Ex Parte Popovic et al

Patent Trial and Appeal Board

Mar 8, 2017

13142449 (P.T.A.B. Mar. 8, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/142,449 06/28/2011 Aleksandra Popovic 2008P01565WOUS 3603
24737 7590 03/10/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue JONES, HUGH M
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
03/10/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEKSANDRA POPOVIC and KAREN IRENE TROVATO
Appeal 2016-007172
Application 13/142,449
Technology Center 2100
Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
twice rejecting claims 1—3, 5, 16, 23, and 25, all the claims pending in the
application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to “the field of planning
insertion of concentric cannulas into a body,” and specifically insertion into
“a human body of a medical patient” (Spec. 1).
Appeal 2016-007172
Application 13/142,449
Claim 1 is illustrative:
1. A method for configuring a set of concentric
cannula, the method comprising executing operations on a data
processing device, the operations comprising:
the data processing device receiving a representation
of permissible tube specifications, the tube specifications
including at least one indication of a diameter and at least one
respective radius of curvature for each diameter;
the data processing device receiving a description of
a scan of a body to be penetrated by the set of concentric cannula,
the description including representations of
at least one start point relative to the scan of
the body,
at least one free space and/or at least one
obstacle within the scan of the body, and
at least one goal point relative to the scan of
the body;
the data processing device, responsive to the
received permissible tube specifications and the received
description of the scan of the body, selecting a telescoping
assembly of a plurality of the tubes to configure the set of
concentric cannula defining at least one path through the scan of
the body from the start point to the goal through free space and
avoiding obstacles,
wherein the selecting of the telescoping assembly of
a plurality tubes to configure the set of concentric cannula
includes
a specification of at least one sequence of tubes;
at least one radius of curvature for each tube;
a respective length for each selected tube;
an angular orientation of tube with respect to
previous tube; and
a net curvature of the set of concentric cannula.
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Appeal 2016-007172
Application 13/142,449
Appellants appeal the following rejections:
Rl. Claims 1—3, 5, 16, 23, and 25 stand rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
R2. Claims 1—3, 5, 16, 23, and 25 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Webster et al. (WO 2007/059233 A2, May
24, 2007).
Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1, as set forth below. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ANALYSIS
Rejection under § 101 of claims 1—3, 5, 16, 23, and 25
Issue 1: Did the Examiner err in finding that the claims are merely
directed to an abstract idea?
Appellants contend the claims “encompass an application of the
inventive premise for transforming an unassembled set of tubes into a
configuration of an assembled set of tubes derived from a scan of a body to
thereby improve upon the dexterity of the tubes for reducing trauma to
patients during a medical procedure” (App. Br. 18).
In response, the Examiner finds that the claims are directed “to
abstract ideas — an algorithm to determine a set of tubes traversing a given
path in a broadly defined space region” that “includes taking into account
information about diameters & their turning radii” (Ans. 5), and the claims
do not require “that the set of tubes are real and/or exist and/or that they are
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Application 13/142,449
actually assembled and/or any assembled tubes are actually deployed” (Ans.
7). We agree with the Examiner.
We refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CIS Bank
Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67
(1972) (“Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work.”). Notwithstanding that a law of
nature or an abstract idea, by itself, is not patentable, the application of these
concepts may be eligible for patent protection. Mayo Collaborative Servs. v.
Prometheus Labs,. Inc., 132 S. Ct. 1289, 1293—94 (2012). In Mayo, the
Court stated that “to transform an unpatentable law of nature into a patent-
eligible application of such a law, one must do more than simply state the
law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294
(citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
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Application 13/142,449
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claim “individually and ‘as an ordered combination’” to
determine whether the additional elements ‘“transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
1289, 1297). In other words, the second step is to “search for an ‘inventive
concept’ — i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (quoting Mayo, 132 S. Ct. at 1294).
As to whether the claims at issue are directed to a patent-ineligible
concept, we conclude that they are. Claims 1—3, 5, 16, 23, and 25 are
directed to the abstract idea of mathematical relationships and formulas. We
agree with the Examiner’s finding that “the tubes and their assemblies are
not required by the claim” and instead the claims recite ‘“representation of a
set of tubes’, ‘for configuring’, ‘to be penetrated’, ‘to be telescopically
assembled to configure’, ‘for deploying’” (Ans. 7). Thus, the claimed
“selecting a telescoping assembly of a plurality of tubes to configure the set
of concentric cannula ” accounting for tube specifications, radius of
curvature, and “a net curvature,” is an “abstract idea” beyond the scope of
§101.
Additionally, the introduction of a generic data processing device into
the claims does not alter the analysis of Mayo step two because claims which
merely require generic computer implementations, fail to transform that
abstract idea into a patent-eligible inventions.
We conclude that claims 1,16, 23, and 25, which merely require a
generic “data processing device,” “system” with “an interface” and “at least
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Application 13/142,449
one medium storing executable code” and “at least one processor”
implementations, fail to transform the abstract idea into a patent-eligible
invention.
Taking the claim elements separately, these generic computer network
elements are purely conventional. These claimed generic elements are well-
understood, routine, conventional elements previously known to the
industry. In short, the claims do no more than require generic computer
network elements to perform generic computer network functions.
Viewed as a whole, Appellants’ claims simply recite the concept of
storing, sending, and receiving particular data as performed by a generic
computer network. The claims do not, for example, purport to improve the
storage operation of the computer network itself, e.g., an inventive data
structure is used. Nor do they effect an improvement in any other
technology or technical field, e.g., a computer program for performing
inventive functions is stored on the generic computer storage media.
Instead, as noted by the Examiner (see Final Act. 5—7), the claims at
issue amount to nothing significantly more applying the abstract idea of
storing, sending and receiving particular data using some unspecified
generic computer network elements, i.e., data in and data out. That is not
enough to transform an abstract idea into a patent-eligible invention.
None of the hardware recited by the claims offers a meaningful
limitation beyond generally linking the use of the data to a particular
technological environment, that is, implementation via computer network.
Simply appending a conventional computer network, controller, or
computer-readable storage medium, specified in general terms, is not enough
to transfer an abstract idea into a patent-eligible invention. See Alice, 134 S.
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Ct. at 2357—60. These recitations are similar to the recitation of a
conventional “computer” discussed in Alice.
Therefore, we sustain the rejection of claims 1—3, 5, 16, 23, and 25
under 35 U.S.C. § 101 as directed to non-statutory subject matter.
Rejection under § 102 over Webster
Issue 2: Did the Examiner err in finding that Webster describes “the
selecting of the telescoping assembly of a plurality tubes to configure the set
of concentric cannula includes... a net curvature of the set of concentric
cannula,” as recited in claim 1?
Appellants contend that “Webster fails to describe or teach a net
curvature of a set of concentric cannula” and instead “obviates the need for
indicating a net curvature of the concentric cannula as evidenced by the
omission of computation of an instantaneous equilibrium of curvature of the
non-overlapping curved portion” (App. Br. 20).
We agree with the Examiner’s finding that “net curvature is merely
the resultant sum of the total curvatures of the individual ‘tubes’ — the
resultant curvature over the total path defined by the set of connected tubes”
and that Webster’s “final overall configuration of tubes resulting in a
curvature of the concentric cannula at transition points of overlapping tubes-
as well as the curvatures in between — that correspond to a desired needle
path necessarily has a ‘net curvature’” (Ans. 8).
For example, Webster discloses:
[0052] Referring again to FIG. 3, active cannula 102 has a
plurality of overlap transition points T1-T5. Each overlap
transition point T1-T5 defines a boundary of a region in which
the each of the outer flexible tube 110, middle flexible tube 115,
and inner flexible tube 120 (or some subset of the three) have a
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Application 13/142,449
substantially constant degree of curvature, or lack of curvature.
For example, the region between overlap transition points T1-T5
includes outer tube curved section 212, middle tube straight
section 215, and inner tube straight section 220. Overlap
transition point 77 is coincident with middle tube transition point
216. Accordingly, the region between T2 and 77 includes outer
tube curved section 212, middle tube curved section 217, and
inner tube straight section 220.
[0053] Each region bounded by at least one of overlap transition
points T1-T5 has a curvature that is a function of the curvatures
and flexibilities of each of outer flexible tube 110, middle
flexible tube 115, and outer flexible tube 120, as well as the
resistance of the surrounding tissue medium. One will note that
some regions have only middle flexible tube 115 and inner
flexible tube 120. In this case, the curvature of that region is a
function of the curvature of those two tubes within the region. In
the simplest case, the curvature of the region from 77 to end
effector 125 is a function of the curvature of inner flexible tube
120 and the resistance of the surrounding tissue medium.
[0066] In computing a final configuration that conforms to the
path, the software divides active cannula 102 into a set of regions
defined by overlap transition points T1-T5. In doing so, the
software may select an initial set of translational positions and
rotational orientations for each of outer flexible tube 110, middle
flexible tube 115. The locations of overlap transition points 77-
77 depends on the overlap of the three flexible tubes. Then for
each region bounded by overlap transition points T1-T5, the
software computes the instantaneous equilibrium curvature.
(Webster || 52—53, 66, emphasis added). In other words, Webster describes
that a path is calculated and the curvature for entire path, including the
transition points and the sections between the transition points, is calculated.
Appellants do not provide persuasive evidence or argument that
Webster’s calculation of an instantaneous curvature for a path does not
describe an instantaneous net curvature. Thus, we agree with the
Examiner’s finding that Webster describes “the selecting of the telescoping
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Application 13/142,449
assembly of a plurality tubes to configure the set of concentric cannula
includes... a net curvature of the set of concentric cannula,” as recited in
claim 1.
For at least these reasons, we are unpersuaded the Examiner erred.
Accordingly, the Examiner’s § 102 rejection independent claims 1, 16, 23,
and 25, as well as dependent claims 2, 3, and 5, not separately argued, is
sustained.
DECISION
We affirm the Examiner’s § 101 rejection Rl.
We affirm the Examiner’s § 102 rejection R2.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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