Ex Parte Sugiura

Patent Trial and Appeal Board

Sep 26, 2017

12145089 (P.T.A.B. Sep. 26, 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.
12/145,089 06/24/2008 Satoshi SUGIURA LSN-2382-86 2716
23117 7590 09/28/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
NEGARESTAN, FARSHAD
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATOSHI SUGIURA1
Appeal 2016-007438
Application 12/145,089
Technology Center 3700
Before RICHARD J. SMITH, TIMOTHY G. MAJORS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
image processing/diagnostic apparatus and related methods. The Examiner
rejected the claims for ineligible subject matter and obviousness. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies the Real Party in Interest as KABUSHIKI KAISHA
TOSHIBA and TOSHIBA MEDICAL SYSTEMS CORPORATION. (App.
Br. 3.)
Appeal 2016-007438
Application 12/145,089
STATEMENT OF THE CASE
Appellant’s invention relates “to an image processing apparatus, an
image diagnostic apparatus and an image processing method which display a
myocardial perfusion image showing a myocardial blood flow perfusion.”
(Spec. 1.)
As background, the Specification describes prior art techniques for the
diagnosis of heart disease. (Id.) Such techniques involve, inter alia, using
magnetic resonance imaging (“MRI”) to generate multi-slice tomographic
images of the heart. (Id. at 1—2.) As explained further, such images may be
“divided into multiple radial regions” and
converted into development images in which the regions thus
divided are concentrically arranged from the cardiac base part
toward the apex cordis part [of the heart], following which the
development images thus converted are displayed.
(Id. at 2.) “Such a development image is called a bull’s-eye,” and the inner
concentric ring of the image corresponds to the heart’s apex cordis part and
the outer concentric ring of the image corresponds to the cardiac base part.
(Id. at 3; see also id. Fig. 3.)
The Specification discloses that, in a heart that “has developed
subendocardial ischemia, blood flow is not supplied to the inner side of the
myocardium, and the medical condition progresses from the inner side
toward the outer side of the myocardium.” (Id. at 4.) According to the
Specification, “the conventional development image display lacks
information with respect to the myocardium along the thickness direction,
leading to a problem in that the subendocardial ischemia cannot be
evaluated.” (Id. at 5) Thus, the Specification describes the invention as
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Application 12/145,089
being an improved image processing apparatus and method that “can display
information concerning a myocardial blood flow perfusion in a myocardial
thickness direction.” (Id.; see also id. at Figs. 7—9.)
Claims 1—13 and 16—25 are on appeal. Claim 1 is illustrative:
1. An image processing apparatus comprising:
an image data acquisition unit configured to acquire slice image
data for different cross-sectional wall portions of a heart of an
object;
a development generating unit configured
(a) to obtain blood flow perfusion data with respect to
plural points within each of plural myocardial wall regions
that are divided both radially across a myocardial
thickness direction and circumferentially along the
myocardial wall cross-section within each said cross-
sectional wall portion based on the slice image data, and
(b) based on the blood flow perfusion data, to generate
development display data according to a predetermined
bulls-eye development format wherein each cross-
sectional myocardial wall region is divided both radially
across a myocardial wall thickness direction and
circumferentially along the myocardial wall cross-section
within each cross-sectional wall portion to present at least
two predetermined concentric circumferentially extending
sets of radially-divided myocardial wall regions, and
wherein the whole interior of each divided wall region is
displayed with its own assigned visually perceptible
display form based on the obtained blood flow perfusion
data for said plural points therewithin such that all points
within a divided wall region have the same visually
perceived value; and
a display unit configured to display the development display
data.
(App. Br. 28—29 (Claims App.).)
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Appeal 2016-007438
Application 12/145,089
The claims stand rejected as follows:
I. Claims 1—13 and 16—25 under 35 U.S.C. § 101.
II. Claims 1—13 and 16—25 under 35 U.S.C. § 103(a) over Suresh2
and Hancock.3
I - INELIGIBLE SUBJECT MATTER
In analyzing patent eligibility under 35 U.S.C. § 101, the Supreme
Court has set forth a “framework for distinguishing patents that claim
[patent-ineligible] 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 Inti, 134 S. Ct. 2347, 2355 (2014). According
to that framework, first “we determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. “If so, we then ask,
‘[w]hat else is there in the claims before us?’” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012)). To
answer this second question,
we 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. [The Supreme Court has] described step two of this
analysis as a 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. (internal citations and quotation marks omitted).
2 Suresh et al., US 2007/0014452 Al, published Jan. 18, 2007.
3 Hancock, US 2004/0139049 Al, published July 15, 2004.
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Application 12/145,089
The Examiner rejected claims 1—13 and 16—25 for claiming patent
ineligible subject matter. (Ans. 8—9.) The Examiner finds the claims “are
directed to an abstract idea.” {Id. at 8.) According to the Examiner, “[t]he
claims are drawn to the processing of image data to generate development
display data which merely involves [a] mathematical relationship or
formula.” {Id. at 9.) As to the claim elements individually and in
combination, the Examiner finds the elements recite (i) mere instructions to
implement the idea on a computer and (ii) generic computer structures that
perform routine functions. {Id.) The Examiner thus rejects the claims
“under 35 U.S.C. 101 as being directed to a judicial exception without
significantly more.” {Id.)
The Examiner did not address the claims separately, but rejected the
claims as a group based on the reasoning described above. Our analysis
focuses on claim 1 as representative of the other rejected claims.
Under step one of the Alice!Mayo framework, we ask whether claim 1
is directed to a patent ineligible concept, such as an abstract idea. Because
all inventions, at some level, embody or apply laws of nature, abstract ideas,
etc., we must “ensure at step one that we articulate what the claims are
directed to with enough specificity to ensure the step one inquiry is
meaningful.” Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1347 (Fed. Cir.
2017); see also Alice, 134 S.Ct. at 2354 (“[W]e tread carefully in construing
this exclusionary principle lest it swallow all of patent law.”). Moreover,
even at step one, it is appropriate to consider whether the claims are directed
to an improvement to a particular technology. Cf. Enfish, LLC. v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (holding it is “relevant to ask
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Application 12/145,089
whether the claims are directed to an improvement to computer functionality
versus being directed to an abstract idea even at the first step of the Alice
analysis”).
We are not persuaded that claim 1 is patent ineligible under § 101.
Indeed, we disagree that claim 1 is directed merely to an abstract idea. As
Appellant points out, “[t]he Examiner has not identified a single
‘mathematical relationship or formula’ recited in any claim — nor has the
Examiner even articulated any mathematical relationship or formula that is
allegedly necessary to generate the claimed bulls-eye development format
display data.” (Reply Br. 13.) But, more fundamentally, the Examiner’s
characterization of claim 1 is overgeneralized and does not properly account
for what the claim recites. Claim 1 is directed to an image processing
apparatus that, by virtue of its structure and configuration, provides more
precise images and perfusion data (in a unique predetermined bulls-eye
development format) for distinct myocardial tissues in the heart. And, as the
Specification explains, the claimed apparatus and the images it generates
allow more effective diagnosis of subendocardial ischemia, thus providing a
specific improvement to known imaging devices and methods. (See, e.g.,
Spec. 4—5.)
Even assuming a mathematical relationship is involved when the
improved images and data are generated, the “math” is incidental to the
claimed imaging apparatus and its specially configured units. (Reply Br.
14—15.) In this respect, claim 1 is more like the patent-eligible claims in
Thales that recited a unique configuration of inertial sensors that used a
mathematical equation to calculate an object’s location on a moving
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platform. Thales, 850 F.3d at 1345; see also Diamond v. Diehr, 450 U.S.
175, 188 (1981) (holding that a claim drawn to an improved rubber-curing
process that used a mathematical equation was patent eligible under § 101).
Moreover, as Appellant notes, claim 1 is analogous to a hypothetical claim
drawn to a “robotic arm assembly having a control system that operates
using certain mathematical relationships,” which the Patent Office’s
guidance suggests would be subject to a streamlined analysis and deemed
patent eligible.4 (Reply Br. 13—14.) In short, even if claim 1 relies on a
mathematical relationship (and some generic computer elements such as a
processor to execute calculations), that alone does not render the claim
patent ineligible. Thales, 850 F.3d at 1349 (“That a mathematical equation
is required to complete the claimed method and system does not doom the
claims to abstraction.”).
For the reasons above, the answer to the first question of the
Alice!Mayo framework is “no” — we are unpersuaded claim 1 is directed to
an abstract idea. Because the answer at step one is “no,” the inquiry is over
and moving to step two is unnecessary. Thales, 850 F.3d at 1349 (“Because
we find the claims are not directed to an abstract idea, we need not proceed
to step two.”). For similar reasons, we are unpersuaded the other rejected
claims are drawn to patent-ineligible subject matter. We thus reverse the
Examiner’s rejections of claims 1—13 and 16—25 under 35 U.S.C. § 101.
4 See Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg.
74618, 74625 (Dec. 16, 2014).
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II-OBVIOUSNESS
The Examiner rejected claims 1—13 and 16—25 based on the
combination of Suresh and Hancock. (Final Act. 3—8.) Because the same
issues are dispositive for the rejection of all the claims, we address the
claims together and treat claim 1 as representative.
Regarding claim 1, the Examiner finds that Suresh discloses an image
processing apparatus comprising an image data acquisition unit,
development generating unit, and display unit. {Id. at 3—4.) Although the
Examiner finds that Suresh discloses these units are mostly configured in the
same way as claimed, the Examiner finds “Suresh et al. do not disclose that
each cross-sectional myocardial wall region is divided radially across a
myocardial wall thickness direction.” {Id. at 4.)5 The Examiner,
nevertheless, asserts “it is old and well-known that by further dividing a
5 Regarding the Examiner’s statement (Final Act. 4) that “as best understood
the concentric circles in [Suresh] Fig. 55 represent divisions in radial
direction and each wall cross-section area is also circumferentially divided
into several pie sections,” we are unpersuaded this shows division “radially
across a myocardial thickness direction” as claimed. {See also Ans. 10
(“Suresh circles that separate different myocardial regions from each other
. . . are radially dividing myocardial wall regions.”).) As Appellant points
out, the Examiner contradicts this very assertion in later finding Suresh does
not disclose the radial divisions that are claimed. (App. Br. 17; Final Act.
4.) This contradiction aside, we are unpersuaded that the concentric
arrangement of wall regions (e.g., of an apex cordis part and a cardiac base
part) in a bull’s-eye format meets the claim requirement for “each cross-
sectional myocardial region is divided radially across a myocardial thickness
direction,” such as illustrated in the “m” divisions shown in Fig. 7 of the
Specification. Rather, we agree with Appellant that Suresh discloses a
conventional bull’s-eye plot that does not divide the particular cross-
sectional wall regions across the wall thickness direction. (App. Br. 17—18.)
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region into sub-regions the resolution of the points within the region will be
increased.” (Id.) In this regard, the Examiner turns to Hancock as
“teach[ing] that the resolution of a displayed area (e.g. a map) will be
increased by dividing each section of the area . . . into smaller sub-sections.”
(Id.) The Examiner thus concludes “it would have been obvious ... to
further divide each cross-sectional myocardial wall region in the system of
Suresh et al. in a myocardial thickness direction in light of the teachings of
Hancock et al. to achieve identification of the location of a section of the
cross-sectional myocardial wall region more accurately.” (Id. at 5.)
Appellant argues that Hancock relates to a “sub-divided geographic
location grid for businesses . . . [that] has nothing whatever to do with MRI,”
and, thus, is non-analogous art. (App. Br. 18, 22—23.) Appellant argues,
even if combined, Suresh and Hancock fail to teach all the elements of the
claims. (Id. at 18—19.) And, Appellant contends, the Examiner’s basis for
modifying Suresh lacks a convincing line of reasoning in support, and is
“merely a conclusory statement” rooted in hindsight. (Id. at 20, 23—24.)
On this record, we are not persuaded that the Examiner established by
a preponderance of the evidence that claim 1 would have been obvious.
First, the Examiner failed to address or persuasively rebut Appellant’s
argument that Hancock is non-analogous art. (Ans. 13—14.) Hancock is,
quite clearly, in a different field of endeavor from Appellant’s invention and
Suresh. (See, e.g., Hancock Abstract.) And the Examiner has not made
findings or explained why Hancock “is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Clay, 966 F.2d 656,
658—59 (Fed. Cir. 1992); see also In re Klein, 647 F.3d 1343, 1348 (Fed.
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Application 12/145,089
Cir. 2011) (holding a reference is reasonably pertinent and analogous if it
“would have commended itself to an inventor’s attention in considering his
problem”). Second, the Examiner provided an insufficient evidentiary basis
and reason to modify Suresh to generate a bull’s-eye development format of
myocardial wall regions divided in the particular manner claimed. For
example, the Examiner cites no recognized shortcoming with Suresh’s
conventional bull’s-eye display format, or known disease/condition that
would have predictably motivated the skilled person to change that format.
On this record, the only apparent reasons for modifying the conventional
bull’s-eye format as a means to evaluate and diagnose subendocardial
ischemia comes from Appellant’s Specification. A general notion of
dividing regions to improve resolution or to identify a location more
accurately, as asserted by the Examiner, is too conclusory to support the
rejection here.
For these reasons, we reverse the rejection of claim 1. We reverse the
rejection of claims 2—13 and 16—25 for similar reasons.
SUMMARY
We reverse the rejection of claims 1—13 and 16—25 for ineligible
subject matter and obviousness.
REVERSED
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