Ex Parte Jiang et al

Patent Trial and Appeal Board

Mar 28, 2018

13229141 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/229,141 09/09/2011
27114 7590 03/30/2018
W ARF/MKE/QUARLES & BRADY LLP
Attn: IP Docket
411 E. WISCONSIN A VENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
FIRST NAMED INVENTOR
Jingfeng Jiang
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.
960296.0l 151.Pl00337US01 8969
EXAMINER
MALLARI, PATRICIA C
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JINGFENG JIANG and CHARLES STROTHER
Appeal2017-003972
Application 13/229,141 1
Technology Center 3700
Before: ERIC B. GRIMES, TA WEN CHANG, and DAVID COTTA,
Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an Appeal under 35 U.S.C. § 134 involving claims directed to
a non-transitory computer readable storage medium and a computer system.
The Examiner rejected claims 1-30 under 35 U.S.C. § 101 as not directed to
patent eligible subject matter, under 35 U.S.C. § 102(b) as anticipated, and
under 35 U.S.C. § 103(a) as obvious.
We AFFIRM.
1 According to Appellants, the real party in interest is Wisconsin Alumni
Research Foundation. Br. 1.
Appeal2017-003972
Application 13/229, 141
STATEMENT OF THE CASE
The Specification discloses that "[ t ]he conventional endovascular
approach for treating cerebral aneurysms is rapidly evolving from coiling, or
stent-assisted coiling, to using flow diversion devices, such as densely
woven flow-diverting stents." Spec. i-f 3. "Because these aforementioned
flow-diverting devices are used to treat cerebral aneurysms by directly
altering the aneurismal hemodynamics, there is increasing interest in the
characterization of flow in and around cerebral aneurysms before and after
the deployment of a particular device" which is preferably done using a
"virtual device and using patient-specific computational fluid dynamics
('CPD') simulations." Id. i-f 4. The Specification states that prior art CPD
simulations were "too computationally expensive to make them attractive for
routine use in a clinical setting." Id. i-f 10.
The Specification states: "The present invention overcomes the
aforementioned drawbacks by providing a method for virtual deployment of
a flow-diverting device that uses a porous media approach to reduce
computational cost." Id. i-f 12. "This method is capable of automatically
generating subject-specific computational flow dynamics ('CPD') models
with the embedment of virtual flow-diverting devices in clinically relevant
times." Id.
Claims 1-30 are on appeal. Claim 1 below is illustrative and reads as
follows:
1. A non-transitory computer readable storage medium
having stored thereon a computer program compnsmg
instructions that when executed by a processor causes the
processor to:
a) receive a medical image acquired with a medical
imaging system and that depicts a blood vessel of a patient;
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Application 13/229, 141
b) generate a pre-treatment blood vessel model that
includes a volume of a normal portion of the blood vessel and a
volume of an abnormal portion of the blood vessel by segmenting
the received medical image;
c) generate a post-treatment blood vessel model that
includes a volume of a normal portion of the blood vessel and a
volume of an abnormal portion of the blood vessel as affected by
a flow-diverting device using the pretreatment vessel model
generated in step b );
d) calculate a post-deployment flow-diverting device
model using the post-treatment blood vessel model generated in
step c); and
e) generate a computational flow dynamics model using
the post-treatment blood vessel model generated in step c) and
the post-deployment flow-diverting device model calculated in
step d).
Br. 19.
REJECTIONS
The claims stand rejected as follows:
Claims 1-30 were rejected under 35 U.S.C. § 101 as directed to patent
ineligible subject matter. Non-Final Act. 2 6-7.
Claims 1--4, 15-18, and 20 were rejected under 35 U.S.C. § 102(b) as
anticipated by Groden. 3 Non-Final Act. 7-10.
2 Office Action mailed January 11, 2016 ("Non-Final Act.").
3 Groden et al., Three-Dimensional Pulsatile Flow Simulation Before and
After Endovascular Coil Embolization of a Terminal Cerebral Aneurysm, 21
JOURNAL OF CEREBRAL BLOOD FLOW & METABOLISM 1464--71 (2001)
("Groden").
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Application 13/229, 141
Claims 5-7, 9, 10, 19, 22-24, and 27-29 were rejected under 35
U.S.C. § 103(a) as obvious over the combination of Groden and Klauschen. 4
Non-Final Act. 11-19.
Claims 12 and 13 were rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Groden and Antiga. 5 Non-Final Act. 19-20.
Claim 21 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Groden and Bashiri. 6 Non-Final Act. 20-21.
Claim 30 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Groden, Klauschen and Bashiri. Non-Final Act. 21.
SUBJECT MATTER ELIGIBILITY
Appellants argue claims 1-30 together. We designate claim 1 as
representative.
In finding claim 1 patent ineligible, the Examiner found that the
claims were directed to an abstract idea. Non-Final Act. 6. The Examiner
concluded that "the generating and calculating steps outlined in claims 1 and
22 are merely an algorithm implemented by a generic computer structure for
performing a conventional, well understood, routine method in the medical
art of receiving and analyzing data in order to create a model of a
physiological process." Id. The Examiner then concluded that the
additional elements recited in the claims were mere data gathering and did
not transform the abstract idea into patent eligible subject matter. Id. at 6-7.
4 Klauschen et al., Computational Reconstruction of Cell and Tissue
Surfaces for modeling and data analysis, 4(7) NAT. PROTOC., 1006-1012
(2009) ("Klauschen").
5 Antiga et al., Robust and Objective Decomposition and Mapping of
Bifurcating Vessels, 23(6) IEEE TRANSACTIONS ON MEDICAL IMAGING 704--
713 (2004) ("Antiga").
6 Bashiri et al., US 2011/0054589 Al; pub. Mar. 3, 2011 ("Bashiri").
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Application 13/229, 141
We agree with the Examiner that the claims at issue are directed to
patent ineligible subject matter.
Determination of subject matter eligibility involves a two-step test.
First one must determine if the claimed subject matter is directed to a
judicially recognized exception such as a product of nature. Mayo
Collaborative Serves, v. Prometheus Lab., Inc., 566 U.S. 66, 78 (2012). If
the claims address a judicially recognized exception, the next step is to
determine if the claims recite additional elements that transform the nature
of the claim. Id.
The Federal Circuit recently summarized application of the first step
of the subject matter eligibility test to claims involving abstract ideas as
follows:
Information as such is an intangible. Accordingly, we have
treated collecting information, including when limited to
particular content (which does not change its character as
information), as within the realm of abstract ideas. In a similar
vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea
category. And we have recognized that merely presenting the
results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool
for presentation), is abstract as an ancillary part of such
collection and analysis.
Elec. Power Group, LLC v. Alstom SA, 830 F.3d 1350, 1353-54 (Fed. Cir.
2016) (citations omitted).
Here, claim 1 is focused on an abstract idea, the generation of a
computational flow dynamics ("CPD") model. Each of the steps recited in
claim 1 relates to the generation of the CPD model. Step (a) of claim 1
recites receiving information for use in the model while each of steps (b)
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Application 13/229, 141
through ( e) recite mathematical operations to be performed in generating the
model. As in Electric Power Group, the advance reflected in claim 1 is
related to "a process of gathering and analyzing information of a specified
content, then displaying the results, and not any paiiicular asse1iedly
inventive technology for performing those functions." id. at 1354. As in
Electric Pm•v'er Group, this subject matter is not patent eligible.
Turning to the second step in the subject matter eligibility analysis, we
find nothing sufficient to remove the claims from the class of subject matter
ineligible for patenting. The fact that the CFD model is stored on a "non-
transitory computer readable storage medium" and "executed by a
processor" does not add enough to confer eligibility upon the abstract idea
recited in claim 1. Appellants do not identify anything to suggest that the
storage medium and processor recited in the claim involve something more
than generic and conventional components. Alice Corp. Pty. Ltd. v. CLS
Bank Intern., 134 S.Ct. 2347, 2358 (2014) ("[T]he mere recitation of a
generic computer cannot transform a patent ineligible abstract idea into a
patent-eligible invention."); TL! Communications LLC v. AV Automotive
LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) ("It is well-settled that mere
recitation of concrete, tangible components is insufficient to confer patent
eligibility to an otherwise abstract idea."); DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible."). Considering the steps
of the claimed method individually and as an ordered combination, we find
nothing that adds enough to the judicial exception to render the subject
matter recited patent-eligible.
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Appellants argue that their claims are patent eligible because they
"include concepts inextricably tied to computer technology, including 'a
non-transitory computer readable storage medium having stored thereon a
computer program comprising instructions executed by a processor,' 'a
medical image acquired by a medical imaging system,' 'a [system] memory
storing a medical image,' 'a processor configured to access the medical
image from the memory,' and 'a display unit configured to receive the model
from the processor."' Br. 8-9. We are not persuaded because, as discussed
above, the mere recitation of generic computer components does not confer
subject matter eligibility on otherwise patent-ineligible subject matter.
Appellants argue that their claims are not abstract because they
include data made available from a medical device. Id. at 9 (identifying the
limitation of claim 1: "receiv[ing] 'a medical image acquired with a medical
imaging system and that depicts a blood vessel of a patient"'); see also, id. at
10 (arguing that claims are patent eligible because they require input from a
physical device). We are not persuaded.
The limitation requiring the receipt of a medical image sets forth a
conventional step at a high level of generality. Appellants do not identify,
and we do not find, anything in the image receiving step that goes beyond
conventional medical image generating techniques. As noted in Mayo,
"[p ]urely 'conventional or obvious' '[pre ]-solution activity' is normally not
sufficient to transform ... [ineligible subject matter] into a patent-eligible
application of such [subject matter]." Mayo, 566 U.S. at 79 (second
alteration in original). Accordingly, the fact that the information received in
step (a) of claim 1 was generated by a medical device, does not add enough
to render the claimed subject matter patent-eligible. See, In re BRCAJ- and
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Application 13/229, 141
BRCA2-Based Hereditary Cancer Test Patent Litigation, 774 F.3d 755, 764
(Fed. Cir. 2014) (finding that steps specifying how information about a
nucleotide sequence was gathered "do nothing more than spell out what
practitioners already knew-how to compare gene sequences using routine,
ordinary techniques" -and thus do not add enough to confer eligibility on
ineligible subject matter); PerkinElmer Inc. v. Intema Ltd., 496 Fed. Appx.
65 (Fed. Cir. 2012) ("Even if required as part of the claimed processes, the
data-gathering steps [which relate to data gathered by ultrasound] are
conventional and obvious extra-solution activity that cannot save the
claims.").
Appellants argue that the claimed subject matter is not a mental
process because it cannot be performed in the human mind. Br. 11.
Appellants assert, "it is impossible for a human mind, or a pen and paper to
execute software instructions via a processor." Id. We are not persuaded.
As the Examiner explains, "[ t ]he recited models are nothing more
than mathematical equations describing relationships between parameters,
wherein decomposing is a mathematical algorithm by which such equations
are broken down into independent simpler components (i.e. other
mathematical equations)." Ans. 6 (citing Spec. i-fi-126-28). The fact that the
claims require these mathematical computations to be performed by a
computer does not render the claims patent eligible. Alice Corp., 134 S.Ct.
at 2358; Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792
F.3d 1363, 1366 (Fed. Cir. 2015) ("An abstract idea does not become
nonabstract by limiting the invention to a particular field of use or
technological environment, such as the Internet [or a computer].").
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Appellants argue that the claims are patent eligible because there is
"no cited evidence that these claimed limitations exist in the prior art." Br.
12. Appellants confuse analysis of anticipation and obviousness with
analysis of subject matter eligibility. As the Supreme Court explained in
Parker v. Flook, in a subject matter eligibility determination, "the novelty of
the mathematical algorithm is not a determining factor at all." 437 U.S. 585,
591-92 (1978).
Appellants argue that the claimed subject matter represents "an
improvement to the computer itself that respond[s] to 'a need or
technological problem in medical technology, where the flow modeling is
too computationally expensive to be suitable for routine use in a clinical
setting."' Br. 14. We are not persuaded.
The fact that a problem can be solved with a mathematical model or
algorithm that requires less of a computer's memory than solving a problem
with a different algorithm does not mean that the algorithm is rooted in
computer technology or that the algorithm overcomes a problem specifically
arising in the realm of computer networks. It merely means that Appellants
discovered a mathematical algorithm that uses computer memory in a
conventional manner, but uses a relatively smaller amount of it. See Parker
v. Flook, 437 U.S. at 595 ("If a claim is directed essentially to a method of
calculating, using a mathematical formula, even if the solution is for a
specific purpose, the claimed method is nonstatutory."); see also Digitech
Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) ("The method in the '415 patent claims an abstract idea
because it describes a process of organizing information through
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Application 13/229, 141
mathematical correlations and is not tied to a specific stn1cture or
machine.").
Accordingly, we affirm the Examiner's rejection of the pending
claims as not directed to patent-eligible subject matter.
ANTICIPATION AND OBVIOUSNESS
Appellants do not address the Examiner's anticipation and
obviousness rejections. We therefore summarily affirm these rejections.
See Manual of Patent Examining Procedure§ 1205.02 ("If a ground of
rejection stated by the examiner is not addressed in the appellant's brief, that
ground of rejection will be summarily sustained by the Board.").
DECISION
In summary, we affirm the rejection of claims 1-30 under 35 U.S.C.
§ 101 as directed to patent ineligible subject matter.
We affirm the rejection of claims 1--4, 15-18, and 20 under 35 U.S.C.
§ 102(b) as anticipated by Groden.
We affirm the rejection of claims 5-7, 9, 10, 19, 22-24, and 27-29
under 35 U.S.C. § 103(a) as obvious over the combination of Groden and
Klauschen.
We affirm the rejection of claims 12 and 13 under 35 U.S.C. § 103(a)
as obvious over the combination of Groden and Antiga.
We affirm the rejection of claim 21 under 35 U.S.C. § 103(a) as
obvious over the combination of Groden and Bashiri.
We affirm the rejection of claim 30 under 35 U.S.C. § 103(a) as
obvious over the combination of Groden, Klauschen and Bashiri.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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