Ex Parte Chalmond et al

Patent Trial and Appeal Board

Jul 12, 2018

12739006 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/739,006 06/23/2010
826 7590 07/16/2018
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Bernard Chalmond
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.
033339/388397 7000
EXAMINER
GORT, ELAINE L
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
07/16/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNARD CHALMOND, ALAIN TROUVE, YONG YU,
JIAPING WANG, OLIVIER RENAUD, and SPENCER SHORTE
Appeal2017-000538
Application 12/739,006 1
Technology Center 3600
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-30. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Centre National de la
Recherche Scientifique Institut Pasteur. (Appeal Br. 2.)
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Application 12/739,006
CLAIMED SUBJECT MATTER
Appellants' claimed "invention relates to a method of reconstructing
the volume of an object from a sequence of section images of said object, the
positions of said sections relative to the object being known in uncertain
manner." (Spec. 1, 11. 3---6.) "The invention applies in particular ... to
confocal microscopy." (Id. at 1, 11. 7-8.)
Claim 1 is illustrative of the claims on appeal. It recites:
1. A method of reconstructing the volume of an object from
a sequence of section images of said object acquired by an
observation instrument, said sections corresponding to different
positions and/or orientations of an acquisition plane relative to
the object, said positions and/or orientations being subject to
random movements, the method being carried out using a data
processor and comprising the following steps:
a) selecting a finite base of functions representative of
densities on which the volume for reconstruction can be
decomposed, each spatial function being represented by a finite
number of coefficients, and implementing the base in a data
processor device;
b) selecting and implementing in the data processor device
a first quantification function for quantizing the difference
between the real position and/ or orientation of each section
relative to said object and its nominal position and/or orientation,
said difference being representative of said random movements;
c) selecting and implementing in the data processor device
a second quantification function for quantizing the spatial
coherence of the reconstructed volume;
d) selecting and implementing in the data processor device
a third quantification function for quantizing the difference
between the section images of the object and the corresponding
sections of the reconstructed volume;
e) selecting and implementing in the data processor device
an overall cost function, of value that depends on the values of
said first, second, and third quantizing functions;
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f) jointly estimating by the data processor device the real
positions and/or orientations of the sections, in combination with
the coefficients for decomposing the volume of the object on said
function base, by minimizing said overall cost function; and
g) using a reconstruction algorithm to generate and display
the volume of the object from the estimated coefficients and the
function base.
REJECTIONS
Claims 1-30 are rejected under 35 U.S.C. § 101 as claiming ineligible
subject matter.
Claims 1-3, 7-15, 21, 23-26, and 29 are rejected under 35 U.S.C.
§ I03(a) as unpatentable in view of Edie (US 2003/0123718 Al, pub.
July 3, 2003) and Kaufman (US 2003/0095693 Al, pub. May 22, 2003).
Claims 4 and 5 are rejected under 35 U.S.C. § I03(a) as unpatentable
in view of Edie, Kaufman, and Hom (US 2004/0117403 Al, pub.
June 1 7, 2004 ).
Claim 6 is rejected under 35 U.S.C. § I03(a) as unpatentable in view
of Edie, Kaufman, and Reeves (US 2004/0252870 Al, pub. Dec. 16, 2004).
Claims 16, 17, and 22 are rejected under 35 U.S.C. § I03(a) as
unpatentable in view of Edie and Krucinski (US 7,398,047 B2, iss.
July 8, 2008).
Claims 18 and 19 are rejected under 35 U.S.C. § I03(a) as
unpatentable in view of Edie, Krucinski, and Kenet (US 5,836,872, iss.
Nov. 17, 1998).2
2 Claim 16 recites, in part, "estimating the relative positions and orientations
of the observation plane for each of the sections of said sequences by a
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Claims 27, 28, and 30 are rejected under 35 U.S.C. § I03(a) as
unpatentable in view of Edie, Kaufman, and Meyer (US 2008/0285827 Al,
pub. Nov. 20, 2008).
ANALYSIS
The§ 101 reiection o(claims 1-30
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
method according to claim 1." Claims 1 7-19 depend from claim 16, and
claim 22 recites "using a method according to claim 16." The Examiner
does not indicate reliance on Krucinski or Kenet to address the deficiency in
Edie for which the Examiner relies on Kaufman in rejecting claim 1. (See
Final Action 5, 16-18.) Therefore, we treat the omission of Kaufman from
the rejection of claims 16, 17, and 22, and from the rejection of claims 18
and 19, under§ I03(a), as inadvertent.
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Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if "the elements of the
claim ... contain[] an 'inventive concept' sufficient to 'transform' the
claimed abstract idea into a patent-eligible application." Id. at 2357 ( citing
Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that"[ c ]laims 1-30 are directed to [the] abstract idea of
mathematical operation for processing image data which is considered to be
an organizing human activities processing mathematical operation." (Final
Action 2.) Additionally, the Examiner determines that this abstract idea "is
analogous to the court-defined abstract idea in Digitech in that it organizes
information ( sequence of section images) through mathematical correlations
( a finite base function, first, second and third quantification function, overall
cost function, reconstruction algorithm etc.)." (Answer 8.)
Appellants disagree and argue that "the claims recite a specific
invention having improved functionality for reconstructing the volume of an
object from a sequence of section images of said object acquired by an
observation instrument." (Supp. Appeal Br. 3.) Appellants analogize their
claims to those in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 1016). (Id.) In particular, Appellants argue that
the process here is [a] "process specifically designed to achieve
an improved technological result in conventional industry
practice," and therefore is not directed to an abstract idea.
[McRO, 837 F.3d at 1316.]
As such, the independent claims are not drawn merely to
the idea of using various mathematical formulas for
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reconstructing the volume of an object from a plurality of section
image sequence, but instead recite exactly how the volume of an
object is reconstructed from a sequence of section images of said
object acquired by an observation instrument, said sections
corresponding to different positions and/or orientations of an
acquisition plane relative to the object, said positions and/or
orientations being subject to random movements.
(Supp. App. Br. 3, emphasis omitted.)
McRO involved "[a] method for automatically animating lip
synchronization and facial expression of three-dimensional characters."
McRO, 837 F.3d at 1307. The court determined that the relevant claim was
"focused on a specific asserted improvement in computer animation, i.e., the
automatic use of rules of a particular type." Id. at 1314. In particular, the
process claimed in McRO "uses a combined order of specific rules that
renders information into a specific format that is then used and applied to
create desired results." Id. at 1315. Additionally, "[t]he limitations in
claim 1 prevent preemption of all processes for achieving automated lip-
synchronization of 3-D characters." Id. The court cautioned against
oversimplifying the claims in carrying out the analysis under Alice and, in
particular, cautioned against looking at the claims "generally and failing to
account for the specific requirements of the claims." Id. at 1313.
Appellants' Specification describes several prior art techniques. The
Specification discloses a prior art technique
that enables an image to be obtained of a section of an object
such as a cell, said section corresponding to the focal plane of the
microscope. By successively shifting the focal plane, a series of
two-dimensional images are acquired from which the volume of
the object can be reconstructed in three dimensions.
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(Spec. 2, 11. 4--10.) But, the Specification discloses, "[t]hat technique can be
applied only to articles that are capable of being fixed to a substrate." (Id.
at 2, 11. 11-12.)
The Specification discloses another prior art technique in which an
object is placed in suspension in a container. (Id. at 2, 11. 16-19.) "The main
limitation of that technique lies in the fact that the movement of the object in
the container can be controlled in imperfect manner only." (Id. at 2, 11. 30-
32.) But, the Specification discloses, attempts to take into account the
movement uncertainties "do[] not provide a satisfactory estimate of the
random movements in translation and/or rotation." (Id. at 3, 11. 12-14.)
The Specification describes the present invention as "provid[ing]
methods enabling the volume of an object to be reconstructed on the basis of
a section image sequence, these methods being applicable even when the
positions and/or the orientations of the sections in the volume of said object
are subject to uncertainty." (Id. at 3, 11. 16-21.) In other words, the
Specification discloses an improved method for reconstructing the volume of
an object.
Additionally, in determining to what claim 1 is directed, we note that
claim 1 recites "[a] method of reconstructing the volume of an object from a
sequence of section images of said object acquired by an observation
instrument ... comprising the following steps: a) selecting a finite base of
functions representative of densities," "b) selecting and implementing ... a
first quantification function for quantizing the difference between the real
position ... of each section ... and its nominal position," "c) selecting and
implementing ... a second quantification function for quantizing the spatial
coherence of the reconstructed volume," "d) selecting and implementing ...
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a third quantification function for quantizing the difference between the
section images ... and the corresponding sections of the reconstructed
volume," "e) selecting and implementing ... an overall cost[3J function,"
"f) jointly estimating ... the real positions ... of the sections," "and g) using
a reconstruction algorithm to generate and display the volume of the object."
In short, the claim recites a particular asserted improved method for
reconstructing the volume and, thus, does not preempt all methods for doing
so.
In view of the above, we are persuaded that the Examiner "fail[ed] to
account for the specific requirements of the claim[]" and did not adequately
address the question of whether the claimed invention is directed to an
improvement in a technology, i.e., "reconstructing the volume of an object
from a sequence of section images of said object acquired by an observation
instrument." See McRO, 837 F.3d at 1313; see also Claim 1.
The Examiner's subsequent analysis of whether the claims are
directed to patent-eligible subject matter proceeds from this flawed
determination of to what the claims are directed.
Therefore, we find that the Examiner does not sufficiently establish
that the claims are directed to an abstract idea under step one of the Alice
framework. See Alice, 134 S. Ct. at 2355. We will reverse the rejection of
claim 1 under§ 101. Claims 16, 21, 22, 23, and 29 all refer either directly or
indirectly to claim 1, although they are not written in traditional dependent
claim format. Claim 16 recites "estimating relative positions ... by a
method according to claim 1," claim 21 recites "a preliminary reconstruction
3 The Specification refers to "selecting an overall cost function or
'coherence function."' (Spec. 17, 11. 25-26.)
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of said volume ... using a method according to claim 1," claim 22 recites "a
preliminary reconstruction of said volume ... using a method according to
claim 16," claim 23 recites "a preliminary reconstruction of said volume ...
by a method according to claim 1," and claim 29 recites "the data processor
adapted to implement a method according to claim 1." For the reasons
discussed above, we find that the Examiner does not sufficiently establish
that claims 16, 21, 22, 23, and 29, and dependent claims 2-15, 17-20, 24--
28, and 30, are directed to an abstract idea under step one of the Alice
framework.
The§ 103(a) reiections o(claims 1-30
As an initial matter, Appellants argue that Edie is non-analogous art.
(Appeal Br. 4--5.)
"The analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection." In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006). In determining the field of endeavor, "the examiner and the
Board must consider the 'circumstances' of the application-the full
disclosure-and weigh those circumstances from the vantage point of the
common sense likely to be exerted by one of ordinary skill in the art in
assessing the scope of the endeavor." In re Bigio, 381 F.3d 1320, 1326 (Fed.
Cir. 2004).
The Examiner finds that Edie is analogous art and that "Edie and [the]
current invention [are] both directed to [the] field of reconstructing the
volume of [an] object from a sequence of section images and solve [a]
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particular problem of accounting [for] differences due to movements in
rotation of the section planes." (Answer 3.)
Appellants argue that Edie "describes a method for taking multiplex-
rays of a beating heart such that each x-ray is taken when the heart is at the
same point in the cardiac cycle." (Appeal Br. 4.) In contrast, Appellants
argue, the "claimed invention is directed to confocal microscopy." (Id.,
emphasis omitted.) In particular, Appellants argue that "Edie and the
claimed invention are not directed to the same field of endeavor" because
"Edie's process for scanning a cyclically moving object with a CT imaging
system [is] not in the same field of endeavor as utilizing confocal
microscopy for the reconstruction of a microscopic object." (Id. at 5.)
Appellants further argue that
Edie is not reasonably pertinent because it neither (1) addresses
the same problem ( e.g., reconstruction of a microscopic object
where the positions and the orientations of the section planes
relative to the object are uncertain) nor (2) serves the same
purpose as the device of claim 1 (e.g[.], confocal microscopy).
(Id. at 6.)
We do not find these arguments persuasive of error. First, Appellants
do not point to any language in claim 1 limiting the scope of the claim to
confocal microscopy or to the reconstruction of microscopic objects.
Second, Appellants' Specification discloses that "the invention is not limited
to the field of microscopy." (Spec. 11, 11. 3--4.)
With regard to limitation "a" of claim 1, Appellants argue that "Edie
fails to teach or suggest 'selecting a finite base of functions representative of
densities on which the volume for reconstruction can be decomposed .... "'
(Appeal Br. 8.) Specifically, Appellants argue that the Examiner "confuses
the division of a period of the cyclically moving object into a discrete
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number of phases with the decomposition of the volume of reconstruction
into a finite base of functions." (Id.) Moreover, Appellants argue, this
limitation "cannot be interpreted as equivalent to the selecting of phases and
identifying projection data at a phase in Edie since a function cannot be
compared to an image (projection data)." (Id.)
However, it is the disclosure in Edie of "identifying an initial set of
projection data at a desired phase of a first cycle at a first angle, identifying
at least one subsequent set of projection data at the same desired phase of a
subsequent cycle at an angle that is different from the first angle" (Edie ,r 8),
that the Examiner considers "as a finite base of functions" (Answer 4). In
other words, the Examiner considers Edie's disclosure not of just a lone
image, but of an initial set of projection data and at least one subsequent set
of projection data, as disclosing a finite base of functions. Therefore, we do
not find Appellants' argument persuasive of error.
Additionally, Appellants assert, but do not persuasively argue why,
under a broadest reasonable interpretation of "function," "a function cannot
be compared to an image (projection data)." (Appeal Br. 8.) Nor do
Appellants persuasively argue why, under a broadest reasonable
interpretation of "function," an initial set of projection data and at least one
subsequent set of projection data does not disclose a finite base of functions.
Also with regard to limitation "a" of claim 1, Appellants argue that
the Examiner erred in finding that Kaufman discloses "selecting a finite base
of functions representative of densities on which the volume for
reconstruction can be decomposed, each spatial function being represented
by a finite number of coefficients." (Appeal Br. 12.) In particular,
Appellants argue that "Kaufman is directed to using 2D image filtering to
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provide a particular spatial resolution" and that "Kaufman fails to provide
any disclosure, teaching, or suggestion in regard to volume reconstruction."
(Id.) Appellants acknowledge that Kaufman discloses using filters "on a
reconstructed image to adjust the resolution ... to a desired value," and
"measuring ... spatial resolution, where the spatial resolution of [a]
phantom [i.e., known object provided for calibration] can be determined
using a particular set of expressions." (Id.)
The Examiner finds that "Kaufman teaches selecting a finite base of
functions representative of densities on which the volume for reconstruction
can be decomposed, each spatial functions [sic] being represented by a finite
number of coefficients; (See at least paragraph [0020] & [0091 ]-[0095])."
(Final Action 5, emphasis omitted.) Specifically, the Examiner finds "that
spatial resolution is a term that refers to the number of pixels utilized in
construction of a digital image. The spatial resolution of a digital image is
related to the spatial density of the image and optical resolution of the
microscope used to capture the image." (Answer 7, citing Kaufman ,r,r 85-
88.)
Appellants' Specification discloses that "[t]he idea on which the
present invention is based is to estimate simultaneously the positions { i} of
the sections and the function f of the densities of the object. . . . The
estimated volume is determined so as to optimize the spatial coherence of
the densities of the volume." (Spec. 14, 11. 22-28.) In other words, the
Specification refers to the spatial density of the object rather than spatial
density of the image. Applying a broadest reasonable interpretation, we
determine that here, the claim term density refers to object density. The
Examiner does not provide sufficient articulated reasoning for us to fully
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evaluate the Examiner's position as to why the disclosure in Kaufman of
measuring spatial resolution, i.e., the number of pixels utilized in
constructing the image, and its relation to the image density (Answer 7),
teaches "selecting a finite base of functions representative of [object]
densities on which the volume for reconstruction can be decomposed."
Therefore, we reverse the rejection of claim 1 under§ 103(a). For the
same reason, we also reverse the rejection of claims 2, 3, 7-15, 21, 23-26,
and 29. The additional art relied on by the Examiner in rejecting claims 4---6,
16-19, 22, 27, 28, and 30 does not cure to above noted deficiency and,
therefore, we also reverse the rejection of claims 4---6, 16-19, 22, 27, 28,
and 30 under§ 103(a).
DECISION
The Examiner's rejection of claims 1-30 under 35 U.S.C. § 101 is
reversed.
The Examiner's rejections of claims 1-19 and 21-30 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
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