Ex Parte Ramachandran et al

Patent Trial and Appeal Board

Feb 9, 2018

14397789 (P.T.A.B. Feb. 9, 2018)

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.
14/397,789 10/29/2014 Bharat Ramachandran 2012P00314WOUS 6235
24737 7590 02/13/2018
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue AHMED, JAMIL
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2886
NOTIFICATION DATE DELIVERY MODE
02/13/2018 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):
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 BHARAT RAMACHANDRAN, ROBERT
MANZKE, and RAYMOND CHAN
Appeal 2017-005220
Application 14/397,7891
Technology Center 2800
Before TERRY J. OWENS, BRIAN D. RANGE, and DEBRA L.
DENNETT, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—14 and 22. We have jurisdiction. 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appellant is the applicant, KONINKLIJKE PHILIPS N.V., and,
according to the Appeal Brief, is also the real party in interest. Appeal Br. 3.
Appeal 2017-005220
Application 14/397,789
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a method for shape
sensing with optical fiber. Appeal Br. 5. The invention exploits the inherent
backscatter of laser light shining through conventional optical fiber in order
to measure strain within the fiber and, based on strain measurements,
reconstruct the fiber’s shape. Spec. 1—2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for shape sensing with optical fiber, comprising:
collecting shape data from an optical fiber shape sensing
device;
performing a test on the shape data to determine data
positions that exceed an acceptable threshold based on
geometrical expectations of the shape data;
rejecting the shape data corresponding to the data
positions that exceed the acceptable threshold; and
rendering acceptable shape data to provide a stable shape
sensing data set.
Appeal Br. 19 (Claims App’x).
REJECTIONS AND REFERENCES
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1—14 under 35 U.S.C. § 101 because the claimed
invention is not directed to patent eligible subject matter. Final Act. 2.
2 In this opinion, we refer to the Final Office Action dated March 8, 2016
(“Final Act.”), the Appeal Brief filed August 30, 2016 (“Appeal Br.”), the
Examiner’s Answer dated December 12, 2016 (“Ans.”), and the Reply Brief
filed February 8, 2017 (“Reply Br.”).
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Rejection 2. Claims 1—14 and 22 under 35 U.S.C. § 103(a) as
unpatentable over Roelle et al., Dec. 29, 2011, U.S. Patent Pub. No.
2011/0319910 Al (“Roelle”) in view of Prisco, May 19, 2011, U.S. Patent
Pub. No. 2011/0113852 Al (“Prisco”).
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellant and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellant’s arguments, we
are not persuaded that Appellant identifies reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Rejection L Section 101. With respect to this rejection, Appellant
argues all claims as a group. Appeal Br. 7—9. We therefore limit our
discussion to claim 1. Claims 2—14 stand or fall with that claim. 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
The Examiner rejects claims 1—14 under 35 U.S.C. § 101 because the
claims are directed to an abstract idea. Final Act. 2. 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 7, 134
S. Ct. 2347, 2355 (2014). According to the Supreme Court's framework, it
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must first be determined whether the claims at issue are directed to one of
those concepts (i.e., laws of nature, natural phenomena, and abstract
ideas). Id. If so, a second determination must be made to 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. (internal quotes and citation
omitted).
Here, regarding the first part of the Alice inquiry, the Examiner
determines that all steps of claim 1 are directed to abstract ideas such as
“collecting shape data from an optical fiber shape sensing device,”
“performing a test on the shape data . . .,” and “rendering acceptable shape
data to provide a stable shape sensing data set.” Final Act. 3. The Examiner
determines that the recited steps are instructions to implement abstract ideas
on a computer/processor and relate to data analysis after “usual data from
the shape sensing optical fiber” has already been obtained. Id.
Appellant argues that the “collecting shape data from an optical fiber
shape sensing device” is not abstract because it involves “the physical act of
collecting shape data from an optical fiber shape sensing device or shape
sensing optical fiber device.” Appeal Br. 8. Even if claim 1 were construed
to require use of fiber as part of the claimed method, this would not make
the subject matter of the claim non-abstract. Rather, our reviewing court has
held that generic and well-known devices for inputting data into a computer
do not transform an abstract idea into a patent-eligible invention. See, e.g.,
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n,
776 F.3d 1343, 1348 (Fed. Cir. 2014) (holding that use of generic computer
and scanner did not make claim patent eligible); compare with Thales
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Visionix Inc. v. United States, 850 F.3d 1343, 1348-49 (Fed. Cir. 2017)
(holding that claims “directed to systems and methods that use 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” were patent eligible) (emphasis added). Here, both the Specification
and the cited art establish that use of optical fiber for shape sensing is a
conventional input device. Spec. 11,4 (explaining how shape sensing with
fiber optics makes use of characteristic Rayleigh backscatter patterns and
explaining that known shape sensing systems exhibit instability); Roelle H
45 46 (describing use of Rayleigh scatter in an optical fiber to measure
strain and obtain shape data). Just as in Content Extraction, use of a
conventional input device does not transform an otherwise abstract idea into
patent eligible subject matter.
Regarding the second part of the Alice inquiry, Appellant argues that
claim 1 includes additional elements/steps that amount to more than “any
natural principle itself.” Appeal Br. 8—9; see also Reply Br. 8. Appellant,
however, does not identify what element/step is more than an abstract idea.
Moreover, our reviewing Court has previously held that use of off-the-shelf
conventional “computers, networks, and displays does not transform the
claimed subject matter into patent-eligible applications.” Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). Moreover,
“[mjerely requiring the selection and manipulation of information ... by
itself does not transform the otherwise-abstract processes of information
collection and analysis.” Id.; see also Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (holding that claims
directed to retaining information in navigation of online forms is not patent
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eligible despite reciting use of conventional browser Back and Forward
navigation); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096
(Fed. Cir. 2016) (“the use of generic computer elements like a
microprocessor or user interface do not alone transform an otherwise
abstract idea into patent-eligible subject matter”). Also, as explained below,
we do not agree with Appellant’s argument (Appeal Br. 9) that the cited
references do not suggest each recitation of claim 1. We thus agree with the
Examiner that claim 1, as a whole, is directed to instructions to implement
an abstract idea on a computer processor. Ans. 4.
In reply, Appellant further argues that claim 1 includes “significantly
more than any natural principle itself’ because the claim falls within the
scope of the holding articulated by McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299 (Fed. Cir. 2016). Reply Br. 6—8. Our reviewing court’s
decision in McRO held claims patent eligible under Section 101 where the
claims “focused on a specific asserted improvement in computer animation”
of facial expressions made during speech and where “incorporation of the
claimed rules, not the use of the computer . . . ‘improved [the] existing
technological process’ by allowing the automation of further tasks.” McRO,
837 F.3d at 1314. Our reviewing court emphasized that the automation went
beyond, for example, merely “organizing [existing] information into a new
form.” Id. at 1315 (internal quotes and citation omitted).
Thus, the McRO decision recognized that the claims at issue there
provided technological improvement to the animation computer processing
and were thus patent eligible. Id. at 1313. In this sense, McRO is akin to
DDR, Enfish, and similar decisions which held that claims were eligible
where the claimed invention provided a technological improvement to the
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same computer the claims at issue were directed to. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (holding that
claims reciting computer processor for serving “composite web page” were
patent eligible because “the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks”); Enfish, 822 F.3d at 1338 (Fed. Cir. 2016)
(holding that claims directed to self-referential table for computer database
were patent eligible because claims were directed to an improvement in the
functioning of a computer); Visual Memory LLC v. NVIDIA Corp., 867 F.3d
1253, 1259 (Fed. Cir. 2017) (holding that claims directed to “an improved
computer memory system” having many benefits were patent eligible).
In contrast, the claims at issue here collect data, manipulate that data,
and then render an output. Appellant does not persuasively argue that the
claim improves the computer/processor that the claimed method acts
through. Rather, the computer is ultimately being used for a standard
computing function: computation. The claims at issue here are thus most
akin to precedents involving claims directed at gathering data, computing,
and displaying results, and the claims at issue in those precedents were not
patent eligible. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (holding claims directed to “a process of
gathering and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive technology for
performing those functions” were not patent eligible); Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017)
(holding that claims were not patent eligible because they were “directed to
the abstract idea of collecting, displaying, and manipulating data”).
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Because, for the reasons explained above, Appellant identifies no
harmful error in the Examiner’s Section 101 determination, we sustain this
rejection of claims 1—14.
Rejection 2, Section 103. The Examiner rejects claims 1—14 and 22 as
unpatentable as obvious over Roelle in view of Prisco. Appellant argues all
claims as a group. Appeal Br. 7—9. We therefore limit our discussion to
claim 1. Claims 2—14 and 22 stand or fall with that claim. 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
The Examiner finds that Roelle teaches a method for shape sensing
with optical fiber including collecting shape data from an optical fiber shape
sensing device, performing a test on the shape data to determine data
portions that exceed an acceptable threshold based on geometrical
expectations of the data, and rejecting shape data corresponding to positions
that exceed the acceptable threshold. Final Act. 7 (providing citations to
Roelle). The Examiner finds that Roelle teaches controlling advancement of
a medical device based on a differential between real shape and reference
shape “but does not explicitly teach rendering acceptable shape data to
provide a stable shape sensing data set.” Id. The Examiner finds, however,
that Prisco teaches that calibration relationship is stored so that shape
information can be used to accurately indicate the shape or pose of the
kinematic chain (whose shape is being determined with optical fiber). Id.
(citing Prisco 17). The Examiner concludes that:
it would have been obvious to one of ordinary skill in the art at
the time of the invention was made to apply the teaching of
Prisco to the system of Roelle such that rendering acceptable
shape data to provide a stable shape sensing data set is
accomplished for the advantage of accuracy.
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Id.
Appellant argues that Roelle fails to teach or suggest performing a test
on shape data to determine data positions that exceed an acceptable
threshold based on geometrical expectations of the shape data as recited in
claim 1. Appeal Br. 11. Appellant concedes that Roelle teaches comparing
real shape data to a reference. Id. at 13. Appellant argues, however, that
Roelle does not teach or suggest that its “thresholds concerning a differential
between the real shape and a reference shape” may be “based on geometrical
expectations of the shape data.” Id. at 12; see also Reply Br. 9—12.
Appellant also argues that Roelle’s comparisons are not a “test on the shape
data” as a person with ordinary skill in the art would understand that
recitation of claim 1. Appeal Br. 13.
Claim 1 ’s recitation of “performing a test on the shape data to
determine data positions that exceed an acceptable threshold based on
geometrical expectations of the shape data” is explained in page 19, lines 1—
23 of the Specification. Appeal Br. 7 (identifying portion of Specification
corresponding to this recitation). The Specification refers to this language
and then states “[s]uch tests may include hypothesis tests which compare
measured data to training data or models.” Spec. 19. The Specification
further explains that the thresholds may be based on “a shape sensing model
(e.g., a statistical model, a physiological model, etc.)” and explains that
thresholds may be “determined based upon previous collected shape data.”
Id. The Specification goes on to explain, for example, that “another test on
the shape data may include performing an adaptive search of nodal twist or
roll. . . .” Id. at 19-20 (emphasis added). Notably, the description of the
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other tests is in terms of what the tests may include rather than what the tests
must include.
A preponderance of the evidence supports the Examiner’s position
that Roelle teaches or suggests the same kind of threshold test recited by the
claim and as described by the Specification. In particular, Roelle teaches or
suggests that its medical device may be controlled if the differential between
the real shape (i.e., the measured shape data) and a reference shape
(geometrical expectations of the shape data) is acceptable. Ans. 6; Roelle
137. Roelle also teaches or suggests that a comparison can be made
between the measured shape and tip position of the device (i.e., the shape
data as recited in claim 1) and predicted values which may be based on
models or previous shape measurement (i.e., geometric expectations of the
shape data). Ans. 6—7, Roelle Tflf 325, 330. Appellant’s argument does not
persuasively explain how this is different from the testing recited by claim 1
when claim 1 is interpreted in view of the Specification at pages 19-20.
Appellant also argues that neither Roelle nor Prisco teaches “rejecting
the shape data corresponding to the data positions that exceed the acceptable
threshold” as recited in claim 1. Appeal Br. 14—15. The preponderance of
the evidence, however, supports the Examiner’s position that Roelle teaches
advancing its device if the differential between measured shape and
reference shape is acceptable (i.e., having a differential that is acceptable
compared to a threshold value). Ans. 8. In particular, a person of skill in the
art would read paragraphs 37, 325, and 330 of Roelle together to understand
that when the measured shape is poor compared to the reference, the data
should not be used (i.e., the instrument should not be advanced based on
faulty data). Furthermore, the Examiner correctly notes that the
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Specification broadly defines “rejecting the shape data” as including
correction, deletion, or replacement. Spec. 20; see also Spec. 13 (explaining
that outlier data “can be deleted”). Appellant fails to provide a persuasive
argument as to why determining that the instrument should not be moved
further based on faulty data is different from rejecting the shape data as
recited in claim 1.
Appellant further argues that Roelle does not teach or suggest
rejecting shape data so that a stable shape sensing data set may be provided.
Appeal Br. 14. The Examiner acknowledges that Roelle does not explicitly
teach rendering acceptable shape data to provide a stable shape sensing data
set and, accordingly, cites Prisco as meeting this recitation. Final Act. 7.
Appellant does not dispute that Prisco teaches such rendering and does not
dispute the Examiner’s combining of the teachings of Roelle and Prisco.
Appeal Br. 15. Appellant’s argument on this point is therefore unpersuasive
because it argues that both Roelle and Prisco do not teach certain recitations
of claim 1 without persuasively arguing against the combination asserted by
the Examiner. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”).
Because Appellant fails to identify harmful error, we sustain the
Examiner’s rejection of claims 1—14 and 22 as unpatentable over Roelle in
view of Prisco.
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DECISION
For the above reasons, we affirm the Examiner’s rejection (1) of
claims 1—14 under 35 U.S.C. § 101 and (2) of claims 1—14 and 22 under 35
U.S.C. § 103(a) as unpatentable over Roelle in view of Prisco.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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