact that
some claims in the '310 and '228 patents require a 'high contrast film,' 'a
film printer,' 'a memory,' and 'printer and display devices' also confirm this
court's holding that the invention is not abstract."). And, to the extent claim
22 could be construed as reciting a judicial exception, it, nevertheless,
recites additional elements that integrate the judicial exception into a
practical application, and thus, "presents functional and palpable
applications" within the field of the invention. See id. at 868. In particular,
claim 22 recites a combination of steps designed to provide improved
location and orientation information regarding a probe inserted into the
body.
For these reasons, we reverse the rejection under 35 U.S.C § 101.
SUMMARY
For the reasons above, we affirm the Examiner's decision rejecting
claims 22, 23, and 25-30.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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