Ex Parte AVINASH et al

Board of Patent Appeals and Interferences

Jun 2, 2009

10250222 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GOPAL B. AVINASH, KADRI NIZAR JABRI,
JOHN M. SABOL, RENUKA UPPALURI, and
VIANNEY PIERRE BATTLE
____________

Appeal 2009-1542
Application 10/250,222
Technology Center 2600
____________

Decided:1 June 2, 2009
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and CARLA M. KRIVAK,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1542
Application 10/250,222

2
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse. However, we enter new grounds of rejection under 37 C.F.R.
§ 41.50(b).

STATEMENT OF THE CASE
Appellants invented an image processing system and method. The
system and method generate two different datasets using a dataset generator
and derive a member or data from each dataset. The derived members or
temporal change between the derived members is compared and a
comparison image is generated based on the derived members.2 Independent
claim 1 is reproduced below:
1. An image processing system comprising:

a temporal processing unit adapted to generate a first derived
member of a first dataset from two or more acquired members of said
first dataset,

said temporal processing unit further adapted to generate a first
derived member of a second dataset from two or more acquired
members of said second dataset,

said temporal processing unit further adapted to compare said
first derived member of said first dataset and said first derived
member of said second dataset and generate a comparison signal
therefrom.

2 See generally Spec. ¶¶ 24, 26, 35, 41, and 55.
Appeal 2009-1542
Application 10/250,222

3
The Examiner relies upon the following as evidence in support of the
rejection:
Riederer US 4,542,459 Sep. 17, 1985
Roell US 2003/0144589 A1 July 31, 2003
(filed Dec. 6, 2002)

Kaufman US 6,901,277 B2 May 31, 2005
(filed July 17, 2001)

1. Claims 1, 3-6, 8, 10, 14, 15, and 17 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Roell (Ans. 3-6).
2. Claims 2, 7, 12, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Roell3 and Riederer (Ans. 6-8).
3. Claims 9, 11, 13, 16, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Roell and Kaufman (Ans. 8-11).
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer4 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments, which Appellants could have made but did not
make in the Briefs, have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

3 The rejection’s heading states the claims are rejected based on Kaufman
and Riederer (Ans. 6). Nonetheless, the body of the rejection clearly refers
to what Roell lacks and discusses improving upon Roell based on Riederer’s
teachings (Ans. 7). We, therefore, deem this error harmless and presume
claims 2, 7, 12, 18, and 19 are rejected under Roell and Riederer.
4 Throughout this opinion, we refer to: (1) the most recent Appeal Brief filed
August 16, 2007; (2) the Examiner’s Answer mailed October 29, 2007; and
(3) the Reply Brief filed January 3, 2008.
Appeal 2009-1542
Application 10/250,222

4
ANTICIPATION REJECTION
We address the claims as follows: (1) claims 1, 3-6, and 8; (2) claims
10, 14, and 15; and (3) claim 17 (App. Br. 3-4).

Claims 1, 3-6, and 8
The Examiner finds that Roell discloses all the limitations of claim 1,
including a temporal processing unit capable of generating first derived
members from two or more acquired members of the first dataset and the
second dataset, respectively, and comparing the derived members of the first
and second datasets (Ans. 3-4). Specifically, the Examiner finds that the
processing system shown in Figure 2 of Roell includes: (1) generating a first
derived member from two acquired members of the first dataset in steps 22
and 23; (2) generating a first derived member from two acquired members of
the second dataset in steps 24 and 25; and (3) comparing the derived
members at steps 33 and 36 (Ans. 3-4). Appellants argue that Roell does not
disclose deriving members from the datasets or comparing derived members.
Merely registering and storing a dataset, in Appellants’ view, does not derive
members or compare derived members of different datasets as required by
claim 1 (App. Br. 3-4; Reply Br. 2).

ISSUES
The following issues have been raised in the present appeal:
(1) Under § 102, have Appellants shown that the Examiner erred in
finding that Roell discloses a temporal processing unit that can generate a
Appeal 2009-1542
Application 10/250,222

5
first derived member from at least two acquired members of a first dataset
and a first derived member from at least two acquired members of a second
dataset in rejecting claim 1?
(2) Under § 102, have Appellants shown that the Examiner erred in
finding that Roell discloses a temporal processing unit that can compare the
first derived members from the first and second datasets and generate a
comparison signal from the comparison in rejecting claim 1?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Roell
1. Roell discloses a magnetic resonance apparatus for imaging a portion
of the human body 19. Roell discloses the magnetic resonance
apparatus includes a basic field magnet system 11 connected to a
control system 16 that obtains information about the patient’s region
of interest in slices. (¶ 20 and 23; Fig. 1).
2. The imaging technique includes: (1) registering a first dataset (e.g.,
data for a first slice of the region of interest) by combining a first set
of operating parameters (e.g., resolution and orientation of a first
slice) that are entered by operator in step 22; (2) after acquisition of
the first dataset, storing the first dataset along with the registered
operating parameters in the control system 16 in step 23; (3)
registering a second dataset (e.g., data for a second slice of the region
of interest) by combining a second set of operating parameters that are
entered by operator in step 24; and (4) after acquisition of the second
Appeal 2009-1542
Application 10/250,222

6
dataset, storing the second dataset along with the registered operating
parameters in the control system 16 in step 25. (¶ 23; Fig. 2).
3. Roell discusses known methods for acquiring positional changes in
datasets by comparing two datasets that differ in time. In order to
detect any positional change in the interest region, Roell compares:
(1) a first dataset to a first follow-up dataset acquired later in time in
step 33 and (2) a second dataset to a second follow-up dataset
acquired later in time in step 36. (¶¶ 7, 25; Fig. 2).
4. Roell states the first dataset and the first follow-up dataset can be
displayed as images at display 17, and the two images can be directly
compared by a physician. (¶ 27).
5. Roell states the generated magnetic resonance images are displayed
on display 17. (¶ 21; Fig. 1).

Appellants’ Specification
6. Appellants state that “[d]erived (decomposed) members result from
the combination of existing members (acquired or derived)[.]” (¶ 41).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Calif., 814 F.2d 628, 631
(Fed. Cir. 1987) (citations omitted). Also, during examination of a patent
application, a claim is given its broadest reasonable construction “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
Appeal 2009-1542
Application 10/250,222

7
2004) (internal quotation marks and citations omitted). “[T]he words of a
claim ‘are generally given their ordinary and customary meaning.’” Phillips
v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal
citations omitted).

ANALYSIS
We begin our analysis by interpreting the phrase “derived member” in
claim 1. The Specification does not define the phrase, but does state that
“[d]erived (decomposed) members result from the combination of existing
members (acquired or derived)” (FF 6). Appellants argue that the phrase
“derived member” has a special meaning to an ordinarily skilled artisan
since “[i]t is well known that derived data is data that is the result of a
computational step applied to reference of event data. Derived data is the
result of relating one or more elements of a transition to an external
algorithm or rule” (Reply Br. 2). However, Appellants do not provide any
support for this “well known” understanding. Arguments made by counsel
do not take the place of evidence in the record. In re Schulze, 346 F.2d 600,
602 (CCPA 1965); see also In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997).
Thus, we find this definition more restrictive than the discussion in the
Specification, which does not limit derived members to data resulting from
computational steps, an algorithm, or a rule. The phrase “derived member”
will therefore be given its ordinary and customary meaning, and the word
“derive” means “to trace from the derivation of” or “to have or take origin:
Appeal 2009-1542
Application 10/250,222

8
come as a derivative.”5 Thus, the “derived member” of claim 1 is a member
traced from at least two acquired members of the first or second dataset.
Roell discloses a magnetic resonance apparatus or image processing
system for imaging a portion of the human body 19 (FF 1). Roell discloses
that image processing system 11 includes a control system or processing unit
16 that acquires information about the patient’s region of interest. (Id.) The
imaging steps include registering a first dataset (e.g., data for a first slice of
the region of interest) by combining a first set of operating parameters or
data entered by operator in step 22 and, after acquisition of the first dataset,
storing the first dataset along with the registered operating parameters in the
control system or processing unit 16 in step 23 (FF 2). Similarly, a second
dataset (e.g., data for a second slice of the region of interest) is registered by
combining a second set of operating parameters or data entered by operator
in step 24 and, after acquisition of the second dataset, storing the second
dataset along with the registered operating parameters in the control system
or processing unit 16 in step 25. (Id.) While the datasets are acquired in
steps 22-25 (id.), Roell does not discuss whether the datasets include derived
members (i.e., those resulting or traced from the acquired members) of first
or second datasets. See FF 1-2.
Nonetheless, Roell discloses that each of the first dataset and a first
follow-up dataset can be displayed at display 17 as an image (FF 4-5). In
order to display each image, the image (e.g., pixels) must have been derived
or resulted from the acquired datasets. See id. Thus, Roell discloses a
processing unit that generates a first derived member from acquired

5 Merriam-Webster OnLine Dictionary, 11th ed., available at
http://www.merriam-webster.com/dictionary/downloading (last visited June
1, 2009).
Appeal 2009-1542
Application 10/250,222

9
members of a first dataset (e.g., data points from image from first dataset)
and a first derived member from acquired members of a first follow-up
dataset (e.g., data points from image from second dataset). Moreover, Roell
states that the images or derived members are compared. See FF 4.
However, the only disclosed comparison is performed by a physician and
not by a processing unit. See id. Also, as the physician makes the
comparison (see id.), no comparison signal is generated by the processing
unit.
Additionally, Roell discloses determining a positional change or
member derived from a first dataset and a first follow-up dataset acquired
later in time in step 33 (FF 3). As broadly as recited, the first dataset and
first follow-up dataset can be the recited “first dataset.” Thus, Roell
discloses a temporal processing unit that generates a first derived member
from two or more acquired members of the first dataset (e.g., data points in
the first and first follow-up dataset) as required by claim 1. Additionally,
Roell discloses determining a positional change or member derived or traced
from a second dataset and a second follow-up dataset acquired later in time
in step 36. (Id.) Similarly, as stated above, the second dataset and second
follow-up dataset can be the recited “second dataset.” Thus, Roell also
discloses a temporal processing unit that generates a second derived member
from two or more members of the second dataset (see id.) as required by
claim 1.
Roell, however, does not disclose the further step of comparing the
derived members (i.e., the positional change between the first dataset and the
positional change of the second dataset) and generating “a comparison signal
therefrom.” While Appellants admit that Roell discloses comparing the first
Appeal 2009-1542
Application 10/250,222

10
and second dataset (App. Br. 4), Roell only discusses known methods for
acquiring positional changes in datasets by comparing two datasets that
differ in time, but does not discuss that the datasets include members traced
or derived from acquired members of the datasets. See FF 3.
We are therefore constrained by the record before us to find that Roell
does not disclose a temporal processing unit that compares the derived
member of the first dataset with the derived member of the second dataset
and generates a comparison signal from the comparison of two derived
members as required by claim 1.
For the above reasons, Appellants have shown error in the anticipation
rejection of independent claim 1 based on Roell. We, thus, will not sustain
the rejection of claim 1 and dependent claims 3-6 and 8 for similar reasons.

Claims 10, 14, and 15
Independent claim 10 recites an imaging method, including the
limitations of “comparing a temporal change between said first derived
member of said first dataset and said first derived member of said second
dataset” and “generating a temporal change image” that is similar in scope to
claim 1. The issues before us, therefore, are the same as those in connection
with claim 1. We are persuaded by Appellants’ arguments for the reasons
disclosed above with regard to Roell and claim 1. Specifically, while Roell
discloses that a physician may compare a temporal change between two
derived members (see FF 4-5), Roell fails to discuss the physician or
processor generates “a temporal change image” as recited. See FF 4. We
will therefore not sustain the rejection of claim 10 and dependent claims 14
and 15 for similar reasons.
Appeal 2009-1542
Application 10/250,222

11
Claim 17
Independent claim 17 recites an imaging method including the
limitations of “comparing said first derived member of said first dataset and
said first derived member of said second dataset” and “generating a temporal
change image,” which are commensurate to those of claim 10. The issues
before us, therefore, are the same as those in connection with claim 10. We
are persuaded by Appellants’ arguments for the reasons disclosed above
with regard to Roell and claim 10. Accordingly, we will not sustain the
rejection of claim 17.

OBVIOUSNESS REJECTIONS
Claims 2, 7, 12,6 18, and 19 are rejected as being obvious over Roell
and Riederer, and claims 9, 11, 13, 16, 20, and 21 were rejected as being
obvious over Roell and Kaufman (Ans. 6-11). Appellants argue that it
would not have been obvious to combine the references as the Examiner
proposes (App. Br. 5-6).

ADDITIONAL ISSUE
The additional following issue has been raised in the present appeal:
(3) Under § 103, have Appellants shown that the Examiner failed to
establish a prima facie case of obviousness based on the proposed
modification of Roell in light of: (a) Riederer in rejecting claims 2, 7, 12, 18,
and 19 and (b) Kaufman in rejecting claims 9, 11, 13, 16, 20, and 21?

6 Claim 12 depends from claim 11, which was rejected as unpatentable over
Roell and Kaufman and not Roell and Riederer.
Appeal 2009-1542
Application 10/250,222

12
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073-74 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).

ANALYSIS
Claims 2, 7, and 9 depend from independent claim 1, claims 11-13
and 16 depend from independent claim 10, and claims 18-21 depend from
independent claim 17. As discussed in the Anticipation Rejection section,
we found that Roell does not anticipate independent claims 1, 10, and 17.
The Examiner has also failed to establish a prima facie case of obviousness
based on the proposed modification of Roell in light of the cited secondary
references. Accordingly, we will not sustain the obviousness rejections of:
(1) claims 2, 7, 12, 18, and 19 as being obvious over Roell and Riederer or
(2) claims 9, 11, 13, 16, 20, and 21 as being obvious over Roell and
Kaufman.

Appeal 2009-1542
Application 10/250,222

13
New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter new grounds of rejection under
35 U.S.C. §§ 101 and 112, first paragraph for independent claim 1 and under
35 U.S.C. §§ 101 for claims 10 and 17. We will address the claims as
follows: (A) claim 1; (B) claim 10; and (C) claim 17.

A. Claim 1
i. Rejection Under 35 U.S.C. § 101
ADDITIONAL FINDINGS OF FACT
The record supports the additional following findings of fact (FF) by a
preponderance of the evidence:
7. Claim 1 recites an “image processing system.” (Claim 1, line 1)
8. Claim 1 recites that the system includes a temporal processing unit
adapted to: (1) generate a first derived member of a first dataset from two or
more acquired members of the first dataset; (2) generate a first derived
member of a second dataset from two or more acquired members of the
second dataset; (3) compare the first derived members of the first and second
datasets; and (4) generate a comparison signal. (Claim 1, ll. 2-10).
9. The temporal processing unit 14 includes a dataset generator 31
and temporal comparators 15. The Specification states temporal processing
systems include general modules, including: an acquisition storage module,
a segmentation module, a registration module, a comparison module, and a
report module. (Spec. ¶¶ 3, 24, 26; Figs. 1-2).
10. The Specification states the dataset generator 31 generates
datasets including members. Figure 3 shows the dataset member outputs of
the dataset generator 31. (Spec. ¶¶ 39-41; Figs. 2-3).
Appeal 2009-1542
Application 10/250,222

14
11. The Specification describes one embodiment of the temporal
comparator 15 that has several modules, including: an acquisition storage
module, a segmentation module, a registration module, a comparison
module, and a report module. (Spec. ¶¶ 28-38; Fig. 2).
12. The Specification discloses the comparison module receives
signals and computes the dissimilarity between the images. Comparison can
be achieved through subtraction of images or an enhanced division method
described as [S(t1) * S(t2)]/[S(t2) * S(t2) + Φ], where the scalar constant Φ > 0.
(Spec. ¶ 35).
13. The Specification describes alternative embodiments that include
a temporal comparator 54 that receives data from dataset generator 31. The
comparator 54 has a comparison module, a temporal comparator controller
55 with comparators 57, 59, and 61, and temporal comparison controller
having temporal comparison modules 67, 72, 76, and 80. (Spec. ¶¶ 46-50;
Figs. 4-6).
14. The Specification describes and shows the image controller 12
includes a host computer and display 43. The image controller 12 generates
a temporal comparison image of the derived members. (Spec. ¶ 26; Fig. 2).

PRINCIPLES OF LAW
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. While the scope of
patentable subject matter encompassed by § 101 is “extremely broad” and
intended to “include anything under the sun that is made by man,” it is by no
means unlimited. In re Comiskey, 554 F.3d 967, 977 (Fed. Cir. 2009) (en
Appeal 2009-1542
Application 10/250,222

15
banc)(quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). For
example, laws of nature, abstract ideas, mental processes, and natural
phenomena are excluded from patent protection. Diamond v. Diehr, 450
U.S. 175, 188 (1981); Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
As the U.S. Supreme Court has noted, “[a]n idea of itself is not
patentable[] …. A principle, in the abstract, is a fundamental truth; an
original cause; a motive; these cannot be patented, as no one can claim in
either of them an exclusive right.” Diehr, 450 U.S. at 185 (internal
quotation marks and citations omitted). Additionally, our reviewing court
recently articulated the following two distinct aspects of abstract ideas:
First, when an abstract concept has no claimed practical
application, it is not patentable. . . . Second, the abstract concept
may have a practical application. . . . In [the context of
industrial processes], the Supreme Court has held that a claim
reciting an algorithm or abstract idea can state statutory subject
matter only if, as employed in the process, it is embodied in,
operates on, transforms, or otherwise involves another class of
statutory subject matter, i.e., a machine, manufacture, or
composition of matter. . . .

Comiskey, 554 F.3d at 978.

ANALYSIS
Claim 1 is not a process or composition of matter. We must therefore
consider whether claim 1 is a machine or manufacture. A machine is
defined as “a concrete thing, consisting or parts, or of certain devices and
combination of devices.” In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir.
2007), reh’g denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), and cert.
denied, 129 S. Ct. 70 (2008) (internal quotation marks and citations
omitted). A manufacture is defined as “the production of articles for use
Appeal 2009-1542
Application 10/250,222

16
from raw or prepared materials by giving to these material new forms,
qualities, properties, or combinations, whether by hand-labor or by
machinery.” Nuijten, 500 F.3d at 1356 (quoting Chakrabarty, 447 U.S. at
308) (emphasis in original and internal quotation marks omitted). Using
these definitions, we determine whether claim 1 is a patent-eligible machine
or manufacture.
Claim 1 recites an image processing system (FF 7) that has a temporal
processing unit (FF 8). The temporal processing unit is adapted to generate
derived members from datasets, compare the derived members, and generate
a comparison signal. Id. The Specification shows the recited temporal
processing unit 14 has a dataset generator 31 and temporal comparators 15 –
all shown as boxes. See FF 9. The Specification does not include any
structural details about the generator 31 and comparators 15. See FF 9-13.
Additionally, the Specification only states the dataset generator 31 generates
datasets (FF 10). The temporal comparators 15 in the Specification are
described as having comparison modules (FF 11-13) that generate
comparison signals which, by themselves, are non-statutory. See Nuijten,
500 F.3d at 1355-57 (holding a signal is neither a patent-eligible machine
nor manufacture). Without further discussion in the Specification, the
comparison module can also be a non-statutory data structure. See In re
Warmerdam, 33 F.3d 1354, 1361-62 (Fed. Cir. 1994). Additionally, the
comparators 15 may also compute or measure the dissimilarity between
images using a mathematical algorithm or an abstraction (FF 12). Thus, as
broadly as recited and consistent with the Specification, the claimed image
Appeal 2009-1542
Application 10/250,222

17
processing system and temporal processing unit are no more than
abstractions that generate and compare data and not a patent-eligible special-
purpose machine under § 101.
Even assuming that the claimed temporal processing unit introduces
structure into claim 1, we still find that the claim recites no more than a
general-purpose controller or computer (FF 14) that preempts substantially
all practical applications. In Benson, the Court held that claims directed to a
method for converting binary-coded-decimal (BCD) numerals into pure
binary numerals for use with a general-purpose digital computer are
non-statutory under § 101. In reaching this conclusion, the Court found that
the process claim was “so abstract and sweeping as to cover both known and
unknown uses of the BCD to pure binary conversion.” Id. at 68. The
Benson Court further noted that “[t]he mathematical formula involved here
has no substantial practical application except in connection with a digital
computer, which means that if the judgment below is affirmed, the patent
would wholly pre-empt the mathematical formula and in practical effect
would be a patent on the algorithm itself.” Id. at 71-72. Thus, while the
recited claim in Benson operated on a computer, the claim, in effect, pre-
empted substantially every practical application of the formula.
More recent decisions state that “Benson…applies equally whether an
invention is claimed as an apparatus or process, because the form of the
claim is often an exercise in drafting.” In re Alappat, 33 F.3d 1526, 1542
(Fed. Cir. 1994) (quoting In re Johnson, 589 F.2d 1070, 1077 (CCPA 1978).
Thus, the discussion pertaining to mathematical algorithms in Benson is
equally applicable to the image processing system in claim 1. See id.
Appeal 2009-1542
Application 10/250,222

18
Claim 1 has no substantial practical application except with a host
computer or a general purpose computer 43 of controller 12. See FF 9-14.
The system recites a temporal processing unit that generates derived
members from datasets and a comparison signal and compares the derived
members (FF 8). These functions are, at best, performed using mathematical
algorithms and have no substantial practical application except in connection
with the controller’s computer 43. See FF 9-14. For example, a
mathematical formula may be used to compare the derived members and
generate the comparison signal. See FF 12. The recited system’s processing
unit (FF 8) is, therefore, in effect, nothing more than a general purpose
computing device. See Benson, 409 U.S. at 65. By only reciting a
computer, claim 1 forecloses others from using substantially all practical
applications of the algorithms that the claimed temporal processing unit
performs. See FF 8-14. Moreover, claim 1 recites “adapted to” limitations
for the processing unit (FF 8) and, thus, the generating and comparing steps
(FF 8) are not actually performed, such that the general purpose computer
becomes a special purpose computer. See Alappat, 33 F.3d at 1545. The
claimed processing unit therefore is not associated with any particular
structure. Thus, at best, the claim’s breadth covers both known and
unknown applications and wholly preempts every possible computer for
generating recited data. See Benson, 409 U.S. at 71-72.
Claim 1 can also be distinguished from the claims in In re Abele, 684
F.2d 902 (CCPA 1982). Abele held that the recited apparatus was a specific
apparatus distinct from other apparatuses capable of performing the identical
function. Abele, 684 F.2d at 909. In particular, the apparatus related to an
improved CAT-scan process and encompassed significantly more than the
Appeal 2009-1542
Application 10/250,222

19
algorithm alone. Id. The apparatus included functionally-defined means
that did not encompass any and every means for performing the recited
function. Id. In contrast and as discussed above, claim 1 does not recite a
specific imaging processing apparatus distinct from other processing
systems capable of performing the identical functions. Claim 1 also fails to
include functionally-defined means that limit how the temporal change
image or the datasets are generated or how the derived members are
compared so as to exclude every means for performing the recited functions.
See id.
Claim 1, therefore, is not directed to an eligible “machine” or
“manufacture” under § 101 and is rejected as nonstatutory subject matter
under 35 U.S.C. § 101.

ii. Rejection Under 35 U.S.C. § 112, First Paragraph
Claim 1 is unpatentable under § 112, first paragraph as purely
functional. We have noted that “any claim that includes purely functional
claim language, and which is not subject to the limited construction under 35
U.S.C. § 112, sixth paragraph, fails to meet the requirements of 35 U.S.C.
§ 112, first paragraph . . . and thus is unpatentable.” Ex parte Miyazaki, 89
USPQ2d 1207, 1217 (BPAI 2008) (precedential) (discussing Halliburton
Energy Servs. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)). That is,
“Halliburton case remains viable for claims having purely functional
language which is unlimited either by (1) the application of 35 U.S.C. § 112,
sixth paragraph, or (2) the additional recitation of structure.” Miyazaki, 89
USPQ2d at 1217 (emphasis in original).
Appeal 2009-1542
Application 10/250,222

20
Claim 1 recites a system having a temporal processing unit adapted to
perform several functions, including: (1) generating a first derived member
of a first dataset from two or more acquired members of the first dataset; (2)
generating a first derived member of a second dataset from two or more
acquired members of the second dataset; (3) comparing the first derived
members of the first and second datasets; and (4) generating a comparison
signal (FF 8-9). In Welker Bearing Co. v. PhD Inc., 550 F.3d 1090, 1096
(Fed. Cir. 2008), the court found that generic terms, like “mechanism,”
“means,” “element,” and “device,” typically do not have enough definite
structure to avoid means-plus-function treatment. However, even if we
assume, without deciding, that the recited temporal processing unit that is
“adapted to” perform the recited functions does not invoke § 112, sixth
paragraph, the claimed temporal processing unit is not limited by structure,
and the recited steps are therefore no more than functional limitations. That
is, the Specification does not describe sufficient structure or mechanisms for
performing the recited functions of generating the derived members and
comparison signal and comparing the derived members recited in claim 1.
See FF 9-14. Additionally, as discussed above, claim 1 recites an abstract
idea or, at most, a general purpose computer. The computer, however, is not
a special purpose computer, and the Specification fails to describe the
system for performing the recited function with sufficient specificity.
For the foregoing reasons, claim 1 is also rejected under 35 U.S.C.
§ 112, first paragraph, as being purely functional and lacking an enabling
disclosure commensurate with the scope of claim 1.

Appeal 2009-1542
Application 10/250,222

21
B. Claim 10
ADDITIONAL FINDINGS OF FACT
The record supports the additional following findings of fact (FF) by a
preponderance of the evidence.
15. Claim 10 recites “[a]n imaging method.” (Claim 10, l. 1).
16. Claim 10 includes the steps of: (1) generating a first derived member
of a first dataset; (2) generating a first derived member of a second
dataset; (3) comparing a temporal change between the derived
members; and (4) generating a temporal change image. (Claim 10, ll.
2-6).

PRINCIPLES OF LAW
“[A]n applicant may show that a process claim satisfies § 101 either
by showing that his claim is tied to a particular machine, or by showing that
his claim transforms an article” into a different state or thing. In re Bilski,
545 F.3d 943, 961 (Fed. Cir. 2008) (en banc); see also Benson, 409 U.S. at
70 (1972).

ANALYSIS
Claim 10 recites an imaging method (FF 15). This claim is not
directed to a machine, manufacture, or composition of matter as set forth in
35 U.S.C. § 101. Therefore, in order to determine whether the process
satisfies 35 U.S.C. § 101, we apply the machine-or-transformation test set
forth in Bilski to claim 10.

Appeal 2009-1542
Application 10/250,222

22
As discussed above in connection with claim 1, the recited derived
members and datasets (FF 16) are information or data that are sent to a
comparator 15. See FF 9-13. Because the derived members and datasets are
information, they are not physical machines or concrete things. See Nuijten,
500 F.3d at 1355. Additionally, the claimed temporal change or temporal
change image are also information and not a physical machine. Thus, claim
10 does not recite a particular machine that is patent-eligible subject matter
under Bilski.
Claim 10 is also not limited in any way by how the datasets or the
temporal change image is generated or how the derived members are
compared (FF 15-16). Thus, as broadly recited, claim 10 can be performed
using paper or in one’s mind, including generating the temporal change
image through drawing or visualization. Such mental processes are not
patent eligible under 35 U.S.C. § 101. See Benson, 409 U.S. at 67; see also
Comiskey, 499 F.3d at 1377. The Specification also notes that the dataset
generator 31 and temporal comparator 15 are located within a temporal
processing unit 14. See FF 10. Thus, at best, and as previously discussed,
these steps may be performed or executed by a general purpose computing
system (e.g., a temporal processing unit). However, a general purpose
computing system does not tie claim 10 to a special purpose or particular
machine. Thus, the steps of generating and comparing in claim 10 are not
tied to a particular machine required by Bilski.
Additionally, claim 10 does not transform an article into a different
state or thing. We discussed above that the claimed datasets, temporal
change, or temporal change image are not physical objects or articles. See
FF 9-14. Furthermore, the steps of “generating a temporal change image”
Appeal 2009-1542
Application 10/250,222

23
may involve a general purpose computer. However, there is no claimed
transformation of the computer or article into a different state or thing. At
most, this step (FF 16) is akin to “data-gathering steps” that are insignificant
extra-solution activities. See Bilski, 545 F.3d at 963; see also Parker v.
Flook, 437 U.S. 584, 590 (1978). Similarly, the steps of generating the first
derived member from the first and second datasets and comparing a
temporal change between the derived members (FF 16) do not change the
datasets, the derived members, the temporal change, or the temporal change
image into a different state or thing.
This method recited in claim 10 also differs from the patent eligible
process claim in Abele. Claim 10 does not recite: (a) data clearly
representing physical and tangible objects, such as bones, organs, and other
body tissue; and (b) the transformation of raw data into a particular visual
depiction of a physical object on a display. See Bilski, 545 F.3d at 962-63
(discussing the transformation of the narrower process claim 6 in Abele).
Rather, claim 10 is analogous to the broader patent-ineligible process claim
of Abele in that claim 10 does not recite: (a) any particular type or nature of
the data; (b) how or from where the data was acquired and, thus, how or
where the derived members were obtained; or (c) what the data represents.
See Bilski, 545 F.3d at 962 (discussing the broader non-statutory process
claim 5 in Abele). Claim 10 therefore fails to recite a transformation under
the second prong of Bilski’s machine-or-transformation test.
For the foregoing reasons, we find claim 10 is not a “process” under
§ 101.

Appeal 2009-1542
Application 10/250,222

24
C. Claim 17
ADDITIONAL FINDINGS OF FACT
The record supports the additional following findings of fact (FF) by a
preponderance of the evidence.
17. Claim 17 recites “[a]n imaging method.” (Claim 17, l. 1).
18. Claim 17 includes the steps of: (1) generating a first derived member
of a first dataset; (2) generating a first derived member of a second
dataset; (3) comparing the derived members; and (4) generating a
temporal change image. (Claim 17, ll. 2-6).

ANALYSIS
Claim 17 (FF 17-18) is similar in scope to claim 10. Much of the
analysis for claim 10, therefore, applies to claim 17, including that the claim
is not directed to a machine, manufacture, or composition of matter as set
forth in 35 U.S.C. § 101. Therefore, we similarly apply the machine-or-
transformation test set forth in Bilski to claim 17.
As stated above in connection with claim 10, the recited derived
members, datasets, and temporal change image (FF 18) are information and
not physical machines. See Nuijten, 500 F.3d at 1355. Thus, claim 17 does
not recite a particular machine that makes the process recited in claim 17
patent-eligible subject matter under Bilski.
Claim 17 is also not limited in any way by how the datasets or the
temporal change image are generated or how the derived members are
compared (FF 18). Thus, as broadly recited, claim 17 can be performed
using paper or in one’s mind and is a patent ineligible mental process under
35 U.S.C. § 101. See Benson, 409 U.S. at 67; Comiskey, 499 F.3d at 1377.
Appeal 2009-1542
Application 10/250,222

25
Also, as stated above and at best, these steps may be performed or
executed by a general purpose computing system (e.g., a temporal
processing unit). However, a general purpose computing system does not tie
claim 17 to a particular machine. Thus, the steps of generating and
comparing (FF 18) are not tied to a particular machine required by Bilski.
Additionally, as explained above with regard to claim 10, the steps of
claim 17 do not transform an article into a different state or thing. We
discussed above that the claimed datasets and temporal change image are not
physical objects or articles. (See FF 9-14). Moreover, while the steps of
“generating a temporal change image” may involve a general purpose
computer, there is no claimed transformation of the computer or article into
a different state or thing. At most, this step (FF 18) is akin to “data-
gathering steps” that are insignificant extra-solution activities. See Bilski,
545 F.3d at 963; see also Flook, 437 U.S. at 590. Finally, claim 17 is
analogous to the broader patent-ineligible process claim of Abele in that
claim 17 does not recite: (a) any particular type or nature of the data; (b)
how or from where the acquired data and, thus, the derived members were
obtained; or (c) what the data represents. See Bilski, 545 F.3d at 962
(discussing the broader non-statutory process claim 5 in Abele).
For the foregoing reasons, we find claim 17 is not a “process” under
§ 101 and therefore fails to recite statutory subject matter under that section.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP §
1213.02.
Appeal 2009-1542
Application 10/250,222

26

CONCLUSIONS
(1) Under § 102, Appellants have shown that the Examiner erred in
finding that Roell discloses a temporal processing unit that can generate a
first derived member from at least two acquired members of a first dataset
and a first derived member from at least two acquired members of second
dataset in rejecting claims 1, 3-6, 8, 10, 14, 15, and 17.
(2) Under § 102, Appellants have shown that the Examiner erred in
finding that Roell discloses a temporal processing unit that can compare the
first derived members from the first and second datasets and generate a
comparison signal from the comparison in rejecting claims 1, 3-6, 8, 10, 14,
15, and 17.
(3) Under § 103, Appellants have shown that the Examiner failed to
establish a prima facie case of obviousness based on the proposed
modification of Roell in light of: (a) Riederer in rejecting claims 2, 7, 12, 18,
and 19; and (b) Kaufman in rejecting claims 9, 11, 13, 16, 20, and 21.

DECISION
We have not sustained the Examiner’s rejection of any of the claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-21 is
reversed. We have, however, entered new grounds of rejection under 37
C.F.R. § 41.50(b) for independent claims 1, 10, and 17.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This section provides that “[a] new ground of rejection…shall
not be considered final for judicial review.”
Appeal 2009-1542
Application 10/250,222

27
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

pgc

Dickinson Wright PLLC
38525 Woodward Avenue
Suite 2000
Bloomfield, Hills MI 48304