Ex Parte Manzke et al

Patent Trials and Appeals Board

Mar 15, 2019

14354191 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/354,191 04/25/2014 Robert Manzke
24737 7590 03/19/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2011P01571WOUS 4728
EXAMINER
SUN, JIANGENG
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
03/19/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT MANZKE, ROLAND PROKSA,
ANNE MORAWSKI NEUBAUER, and
CARSTEN OLIVER SCHIRRA
Appeal2018-006606
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Technology Center 2600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and JUSTIN BUSCH,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify the real party in interest as Koninklijke Philips N.V.
App. Br. 2.
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CLAIMED SUBJECT MATTER
"Cardiac catheter ablation, generally, is a minimally invasive medical
procedure in which a catheter, having a radiofrequency emitter disposed at
its tip, is passed within a vessel ... where the emitter is activated to emit an
electrical signal to ablate particular tissue such as cardiac cells."
Spec. 1: 17-21. "Unfortunately, cardiac catheter ablation procedures are
often unsuccessful due to the lack of adequate ablation assessment to ensure
the suitable ablation of the tissue of interest has been performed." Id. at
1:25-28.
Appellants' invention relates to "performing a contrast enhanced scan
of scar tissue created by ablation using a contrast agent targeted to the scar
tissue and analyzing the resulting image( s) to assess the ablation." Id. at
2:32-34. According to Appellants' Specification, "the assessment can be
utilized to determine whether further ablation should be performed, thereby
mitigating unsuccessful ablation due to lack of adequate ablation
assessment." Id. at 2:34--3:2.
Claim 1 is representative and reproduced below:
1. An analyzer, comprising:
a quantifier including one or more processors configured
to quantify an amount of contrast material representing scar
tissue created by ablation for tissue of interest in contrast
enhanced imaging data; and
a recommender including the one or more processors
configured to generate a signal indicative of a recommendation
to further ablate the tissue of interest in response to the quantified
amount of the contrast material not satisfying a pre-determined
threshold.
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REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 101, as being directed
to ineligible subject matter. Final Act. 3-5.
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Toms (US 2006/0173362 Al; Aug. 3, 2006) and van der
Weide (US 2008/0147056 Al; June 19, 2008) ("Weide"). Final Act. 5-10. 2
ANALYSIS
THE PATENT INELIGIBLE SUBJECT MATTER REJECTION
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "'[L]aws of nature, natural phenomena, and abstract
ideas' are not patentable." Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
2 On the record before us, despite the Examiner indicating claims 1-20 are
rejected under 35 U.S.C. § I02(b) in the header of the rejection (Final Act.
5; Ans. 4), we presume that the Examiner rejected claims 1-20 under
§ I03(a). Appellants address the rejection as being under§ I03(a). App.
Br. 9-19; Reply Br. 4--11. Accordingly, we deem the Examiner's error in
this regard as harmless.
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(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See id. at 218-19
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diehr, 450 U.S. at 191 ); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267---68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). That
said, the Supreme Court also indicated that a claim "seeking patent
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protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (brackets in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
In January 2019, the USPTO published revised guidance on the
application of§ 101. 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidelines"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. 50.
Claims 1, 2, and 4-20
Step 1 of the Guidelines
Under the Guidelines, we must first determine whether the claims fall
within the four statutory categories of patent subject matter identified by
35 U.S.C. § 101. Independent claim 1 recites an analyzer comprising two
elements: (1) a quantifier including one or more processors configured to
quantify an amount of contrast material representing scar tissue created by
ablation for tissue of interest in contrast enhanced imaging data, and (2) a
recommender including the one or more processors configured to generate a
signal indicative of a recommendation to further ablate the tissue of interest
in response to the quantified amount of the contrast material not satisfying a
pre-determined threshold.
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We initially note that claim 1 recites an analyzer comprising one or
more processors, a machine. Thus, claim 1 is directed to one of the four
statutory categories of§ 101. Despite falling within this statutory category,
we must still determine whether the claim is directed to a judicial exception,
namely an abstract idea. See Alice, 573 U.S. at 218. To this end, we must
determine whether the claim recites a judicial exception. See 84 Fed. Reg.
50, 54. If the claim recites a judicial exception, we must determine whether
the claim fails to integrate the exception into a practical application. See id.
at 54--55. If both elements are satisfied, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test, which the Guidelines
refer to as Step 2A. See id.
Step 2A, Prong 1 of the Guidelines
In the rejection, the Examiner concludes the claims are comparable to
the claim in SmartGene, Inc. v Advanced Biological Labs., 555 F.
App'x. 950 (Fed. Cir. 2014). Final Act. 4. Our reviewing court determined
the claim in SmartGene "involves a mental process excluded from section
101: the mental steps of comparing new and stored information and using
rules to identify medical options." SmartGene, 555 F. App'x. 950 at 955.
To determine whether a claim recites an abstract idea, we (1) identify
the claim's specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely (a) mathematical concepts; (b) certain methods of
organizing human activity; or ( c) mental processes. Mental processes are
concepts performed in the human mind including an observation, evaluation,
judgment, or opinion. See 84 Fed. Reg. 50, 52. Unless the claim cannot
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practically be performed in the mind, the claim is in the mental process
category if the claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components. See id. at 52 n.14.
Here, we find claim 1, under its broadest reasonable interpretation,
covers performance in the human mind but for the recitation of generic
computer components. That is, the human mind can practically quantify an
amount of contrast material representing scar tissue created by ablation for
tissue of interest in contrast enhanced imaging data. For example, the
human mind can determine how much of a contrast enhanced imaging data
contains bright areas and dark areas. The human mind can also practically
generate a recommendation to further ablate the tissue of interest in response
to the quantified amount of the contrast material not satisfying a pre-
determined threshold. For example, the human mind can recommend that
the amount of bright area in the contrast enhanced image is not enough.
Accordingly, each of the recited functions in claim 1 is a mental step
that is part of the abstract idea of evaluating an image to determine the
amount of contrast material representing ablated tissue and outputting an
indication to recommend further ablation in response to determining the
amount of contrast is below a threshold. Thus, the claim recites an abstract
idea based on these mental processes.
Step 2A, Prong 2 of the Guidelines
Although the claim recites an abstract idea based on these mental
processes, we must then determine whether the abstract idea is integrated
into a practical application, namely whether the claim applies, relies on, or
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uses the abstract idea in a manner that imposes a meaningful limit on the
abstract idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See 84 Fed. Reg. 50, 54--55. To this end, we
(1) identify whether there any additionally recited elements beyond the
abstract idea, and (2) evaluate those elements individually and collectively to
determine whether they integrate the exception into a practical application.
See id. at 55.
As discussed above, each of the recited functions in claim 1 is a
mental step that is part of the abstract idea. Only the generically recited
computer components and recommender-generated signal3 constitute
additional elements beyond the abstract idea in claim 1. Specifically, the
"quantifier including one or more processors," the "recommender including
the one or more processors," and the "signal indicative of a
recommendation"4 are additional elements beyond the abstract idea.
The machine-or-transformation test, although not the only test, can
nevertheless indicate whether additional elements integrate the exception
into a practical application. See id. (citing MPEP §§ 2106.05(b), (c)).
3 The signal itself could be considered part of the abstract idea because,
considering the claim without the generically recited recommender having
one or more processors, the signal encompasses, for example, a simple
verbal signal ( e.g., "yes, continue to ablate") or a hand gesture indicating the
same. Nevertheless, for purposes of this decision, we treat and address the
signal as an additional element. Regardless, the indication of
recommendation is part of the abstract idea.
4 As explained in the previous footnote, the indication of a recommendation,
itself is part of the abstract idea but, as discussed in the previous footnote,
for purposes of this decision, we consider the signal itself to be an additional
element beyond the abstract idea
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Accord Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
( quoting Bilski, 561 U.S. at 594). Under the machine-or-transformation test,
a claimed process is patent-eligible if: (1) it is tied to a particular machine or
apparatus, or (2) it transforms a particular article into a different state or
thing. In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), ajf'd sub nom. Bilski,
561 U.S. at 593. According to the Federal Circuit in Bilski, the
transformation ( 1) must transform an underlying article to a different state or
thing, and (2) must be central to the purpose of Appellants' claimed process.
Id. at 962. Although an underlying article can be intangible, such as
electrical signals, and transformation can include data transformation, the
data must represent a physical object or an article. Id. at 962---63 ( citing In re
Abele, 684 F.2d 902, 908---09 (CCPA 1982)).
Although the machine-or-transformation test is generally applied to
process claims, the apparatus claims here are substantively similar to method
claim 15, so we see no reason to treat claims 1-14 any differently with
respect to their eligibility, just as the U.S. Supreme Court did for the system
claims in Alice. See Alice, 573 U.S. at 208 ("[T]he system claims are no
different from the method claims in substance."). This approach is also
consistent with the Federal Circuit's approach for the computer-readable
medium claims in CyberSource, as well as its predecessor court's treating an
apparatus claim as a method claim for eligibility purposes in Abele. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed.
Cir. 2011) (noting that the underlying invention for both the method and
computer-readable medium claims were a method for detecting credit card
fraud-not a manufacture for storing computer-readable information); see
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also id. (noting that the Abele court treated apparatus claim 7 as a method
claim for purposes of determining eligibility).
We find unavailing Appellants' contention that claims 1, 2, and 4--20
are eligible based on the Court's reasoning in Abele. App. Br. 6-7; Reply
Br. 3--4. In Abele, the Court held a process for calculating certain values for
a data point in a field and displaying the value as a signed gray scale at a
point in an image corresponding to the data point was "directed solely to the
mathematical algorithm portion of appellants' invention and," thus,
ineligible. Cf Abele, 684 F .2d 902 at 908. 5 On the other hand, the court
reached a different result with respect to dependent claim 6, which further
recited that the data, on which the algorithm was performed in order to
graphically display an image, was "X-ray attenuation data produced in a two
dimensional field by a computed tomography scanner." Id. The court
determined dependent claim 6 was patent eligible because the dependent
claim required "X-ray attenuation data." The court reasoned the X-ray
attenuation data could be obtained only by passing an X-ray beam, produced
by a computerized axial tomography (CAT) scanner, through physical and
5 As discussed above, mathematical concepts ( e.g., mathematical
relationships, formula, and equations) are one category of abstract idea;
mental processes ( e.g., concepts performed in the human mind, such as
evaluation, judgment, and opinion) are another. 84 Fed. Reg. 52. The
question of whether Abele's claims recited more than the mathematical
algorithm is analogous to our question of whether Appellants' claims recite
more than the mental processes. See also CyberSource, 654 F.3d at 1375
("Abele made clear that the basic character of a process claim drawn to an
abstract idea is not changed by claiming only its performance by computers,
or by claiming the process embodied in program instructions on a computer
readable medium.").
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tangible objects such as bones, organs, and body tissues and detecting the
beam upon its exit. Id.; see Bilski, 545 F.3d at 962---63.
Claim 1 recites functions that "quantify an amount of contrast material
representing scar tissue created by ablation for tissue of interest in contrast
enhanced imaging data" and compare that amount to a threshold. But the
recited "quantify[ing] an amount of contrast material" in contrast enhanced
imaging data and comparing that amount to a threshold is merely that-
quantification and comparison of data. Moreover, generating a signal based
on the results of the comparison merely provides a signal indicating the
result of the comparison. Even considering the signal as an additional
element beyond the abstract idea, outputting results is merely insignificant
post-solution activity that fails to integrate the abstract idea into a practical
application. See 84 Fed. Reg. 50, 55 n.31 (citing MPEP § 2106.0S(g)). We
see no difference between claim 1 's recitation of quantifying and comparing
data and outputting a result (i.e., a signal) and Abele claim S's recited
calculation/comparison and outputting the results (i.e., displaying the value
in a picture), which the court found ineligible. Thus, claim 1 fails to recite
an element that integrates the judicial exception into a practical application.
Step 2B of the Guidelines
Although the claim does not integrate the judicial exception into a
practical application, we must determine whether additional elements of the
claim, individually or in combination, provide an inventive concept. See 84
Fed. Reg. 50, 56. To this end, we determine whether the additional elements
(1) add a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field, which is indicative
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that an inventive concept may be present; or (2) simply append well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present. Id.
The Examiner concludes under step two in the Mayo/Alice framework
that claim 1 uses one or more generic processors, but that these processors
do not add significantly more to the abstract idea. Final Act. 4. According
to the Examiner, the generic processors are routine and conventional in the
art of image processing. Id.
Appellants do not sufficiently challenge this determination that the
additional elements operate in their conventional manner. The disclosure
describes the additional elements (i.e., the quantifier and recommender,
including the one or more processors) and the signal indicative of a
recommendation, in generalities. Spec. 5: 10-16; 7: 1---6. Contrary to
Appellants' contention (Reply Br. 2-3), using a computer processor for
"quantifying" and "generating" information simply takes advantage of some
of the "most basic functions [ofJ a computer." Cf Alice, 573 U.S. at 225
(the "use of a computer to obtain data, adjust account balances, and issue
automated instructions; all of these computer functions are 'well-understood,
routine, conventional activit[ies]' previously known to the industry.")
(quoting Mayo, 566 U.S. at 71-73); Benson, 409 U.S. at 65 (noting that a
"computer operates then upon both new and previously stored data. The
general-purpose computer is designed to perform operations under many
different programs."). Although the Examiner finds that applying contrast
agent to scar tissue is well known, routine, and conventional in the art
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(Reply Br. 3), Appellants' contention that Weide does not support this
finding is not persuasive of error, because the claim does not recite applying
a contrast agent to scar tissue.
As we discussed above, we determine the "quantifier including one
or more processors," the "recommender including the one or more
processors," and the "signal indicative of a recommendation" are the
additional elements beyond the abstract idea. The quantifier and
recommender are just labels describing generic computing elements based
on the function the particular elements perform. Although the quantifier and
recommender include the "one or more processors," the processors also are
generic computer components recited at a high level of generality. Finally,
the generated signal is one of the most basic functions performed by
computers or processors. Accordingly, these generic computing components
and the signal, each of which is recited at a high level of generality, are
merely well-understood, routine, and conventional elements performing
well-understood, routine, and conventional functions.
Therefore, we are not persuaded the Examiner erred in rejecting
independent claim 1, and claims 2, 4--17, 19, and 20, which Appellants did
not argue separately with particularity.
Claims 3 and 18
Step 2A, Prong 1 of the Guidelines
Claim 3 indirectly depends from independent claim 1, thereby
including all the limitations of claim 1. See 37 C.F.R. § 1.75. Thus, for the
reasons discussed above concerning claim 1, we find claim 3, recites an
abstract idea for the reasons discussed above.
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Step 2A, Prong 2 of the Guidelines
Claim 3 recites that "the contrast image is a K-edge image generated
by a computed tomography (CT) imaging scanner emitting poly-energetic x-
ray radiation." Claim 18 depends from method claim 15 and recites similar
limitations, namely that "the contrast enhanced imaging data includes at
least one of computed tomography contrast enhanced imaging data or x-ray
contrast enhanced imaging data." Therefore, even though Appellants do not
argue dependent claim 18 separately, we group claim 18 with claim 3. As
the Specification explains, a detector array includes detector pixels that
detect radiation traversing the tissue of interest. Spec. 3 :29-32. A detector
array generates an electrical signal indicative of the detected radiation that
traverses the tissue of interest. Id. at 4:2-3.
Although claim 3, on its face, appears to merely limit the source of the
image analyzed in claim 1, claim 3 is strikingly similar to claim 6 in Abele,
which the court determined was directed to eligible subject matter. Abele,
684 F.2d at 908. Specifically, the Court determinedAbele's claim 6 recited
eligible subject matter because "the method of claim 6, unlike that of claim
5, requires 'X-ray attenuation data,'" which the Specification indicated was
"available only when an X-ray beam is produced by a CAT scanner, passed
through an object, and detected upon its exit." Id. Because the data was
required to be produced by a certain set of steps, the court apparently
determined that those steps were part of the method recited in claim 6. Id.
("Were we to view the claim absent the algorithm, the production, detection
and display steps would still be present and would result in a conventional
CAT-scan process. Accordingly, production and detection cannot be
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considered mere antecedent steps to obtain values for solving the
algorithm").
Therefore, due to the striking similarity between Appellants' claim 3
and Abele 's claim 6, we determine Appellants' claim 3 recites a patent-
eligible transformation, namely transforming the X-ray data emitted from
Appellants' CT imaging scanner passes through the tissue of interest into a
K-edge image-a transformation of data that represents a physical object,
namely the tissue of interest. See Spec. 3: 19--4:20; Reply Br. 9 (noting the
principles here are indistinguishable from those in Abele). The Examiner's
finding that there is no improvement of contrast enhanced imaging
technology (Ans. 10) does not consider the other exemplary considerations
in determining whether a judicial exception is integrated into a practical
application. See 84 Fed. Reg. 50, 55. As such, the claim recites additional
elements that integrate the exception into a practical application. See id. at
55 n.28 (citing MPEP § 2106.05(c)).
In conclusion, although claim 3 recites an abstract idea, namely a
mental process, the claim nevertheless integrates that abstract idea into a
practical application by applying, relying on, or using the abstract idea in a
manner that imposes a meaningful limit on the abstract idea. See id. at 54--
55.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 3 and claim 18, which recites similar limitations.
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THE OBVIOUSNESS REJECTION
Claims 1 and 10---14
The Examiner determines that the combination of Toms and Weide
renders claim 1 obvious, regardless of whether scar tissue created by
ablation is non-functional descriptive material. 6 Final Act. 5-6. In
particular, the Examiner finds Toms discloses many recited elements of
independent claim 1 including, among other things, quantifying an amount
of contrast material representing tissue of interest in contrast enhanced
imaging data. Id. at 5 (citing Toms ,r,r 10, 14, 60, 71). Although the
Examiner acknowledges that Toms' contrast material does not represent scar
tissue created by ablation, the Examiner cites Weide in combination with
Toms for teaching this feature in concluding that the claim would have been
obvious. Id. at 6 (citing Weide ,r,r 128 and 150). That is, the Examiner cites
Weide merely to show that modifying Toms' teaching of quantifying an
amount of contrast material in contrast enhanced imaging data so that the
contrast material represents scar tissue created by ablation would have been
obvious.
Therefore, Appellants' argument that Weide does not teach a contrast
material representing scar issue (App. Br. 10; Reply Br. 5-6) is unavailing
6 The Examiner determines the nature of the tissue is non-functional
descriptive material. However, the Examiner also finds the prior art teaches
the subject matter recited in claim 1, including the subject matter the
Examiner determines is non-functional descriptive material. For the reasons
discussed below, Appellants do not persuade us the Examiner erred in
finding that the prior art teaches or suggests the entirety of the recited
subject matter. Therefore, we do not reach the issue of non-functional
descriptive material.
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because the rejection is not based solely on Weide, but rather on the cited
references' collective teachings. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Appellants' argument that Weide does not teach
quantifying an amount of contrast agent (App. Br. 10) is not germane to the
rejection because Weide was cited for teaching scar tissue created by
ablation.
Nor do we find availing Appellants' contention that Weide does not
teach scar tissue. App. Br. 1 O; Reply Br. 5---6. Appellants' Specification
does not define the term "scar tissue." We, therefore, construe the term
"scar" in accordance with its plain meaning, namely "[a] mark ... resulting
from ... contact." THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE 1611 (n. def. 4) (3rd ed. 1992).
Weide relates to medical procedures that deliver energy to tissue.
Weide, Abstract. Weide's "thermal ablation" procedure delivers energy to a
tissue region that changes the region during and after the thermal ablation
procedure. Id. ,r 128. Weide's thermal ablation procedure, then, at least
suggests producing a mark on the tissue region resulting from contact with
the delivered energy ( e.g., forms scar tissue). 7
7 Notably, Weide explicitly discloses that "the present invention provides
software designed to automatically obtain images of a tissue region ( e.g., ...
CT imaging ... ), automatically detect any changes in the tissue region (e.g.,
... amount of necrotic tissue ... ), and based on the detection to
automatically adjust the amount of energy delivered to the tissue region."
Weide ,r 129 (emphasis added).
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 and claims 10-14 not argued separately with particularity.
Claims 2-8
We do not sustain the Examiner's rejection of claim 2. Final Act. 6-
7. Claim 2 recites "a combiner including the one or more processors
configured to combine a contrast image representing the contrast material of
the tissue of interest and a structural image of the tissue of interest, wherein
the combination image is visually presented." We begin by noting that,
although there is no explicit antecedent basis for "the combination image,"
we construe "the combination image" as referring to an image resulting from
combining the contrast image and the structural image.
The Examiner finds Toms teaches the recited combination image in
Figures 14--18. According to the Examiner, the "broadest reasonable
interpretation of 'a combined image' is just an image that has all different
images together side by side, just like how the images in [Figures] 14--18 are
arranged." Ans. 14. Appellants argue the Examiner's interpretation is not
reasonable to a person having ordinary skill in the art. Reply Br. 6. We
agree.
According to Appellants' Specification, "a contrast material image
and a structural image may be combined in a single image and/or displayed
next to each other." Spec. 4: 18-20. Thus, Appellants' Specification
indicates that the contrast material image and the structural image may be
either combined into a single image or displayed next to each other. Thus,
contrary to the Examiner's finding, Toms' slice levels displayed in Figures
14--18 next to each other are not combined because such a construction
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would not constitute "an interpretation that corresponds with what and how
the inventor describes his invention in the specification, i.e., an
interpretation that is 'consistent with the specification.'" In re Smith Int 'l,
Inc., 871 F.3d 1375, 1382-83 (Fed. Circ. 2017) (quoting In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997)).
Accordingly, we are persuaded the Examiner erred in rejecting claim
2 and dependent claims 3-8 for similar reasons.
Because this issue is dispositive regarding the Examiner's error in
rejecting these claims, we need not address Appellants' other arguments.
Claim 9
We do not sustain the Examiner's rejection of claim 9 (Final Act. 7),
which recites, in pertinent part, "a comparator including the one or more
processors configured to compare the quantified amount with the pre-
determined threshold."
The Examiner finds that Toms discloses the recited comparison
functionality. Final Act. 7 (citing Toms ,r 14); Ans. 16. According to the
Examiner, the amount of quantum dots delivered is "the quantifying amount
in the tissue." Ans. 16. Appellants argue "there is no comparison with a
threshold or providing a recommendation based on the comparison." App.
Br. 15. We agree.
Toms' discloses the amount of quantum dots delivered to a living
subject is no less than a threshold concentration of the quantum dots. Toms
,r 14. Even assuming Toms' delivery of an amount of quantum dots no less
than the threshold concentration involves a comparison to the threshold
concentration, the Examiner has not shown a comparator including one or
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more processors that compares the delivered quantum dots with the
threshold concentration.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 9. Because this issue is dispositive regarding the Examiner's error in
rejecting these claims, we need not address Appellants' other arguments.
Claims 15 and 18
We sustain the Examiner's obviousness rejection of independent
claim 15. Final Act. 8-9. The Examiner finds Toms discloses many recited
elements of independent claim 15 including, among other things,
(1) obtaining contrast enhanced image data indicative of tissue of interest
and (2) quantifying an amount of contrast material for a tissue of interest.
Final Act. 8 ( citing Toms ,r,r 10, 71 ).
Appellants contend that Toms does not at least suggest quantifying an
amount of contrast material. App. Br. 17. We disagree. Toms discloses
preoperatively delivering an effective amount of optical nanoparticles to
tissues. Toms ,r 10. For example, "[animals] were injected intravenously
with 3.4, 8.5, or 17 nanomoles of quantum dots." Id. ,r 114. Toms' quantum
dots are used as a contrast agent. Id. ,r 13. Toms, then, at least suggests
quantifying an amount of quantum dots (the claimed "contrast material") for
a tissue of interest.
The Examiner also finds Toms discloses generating a signal indicative
of a recommendation. Final Act. 8 (citing Toms ,r 70); Ans. 17 (additionally
citing Toms ,r,r 7, 74). Appellants contend that Toms does not at least
suggest generating a signal indicative of a recommendation. App. Br. 17.
We disagree. Toms' in vivo detection method provides guidance in a
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surgical procedure. Toms ,r 70. Toms' optical nanoparticles are imaged
using an intra-operative optical imaging technique. Id. ,r 74. "When the
optical nanoparticles are detected, surgical excision, biopsy, or resection of
the neoplasm (e.g., brain tumor) can be guided by the optical imaging." Id.
Toms' detection of optical nanoparticles, then, at least suggests a generated
signal indicative of a recommendation.
Although the Examiner acknowledges that Toms' tissue of interest is
not scar tissue created by ablation, the Examiner cites Weide in combination
with Toms for teaching this feature in concluding that the claim would have
been obvious. Final Act. 8 (citing Weide ,r,r 128, 150). That is, the
Examiner cites Weide merely to show that applying Toms' method where
the tissue of interest is scar tissue created by ablation would have been
obvious. Therefore, Appellants' argument that Toms does not teach
quantifying an amount of contrast material representing scar tissue created
by ablation (App. Br. 16-17; Reply Br. 10) is unavailing because the
rejection is not based solely on Toms, but rather on the cited references'
collective teachings. See Merck, 800 F .2d at 1097.
Appellants' argument that Weide does not teach quantifying an
amount of contrast agent (App. Br. 17) is inapposite because Weide was
cited for teaching scar tissue created by ablation. Appellants' contention
that Weide does not teach scar tissue (App. Br. 16) is unavailing for the
reasons discussed above for claim 1. Appellants' contention that Weide
does not disclose a contrast agent representing scar tissue because
"[p ]erfusion or bleeding is not representative of scar tissue and does not
suggest or imply scar tissue" (App. Br. 16) is unavailing for the reasons
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discussed above with respect to claim 1 regarding the proper construction of
"scar tissue" as well as Weide' s explicit disclosure of detecting various type
of changes to ablated tissue. See Weide ,r,r 126-132.
Accordingly, we sustain the rejection of independent claim 15 and
claim 18 which depends from claim 15.
Claims 16 and 17
Claim 16 recites, in pertinent part, combining a contrast image and a
structural image. The Examiner finds claim 16 is similar to claim 2 and
relies on the findings provided for claim 2. Ans. 17; see also Final Act. 9.
Accordingly, for the reasons discussed above, we do not sustain the
Examiner's rejection of claim 16, and claim 17 which depends from claim
16.
Claims 19 and 20
Claim 19 recites, in pertinent part, "the contrast material includes a
nano-particle contrast material targeted to at least one of the scar tissue
[sic]."
Appellants' arguments that Toms does not teach scar tissue created by
ablation (App. Br. 19; Reply Br. 11) is unavailing because the rejection is
not based solely on Toms, but rather on the cited references' collective
teachings as discussed above. See Merck, 800 F.2d at 1097.
Accordingly, we sustain the Examiner's rejection of claim 19, and
claim 20 which depends from claim 19.
Note Regarding Construction of Claim 1
We note claim 1 recites a "quantifier" and a "recommender," which
appear to be simply nonce words or "non-structural generic placeholders"
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tantamount to the term "means" because they fail to connote sufficiently
definite structure and, in the context of claim 1, invoke 35 U.S.C. § 112,
sixth paragraph. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349
(Fed. Cir. 2015); see also MPEP § 2181(1) (citing Ex parte Rodriguez, 92
USPQ2d 1395, 1404 (BPAI 2009) (precedential)); Examining Computer-
Implemented Functional Claim Limitations for Compliance with 35 U.S.C.
112, 84 Fed. Reg. 57 (Jan. 7, 2019).
Relatedly, general purpose processors, such as claim 1 's "one or more
processors," recited solely in functional terms may invoke 35 U.S.C. § 112,
sixth paragraph. See Aristocrat Techs. Aust!. Pty v. Int 'l Game Tech., 521
F.3d 1328, 1333 (Fed. Cir. 2008). Notably, expanded panels of this Board
have held that the term "processor" is a nonce word or "non-structural
generic placeholder" because it is "a general purpose computer, a central
processing unit ('CPU'), or a program that translates another program into a
form acceptable by the computer being used." Ex parte Lakkala, No. 2011-
001526 (PTAB Mar. 13, 2013) (informative); see Ex parte Ero!, No. 2011-
001143 (PTAB Mar. 13, 2013) (informative); Ex parte Smith, No. 2012-
007631 (PTAB Mar. 14, 2013) (informative).
The Examiner did not articulate a construction under 35 U.S.C. § 112,
sixth paragraph, and we will not speculate in that regard here in the first
instance on appeal. We leave this question to the Examiner. Should the
Examiner determine the claims invoke 35 U.S.C. § 112, sixth paragraph, the
Examiner should review the Specification for supporting structure ( e.g., an
algorithm) to perform the specified functions of the quantifier and
recommender, which include the one or more processors, sufficient to render
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the claims definite and enabled for their full scope under 35 U.S.C. § 112.
See Aristocrat, 521 F.3d at 1333; see also Finisar Corp. v. The DirecTV
Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
CONCLUSION
Under § 101, the Examiner did not err in rejecting claims 1, 2, and
4--20, but erred in rejecting claim 3.
Under§ 103(a), the Examiner did not err in rejecting claims 1, 10-15,
and 18-2 0, but erred in rejecting claims 2-9, 16, and 1 7.
DECISION
We affirm the Examiner's decision to reject claims 1, 2, and 4--20.
We reverse the Examiner's decision to reject claim 3.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED-IN-PART
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