Ex Parte Weese et al

Patent Trial and Appeal Board

Mar 29, 2018

12597361 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/597,361 01/13/2010 Juergen Weese
38107 7590 04/02/2018
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.
2007P00576WOUS 9571
EXAMINER
PATEL,NEHA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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 JUERGEN WEESE, ALEXANDRA GROTH, and
JOERG BREDNO
Appeal2017-001288
Application 12/597,361
Technology Center 3600
Before JEAN R. HOMERE, JEREMY J. CURCURI, and
MICHAEL M. BARRY, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, 4--6, 8-10, 20-25, and 29-33. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b ).
Claims 1, 2, 4--6, 8-10, 20-25, and 29-33 are rejected under 35
U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 2-5.
We affirm.
1 Appellants identify Koninklijke Philips N.V. as the real party in interest
(App. Br. 2).
Appeal2017-001288
Application 12/597,361
STATEMENT OF THE CASE
Appellants' invention relates to "computing a risk, the risk relating to
injuring an anatomical structure by a medical device during a medical
procedure." Spec. 1 :3--4. Claim 1 is illustrative and reproduced below:
1. A system for computing a risk, the risk relating to injuring an
anatomical structure of a patient, by a medical device comprising a needle
object, during a medical procedure, the system comprising:
an image acquisition unit which acquires image data of the
anatomical structure;
a memory, including computer readable instructions; and
a computer processor, wherein the computer processor executes the
computer readable instructions, which causes the computer processor to:
obtain, during the medical procedure, a position of the anatomical structure
based on the acquired image data, wherein the anatomical structure
comprises at least one blood vessel; obtain, during the medical procedure, a
current actual position of the medical device used in the medical procedure
with respect to the anatomical structure; obtain risk data associated with the
anatomical structure; and compute the risk relating to injuring the
anatomical structure for the current actual position of the medical device,
based on the current actual position of the medical device, the position of
the anatomical structure, and the risk data, wherein the risk is defined as a
ratio calculated by summing a first distance and a second distance and
dividing the sum by a third distance, wherein the first distance is defined
from an axis of the needle object to a nearest point on the at least one blood
vessel, wherein the second distance is defined as a predefined distance, and
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wherein the third distance is defined as a distance from the end of the
needle object to a second nearest point on the blood vessel.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Contentions
The Examiner finds claims 1, 2, 4---6, 8-10, 20-25, 29-33 are
directed to a judicial exception without significantly more. See Final Act.
2-5; see also Ans. 2--4.
Appellants present the following principal arguments:
1.
The claims include eligible subject matter. "In Diehr,
450 U. S. 175, by contrast, we held that a computer-
implemented process for curing rubber was patent eligible, but
not because it involved a computer. The claim employed a
"well-known" mathematical equation, but it used that equation
in a process designed to solve a technological problem in
"conventional industry practice." Id., at 177, 178. Alice Corp v.
CLS Bank. The risk calculation involving distance from the
needle object to the blood vessel solves a technological
problem of injury to blood vessels in the conventional practice
of surgery, such as biopsies. Furthermore, as analogous with
the rubber mold, there is a medical device, such as a needle
object, and the images obtained from the recited image
acquisition apparatus. Thus, the claims are eligible subject
matter. Accordingly, the 101 rejections should be removed.
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App. Br. 5.
11.
The claims recite an image acqms1t10n unit, which acquires
image data of the anatomical structure which is not something
a person can do without an imaging acquisition using
modalities as now recited in claim 8, and noted in the Office
Action. Furthermore, as emphasized in claim 30 the medical
device is not a human activity and thus, the claims should be
eligible subject matter.
App. Br. 5 (citing Spec. claims 8, 30).
111.
"[T]he claims do include more than a computing device
analogous to the computed timing and the rubber mold in Diehr."
App. Br. 6 (citing Spec. claim 32).
IV.
What appellants have done is to discover an application of an
algorithm to process steps, which are themselves, part of an
overall process, which is statutory. In accordance with In re
Abele, claim 1 is not a mere procedure for solving a given
mathematical problem; the algorithm is but a part of the overall
claimed process. The claimed invention is an improved patent
eligible process, the improvement at least residing in the
application of an image-processing algorithm within the
context of a process, which encompasses significantly more
than the algorithm alone.
Reply Br. 4 (citing Spec. claims 1, 8).
Our Review
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural
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phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 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 deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72 (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,
566 U.S. at 72 (internal 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
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 claims "individually and 'as an ordered combination'"
to determine whether there are additional elements that "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78). 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. (brackets in
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original) (quoting Mayo, 566 U.S. at 72-73). "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.
at 2357 (brackets in original) (quoting Mayo, 566 U.S. at 77-78). The
prohibition against patenting an abstract idea "cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment or adding 'insignificant post[-]solution activity."' Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010) (internal citation omitted). The Court
in Alice noted that "' [ s ]imply appending conventional steps, specified at a
high level of generality,' was not 'enough' [in Mayo] to supply ... [the]
'inventive concept."' Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at
82-83, 77-78, 72-73).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 1 is a "system for computing a risk" and includes a computer
processor executing instructions to perform multiple method steps. The
method steps could be performed in the human mind or by a human using
pen and paper. In particular, the steps could be performed by a person
reviewing data to obtain a position of the anatomical structure, to obtain a
position of the medical device, and to obtain risk data. The remaining step
of computing the risk could also be performed mentally or on paper based
on the data.
Contrary to Appellants' arguments, claim 1 is not akin to the claim at
issue in Diehr, which was directed to a non-abstract "process for molding
raw, uncured synthetic rubber into cured precision products." Diamond v.
Diehr, 450 U.S. 175, 177 (1981). In Diehr, the Supreme Court found that
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limitations directed to a formula in an otherwise patent-eligible process did
not render it patent ineligible. Id. at 178. Claim 1 's limitations directed to a
mathematical formula or algorithm do not change the result here as well,
but the distinction is that claim 1 otherwise is directed to an abstract idea of
a human activity. Determining risk from using a medical device with a
needle during a medical procedure is a routine activity for doctors.
Because all the method steps of claim 1 required of the computer
processor can either be performed by human thought alone, or by a human
using pen and paper, claim 1 is directed to a patent-ineligible abstract idea.
See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73
(Fed. Cir. 2011) ("[U]npatentable mental processes" include "steps [that]
can be performed in the human mind, or by a human using a pen and
paper"). Independent claim 10 recites limitations similar to those discussed
with respect to claim 1. Thus, claim 10 is also directed to a patent-ineligible
abstract idea.
Step two: Is there something else in the claims that ensures they are
directed to significantly more than a patent-ineligible concept?
Because claims 1 and 10 are directed to an abstract idea, the question
to be settled next, according to Alice, is whether claims 1 and 10 recite an
element, or combination of elements, that is enough to ensure that the claim
is directed to significantly more than the abstract idea.
Claim 1 is a "system for computing a risk" and includes "an image
acquisition unit," "a memory," and "a computer processor." Claim 10 is a
corresponding method claim that recites multiple steps "implemented by a
computer processor."
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These claimed hardware and software components are generic, purely
conventional elements. Thus, the claims do no more than require generic
computer elements to perform generic computer functions, rather than
improve computer capabilities.
Appending various combinations of a conventional "computer
processor," "memory," and "image acquisition unit" is not enough to
transform the idea into a patent-eligible invention. See Alice, 134 S. Ct. at
2358 ("[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention").
Regarding Appellants' argument (i), this argument does not show any
error in the Examiner's findings and conclusions. Appellants assert that the
claimed risk calculation solves a technological problem; however, the claim
language does not support this assertion. Claim 1 recites "compute the risk
relating to ... wherein the risk is defined as ... " As discussed above, this risk
may be computed mentally or on paper. Further, the claim does not recite
improving computer or machine functionality because the computed risk is
not used to improve the computer or machine; rather, the computer is
operating as a generic computer performing steps that would otherwise be
performed with pen and paper. Again, because all the method steps of
claims 1 and 10 can either be performed by human thought alone, or by a
human using pen and paper, claims 1 and 10 are directed to a patent-
ineligible abstract idea. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011). Further, information collection
and analysis, including when limited to particular content, is within the
realm of abstract ideas. See, e.g., Elec. Power Grp. LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (explaining that a claim to "gathering and
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Application 12/597,361
analyzing information of a specified content, then displaying the results,"
absent "any particular assertedly inventive technology for performing those
functions," is directed to an abstract idea).
Regarding Appellants' argument (ii), this argument does not show
any error in the Examiner's findings and conclusions because the claimed
hardware and software components are generic, purely conventional
elements. The computed risk is not used to improve the computer or
machine in claims 1, 8 (reciting various types of image acquisition units,
but not reciting using the computed risk to improve the image acquisition
unit), 10, and 30 (reciting various types of medical devices, but not reciting
using the computed risk to improve the medical device).
Regarding Appellants' argument (iii), this argument does not show
any error in the Examiner's findings and conclusions because to the extent
the practice of surgery may be improved, claims 1 and 10 do not recite
improving computer or machine functionality because the computed risk is
not used to improve the computer or machine. Regarding claim 32, claim
32 recites "in response to the computed risk, moving the medical device
which changes at least one of the first distance or the third distance."
Although this claim does recite an action in response to the computed risk,
there is still no recitation of using the computed risk to improve the
computer or machine. Thus, we agree with the Examiner that claim 32's
requirement for moving the medical device that has a needle does not recite
"significantly more" than the abstract idea to which claim 1 is directed.
Regarding Appellant's argument (iv), this argument also does not
show any error in the Examiner's findings and conclusions. First, in
determining subject matter eligibility, we apply the two-part analysis from
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Alice and Mayo. Based on this two-part analysis, we have determined that
the claims are directed to an abstract idea, without reciting significantly
more. In short, contrary to Appellants' assertions, claims 1 and 10 do not
recite the risk computation as part of an overall eligible system or process.
Rather, there is no recitation of using the computed risk to improve the
computer or machine. For example, the image acquisition unit, the memory,
and the computer processor all function as generic hardware.
Accordingly, we sustain the rejection of independent claims 1 and 10
under 35 U.S.C. § 101. Claims 2, 4---6, 8, 9, 20-25, 29--33 variously depend
from claims 1 and 10. Appellants have not presented any additional
substantive arguments with respect to these claims, other than those
specifically addressed above. Therefore, we sustain the rejection of claims
2, 4---6, 8, 9, 20-25, 29-33 under 35 U.S.C. § 101, forthe same reasons
discussed with respect to independent claims 1 and 10.
ORDER
The Examiner's decision rejecting claims 1, 2, 4---6, 8-10, 20-25, 29--
3 3 is affirmed.
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).
AFFIRMED
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