Ex Parte Hladio et al

Patent Trials and Appeals Board

Apr 29, 2019

14071185 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/071,185 11/04/2013
26912 7590 04/29/2019
GOWLING WLG (Canada) LLP
SUITE 1600, 1 FIRST CANADIAN PLACE
100 KING STREET WEST
TORONTO, ON MSX IGS
CANADA
FIRST NAMED INVENTOR
Andre N ovomir Hladio
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.
T8476676US 1 5222
EXAMINER
ABOUELELA, MAY A
ART UNIT PAPER NUMBER
3791
MAIL DATE DELIVERY MODE
04/29/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE NOVOMIR HLADIO, ARMEN GARO BAKIRTZIAN,
and URIAH LODEWYK ANTOINE VAN AMEROM
Appeal2018-003051
Application 14/071, 185
Technology Center 3700
Before DANIELS. SONG, MICHELLE R. OSINSKI, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-13 and 15-26 under 35 U.S.C. § 101 as directed to a
judicial exception to patent eligible subject matter. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2018-003051
Application 14/071, 185
THE INVENTION
Appellants' invention relates to aligning a prosthesis during surgery.
Spec. ,r 2. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for determining an orientation of a surgical
tool with respect to a bone of a patient, the system comprising:
a first active sensor configured to sense a movement of the
first active sensor and transmit first information relating to the
movement of the first active sensor, the first active sensor
configured to be attached on the bone at a fixed sensor position
preoperatively identified for use during an operation and having
a predetermined relationship with respect to a reference plane
for the bone defined by three or more reference locations on the
bone identified preoperatively and wherein changes in
orientation to the reference plane are trackable through changes
in orientation of the first active sensor;
a second active sensor configured to sense a movement of
the second active sensor and transmit second information
relating to the movement of the second active sensor, the
second active sensor configured to attach to the surgical tool;
and
a processor in communication with the first and second
sensors, the processor configured to:
receive data representing distances between the three or
more reference locations with which to define the reference
plane for the bone, the distances determined preoperatively;
define the reference plane in accordance with the distances
between the three or more reference locations;
compute the relationship between the first active sensor
located at the preoperatively identified fixed sensor position and
the reference plane;
receive the first information and second information; and
determine a three-dimensional orientation of the surgical
tool with respect to the reference plane based on the first and
second information and the relationship.
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Appeal2018-003051
Application 14/071, 185
OPINION
Patent Eligibility under 35 U.S. C. § 1 OJ
The controlling statute provides that "[ w ]hoever 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. The Courts recognize certain judicial exceptions to Section 101,
namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
See Mayo Collaborative Svc. v. Prometheus Labs, Inc., 566 U.S. 66, 70-71
(2012).
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208,217 (2014) (citing
Mayo, 566 U.S. at 72-73). According to the Supreme Court's framework,
we must first determine whether the claims at issue are directed to one of
those concepts. Id. If so, we must secondly "consider the elements of each
claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id.
The PTO recently published revised guidance on the application of
Section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("2019 Guidelines"). Under such guidelines, in
conducting step one of the Alice framework, we first look to whether the
claim recites:
(Prong 1) any judicial exceptions, including certain groupings of
abstract ideas; and
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Appeal2018-003051
Application 14/071, 185
(Prong 2) additional elements that integrate the judicial exception
into a practical application.
In other words, under prong 1 of an abstract idea analysis, we look to
whether the claim recites an abstract idea. Then, if it does, under prong 2,
we look at the claim, as a whole, and determine whether the claim is
"directed to" the abstract idea or, instead, is "directed to" a "practical
application" of the abstract idea.
Section 1 OJ Analysis of Claims 1-12 and 25
Step 1, Prong 1
The 2019 Guidelines identify three key concepts as abstract ideas: (a)
mathematical concepts including "mathematical relationships, mathematical
formulas or equations, mathematical calculations"; (b) certain methods of
organizing human activity, such as "fundamental economic principles or
practices," "commercial or legal interactions," and "managing personal
behavior or relationships or interactions between people"; and ( c) mental
processes including "observation, evaluation, judgment, [and] opinion."
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea. Final Action 2. According to the Examiner,
the steps are directed to an abstract idea in the form of receiving and
processing data ( which, under appropriate circumstances, can be considered
a "mental process" under the 2019 Guidelines). Id.
Collecting and analyzing information, without more, are treated as
essentially mental processes within the abstract idea category. FairWarning
IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) citing
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016).
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Appeal2018-003051
Application 14/071, 185
Methods which can be performed entirely in the human mind
are unpatentable not because there is anything wrong with
claiming mental method steps as part of a process containing
non-mental steps, but rather because computational methods
which can be performed entirely in the human mind are the
types of methods that embody the "basic tools of scientific and
technological work" that are free to all men and reserved
exclusively to none.
Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 1373 (Fed. Cir.
2011). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
114 7 (Fed. Cir. 2016)) ( explaining that analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, are essentially mental processes within the abstract-idea category).
Claim 1 recites:
• a first sensor;
• a second sensor; and
• a processor that is configured to:
receive data;
define a reference plane ... ;
compute a relationship ... ; and
determine an orientation.
Claims App. The first sensor senses movement of a bone within a frame of
reference. Id. The second sensor senses movement of a surgical tool within
the frame of reference. Id. The processor then takes position and
movement information of the bone sensor and the tool sensor within the
frame of reference and performs what amounts to navigational computations
to ascertain the position and orientation of the bone relative to the surgical
tool. Thus, the claim recites sensors that collect information and then recites
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Application 14/071, 185
a processor that analyzes the information using mathematical algorithms to
orient two objects in three-dimensional space.
Orienting objects in three-dimension space is something that humans
do on a routine basis. At a high level abstraction, the claimed subject matter
is not fundamentally different than an automotive mechanic assembling a
carburetor from a plurality of individual components. A human visualizes
two objects using eyes (and/or touch) as sensors and then, after collecting
information related to the location and orientation of the two objects,
engages in mental processes to ascertain how a first object is oriented in
space vis-a-vis a second object and how the objects must be repositioned
from a first relative position to a second relative position so that they are
located and oriented in the desired arrangement for assembly. Although
Appellants' sensors and processor may perform the bone/tool orientation
task at a higher degree of speed and/or precision than an automotive
mechanic can manually assemble a carburetor, the two tasks are
fun dam en tally similar. 1
The case of Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed.
Cir. 2017) is instructive here. Thales involved an inertial tracking system
for tracking the motion of an object relative to a moving reference frame.
Id. at 1344. The system in Thales used inertial sensors, such, as
accelerometers and gyroscopes, to measure forces associated with changes
in a sensor's position and orientation relative to a known starting position.
Id. Although the Thales Court ultimately determined that the claims were
1 Merely taking advantage of the improved speed or efficiency inherent with
applying an abstract idea on a computer is not sufficient to establish
patentable subject matter under Section 101. See Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016).
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Application 14/071, 185
not "directed to" an abstract idea in accordance with an analysis that
parallels our step one, prong two analysis below, Thales reconfirmed the
underlying principle that collecting and analyzing electronic information
using mental processes that could be performed by humans recites an
abstract idea. Id. at 1346-47.
In view of the foregoing discussion, we determine that the claim falls
within the ambit of essentially a mental process under our guidelines and
thus recites an abstract idea.
Step 1, Prong 2
Under Prong 2 of Step 1 of the 2019 Guidelines, we do not assume
that such claims are directed to patent ineligible subject matter because "[a]t
some level, 'all inventions ... embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas.'" In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016) quoting Alice (quoting
Mayo). Instead, "the claims are considered in their entirety to ascertain
whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016). If the claims are not directed to an abstract idea, the
inquiry ends. 2019 Guidelines. If the claims are "directed to" an abstract
idea, then the inquiry proceeds to the second step of the Alice framework.
Id.
Consequently, we consider whether the claimed system for
determining orientation of a surgical tool includes additional elements that
integrate the judicial exception into a practical application. A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
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the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception. 2019 Guidelines.
Appellants argue that claim 1 is not directed to an abstract idea.
Appeal Br. 11.
Id.
[T]he subject matter relates to navigational assisted surgery,
which may assist a surgeon or a robot to perform a surgical
procedure. In some examples the procedure is a Total Hip
Arthroplasty. The system and method provide assistance during
the surgical procedure tracking and determining (relative)
positions of a patient bone and a surgical tool (both being
physical real world tangible items) with the intent of improving
performance and outcomes (Spec. paras. 6 and 58).
As such the system and method are not directed to abstract
ideas but are a sophisticated real-time measuring system and
method.
In response, the Examiner reiterates that the claim entails collecting
and analyzing data. Ans. 2.
The Federal Circuit cautions us not to "overly abstract" claims when
performing the Mayo/Alice analysis. Natural Alternatives Intl., Inc. v.
Creative Compounds, LLC, 918 F.3d 1338, 1350 (Fed. Cir. 2019). Although
Appellants' claim 1 does collect and analyze data, it would be an over-
simplification of the claim to state that it is "directed to" an abstract idea.
Here, the first sensor is configured to be attached to a bone. Claims App.
The second sensor is configured to be attached to a surgical tool. Id. The
sensors are used to define a spatial relationship and orientation between the
bone and the tool to enhance a surgical procedure. We view this as a
technological improvement in the delivery of a medical service and, as such,
the claims are directed to a specific tangible application. See Classen
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Application 14/071, 185
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1066-67 (Fed.
Cir. 2011) ( explaining that claims directed to a specific, tangible application
of an abstract idea recited patent eligible subject matter).
As previously discussed, the system in the Thales case used inertial
sensors, such, as accelerometer and gyroscopes, to measure forces associated
with changes in a sensor's position and orientation relative to a known
starting position. Thales, 850 F.3d at 1345. However, the inertial sensors of
Thales were used to directly measure the gravitational field of a moving
platform frame rather than using the conventional approach of measuring
inertial changes with respect to the earth. Id. The Thales court determined
that the claims were not merely directed to an abstract idea, but instead were
directed to systems that used inertial sensors in a non-conventional manner
to reduce errors in measuring the relative position and orientation of a
moving object on a moving reference frame. Id. at 1348--49.
We hold that the '159 patent claims at issue in this appeal are
not directed to an abstract idea. The claims specify a particular
configuration of inertial sensors and a particular method of
using the raw data from the sensors in order to more accurately
calculate the position and orientation of an object on a moving
platform. The mathematical equations are a consequence of the
arrangement of the sensors and the unconventional choice of
reference frame in order to calculate position and orientation.
Far from claiming the equations themselves, the claims seek to
protect only the application of physics to the unconventional
configuration of sensors as disclosed. As such, these claims are
not directed to an abstract idea and thus the claims survive Alice
step one.
Id. at 1349.
Similarly, claim 1 of the instant application integrates the judicial
exception into a practical application and, therefore, is not "directed to" an
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Application 14/071, 185
abstract idea. 2019 Guidelines. This ends our inquiry in Appellants' favor
such that we do not sustain the Examiner's rejection of claim 1 based on
judicial exception to Section 101. See McRO, 837 F.3d at 1312 (explaining
that if the claims are not "directed to" an abstract idea, the inquiry ends).
For essentially the same reason, we also do not sustain the Examiner's
rejection of claims 2-12 and 25 which depend, directly or indirectly, from
claim 1.
Claims 13, 15-24 and 26
Claim 13 is an independent claim that is substantially similar
in scope to claim 1 except that it recites a method instead of a
system/apparatus. Claims App. The Examiner rejects claim 13 under
essentially identical findings and rationale as the Examiner previously
applied to the rejection of claim 1. Final Action 3--4. Appellants, in tum,
traverse the rejection using essentially the same arguments that were
asserted against the rejection of claim 1. See generally Appeal Br.
As with claim 1, we determine that, although claim 13 recites an
abstract idea, the claim, as a whole, is directed to a practical application and,
therefore, recites patent eligible subject matter. Consequently, we do not
sustain the Examiner's Section 101 rejection of claim 13, nor do we sustain
the rejection of claims 15-24 and 26 that depend therefrom.
DECISION
The decision of the Examiner to reject claims 1-13 and 15-26 as
being directed to unpatentable subject matter under 35 U.S.C. § 101 is
reversed.
REVERSED
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