Ex Parte Zhao

Patent Trial and Appeal Board

Nov 30, 2018

11719793 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/719,793 05/21/2007 LuyinZhao
24737 7590 12/04/2018
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.
2004P02680WOUS 1498
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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 LUYIN ZHAO
Appeal2017-009496
Application 11/719,793
Technology Center 3700
Before: CHARLES N. GREENHUT, JILL D. HILL, and LEE L. STEPINA,
Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 4--
6, 9, 13-17, 19, 20 and 24--29. We have jurisdiction under 35 U.S.C. § 6(b ).
A prior appeal, 2013-002046, was decided October 21, 2015.
We affirm.
Appeal2017-009496
Application 11/719,793
CLAIMED SUBJECT MATTER
The claims are directed to an in-situ data collection architecture for
computer-aided diagnosis. Claim 4, reproduced below, is illustrative of the
claimed subject matter:
A medical data method comprising:
(A) at each of a plurality of client sites:
(a) capturing an image of a lesion of a medical subject;
(b) deriving, from the captured image, at least one feature of the
lesion;
( c) from a confirmed diagnosis of the lesion, generating a ground
truth for the lesion;
( d) transmitting a message containing the ground truth and at
least one of the image and the at least one derived feature to a
server disposed externally to the client sites, the message
excluding any information identifying the medical subject;
and
( e) repeating steps (a)-( d) a plurality of times;
(B) at the server:
(a) receiving the messages from the plural client sites;
(b) training a computer-aided diagnostic decision support system
with the received messages;
(C) at a requesting one of the client sites:
(a) generating a diagnostic image of a lesion of a patient to be
diagnosed;
(b) deriving at least one feature of the lesion to be diagnosed;
( c) sending a diagnosis request message including at least one of
the diagnostic image and the features to be diagnosed;
(D) at the server:
(a) using the diagnostic decision support system to generate a
diagnosis of the lesion;
(b) sending the generated diagnosis to the requesting client site;
and
(E) at the requesting client site:
(a) presenting the diagnosis generated by the diagnostic decision
support system.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Coli
Giger
Kasai
Huizenga
Daw
us 6,018,713
US 2001/0043729 Al
US 2003/0026470 Al
US 2005/0043614 Al
US 2005/0096530 Al
REJECTIONS
Jan.25,2000
Nov. 22, 2001
Feb. 6,2003
Feb.24,2005
May 5, 2005
Claims 4--6, 9, 13-17, 19, 20 and 24--29 are rejected under 35 U. S. C.
§ 101 because the claimed invention is directed to an abstract idea.
Claims 4 and 24--26 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kasai, Coli, and Huizenga.
Claims 5, 6, 19, 20 and 29 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Kasai, Coli, Huizenga, and Daw.
Claims 9, 13-17, 27, and 28 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Kasai, Coli, Huizenga, and Giger.
OPINION
§ 103(a)
Initially we note that the rule requiring all authorities and arguments
to be included in the briefs (37 C.F.R. § 4I.37(c)(l)(iv)) in an appeal does
not permit incorporation by reference of arguments made previously in the
prosecution. See, e.g., Appeal Br. 8. Arguments not included in the briefs
before us are deemed waived. We also note that our decision in the prior
appeal was narrowly drawn, holding only that the Examiner applied an
overly broad claim construction which necessitated reversal of the
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Examiner's rejections based thereon. The weight of authority is that
anything along the lines of "res judicata" is generally inapplicable against a
PTO Examiner in an ex parte proceeding. See, e.g., In re Oelrich, 666 F. 2d
578, 580 n. 2 (CCP A 1981 ). Arguments in this regard, particularly those
relating to issues not expressly addressed in the previous decision, are of
little, if any, value. See, e.g., Appeal Br. 8.
The main issue repeatedly raised by Appellant concerning the prior-
art rejections of the three independent claims, claims 1, 13 and 19, is:
Coli is merely building a database, possibly a distributed
database, which may or may not have patient identifiers. By
contrast, claim 4 calls for the client site at which the data was
acquired to transmit a message excluding any information
identifying the medical subject. In this manner, the client site
which generated the image removes the subject identification
prior to releasing the message or information.
Appeal Br. 8-9, 10-11, 12-13.
The cited portion of Coli (Final Act. 5 ( citing Coli col. 7, 1. 49-col. 8,
1. 12)) clearly discloses sending data, i.e., a message, and indicates it may do
so both with or without patient identification:
At least one of the server computers is programmed to respond
to activation of the test data request by causing the data to be sent
to the client computer. This feature permits the system to provide
aggregated data and demographic information (with or without
patient identification)
This act of deciding not to include patient identifying information is
reasonably regarded as "excluding" it from the message and remedies the
shortcomings discussed in the prior appeal. The fact that aggregated data in
a database is the source of the data in Coli's message (Appeal Br. 8, 12) does
not undermine the Examiner's rejection because obviousness is not a
question of bodily incorporation. See, e.g., In re Mouttet, 686 F. 3d 1322,
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1332 (Fed. Cir. 2012). What is important is that Coli demonstrates that the
technique of excluding patient identifying information from messages was
known in the art. We are not apprised of any reason why one skilled in the
art would have understood Coli' s technique as limited for use only to
retrieve, as opposed to collect, aggregated data. When Coli' s excluding
technique is incorporated into the messages involved in the diagnostic
system of Kasai, it is not disputed that such a modification would have
resulted in subject matter falling within the scope of the claims. Final Act.
5---6. "Non-obviousness cannot be shown by attacking references
individually when the rejection is predicated upon the teachings of a
combination of references." See In re Merck & Co. Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (citation omitted).
Appellant also argues, "Kasai discloses a computer-aided diagnosis
center which receives images to be diagnosed, but which does not disclose
any of the steps of Sections A and B of claim 4." Appeal Br. 9; Reply. Br. 3.
Appellant's arguments amount to a naked assertion without addressing the
specific fact findings made by the Examiner pertaining to these limitations.
See Final Act. 5. Arguments must address the Examiner's action. 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv )("The arguments shall explain why the examiner erred as to
each ground of rejection contested by appellant"). The Board will not
advocate for Appellants by scouring the record to see if the Board can
identify some flaw in the Examiner's findings of fact, articulated reasoning,
or legal conclusions. See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) ( citations omitted).
With regard to independent claims 13 and 19 Appellant presents the
additional argument that the Examiner fails to point to a message which
includes both a ground truth and extracted feature. Appeal Br. 11-12, 13-
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14. First, this is because the Examiner relied on Kasai regarding the feature
(claims 13, 19) (Final Act. 7-8, 9), Giger regarding its extraction (claim 13)
(Final Act. 10), and Huizenga regarding the ground truth (claims 13, 19)
(Final Act 8, 10). The test for obviousness is not whether the claimed
invention is expressly suggested in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413,425 (CCPA 1981). Appellant's
argument does not address the combined teachings as applied by the
Examiner. Second, as far as the ground truth is concerned, is it not clear
why Appellant only addresses the portion of paragraph 32 of Huizenga that
relates to image colorization when the pertinent part relied on by the
Examiner is Huizenga's teaching that the training technique of using ground
truths was known in the art that: "[ t Jo develop an automated system for
classifying plaque, the model must be 'trained' on known examples ('ground
truth')."
For the foregoing reasons, Appellant's arguments concerning the
prior-art rejections do not apprise us of error therein.
§ 101
Principles of Law
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 consistently held that
this provision contains an important implicit exception: laws of nature,
natural phenomena, and abstract ideas are not patentable. See Alice Corp. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
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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, an application
of these concepts may be deserving of patent protection. See 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 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 those 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, 132
S. Ct. at 1298, 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
on the [ineligible concept] itself."' Id. (brackets in original) (quoting Mayo,
132 S. Ct. at 1294). The prohibition against patenting an abstract idea
"cannot be circumvented by attempting to limit the use of the formula to a
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particular technological environment or adding insignificant postsolution
activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks 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 an "'inventive concept."' Alice, 134
S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In Gottschalk, the Court, citing O'Reilly v. Morse (56 U.S. 62 (1853)),
cautioned that a claim "so abstract and sweeping as to cover both known and
unknown uses" is not directed to patent-eligible subject matter under 35
U.S.C. § 101. Gottschalkv. Benson, 409 US at 68. In Alice the Supreme
Court reaffirmed this principle:
We have long held that this provision contains an important
implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable. We have interpreted § 101 and
its predecessors in light of this exception for more than 150 years.
We have described the concern that drives this exclusionary
principle as one of pre-emption. Laws of nature, natural
phenomena, and abstract ideas are 'the basic tools of scientific
and technological work. [M]onopolization of those tools through
the grant of a patent might tend to impede innovation more than
it would tend to promote it, thereby thwarting the primary object
of the patent laws. We have repeatedly emphasized this concern
that patent law not inhibit further discovery by improperly tying
up the future use of these building blocks of human ingenuity.
Alice Corp. Pty. Ltd. v. CLS Bank intern., 134 S. Ct. at 2354 (quotations and
citations omitted).
Analysis
In section "D" of the Appeal Brief, Appellant asserts that "[ t ]he
Examiner Has Failed to Make a Prima Facie Showing of Patent Ineligibility
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of Any Claim Under 35 U.S.C. § 101." This section of the Appeal Brief
does not focus on any specific claim. 1 Rather, it contains some general
statements of legal principles and some exemplary claims from various court
cases coupled with the assertion that the Examiner failed to sufficiently
address the eligibility issue by not sufficiently comparing the claims at issue
with those involved in prior judicial cases, which Appellant argues is
required by the examination guidelines of May 19, 2016. 2 Appeal Br. 14--
18. To the extent this is the Appellant's position, we cannot agree with
Appellant that the Examiner's guidelines regarding§ 101 instructing
examiners to consider whether claims recited concepts similar to those held
abstract by the courts created a de facto rule that the Examiner must identify
some specific claim similar to specific claims at issue and held ineligible in
court cases under § 101 in order to support a § 101 rejection. First,
rejections at the PTO must necessarily be able to antedate cases in which the
particular legal principles involved undergo judicial review. Second, such a
requirement would run counter to the principle of not allowing eligibility
determinations to hinge on the so-called draftsman's art. See Alice, 134
S.Ct. at 2358-59 (quoting Parker v. Flook, 437 U.S. 584, 593 (1978)). We
are not apprised of error in the Examiner's characterization of the present
claims as similar to those held ineligible because they are directed to the
abstract idea of computer aided diagnosis using conventional sampling,
collecting and data comparing techniques. Final Act. 2-3. This section of
1 37 C.F.R. § 4I.37(c)(l)(iv) provides, "[u]nder each heading identifying the
ground of rejection being contested, any claim(s) argued separately or as a
subgroup shall be argued under a separate subheading that identifies the
claim( s) by number."
2 https://www.uspto.gov/sites/default/files/documents/ieg-may-
2016_enfish_memo.pdf
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the Appeal Brief does not identify with particularity any specific errors in
the Examiner's position in this regard or direct our attention to any specific
language in any specific claim removing it from the realm of the abstract.
Ans. 19.
In section "E" of the Appeal Brief Appellant reproduces steps (A)(a}-
( e) and argues "there is nothing abstract about this combination of steps [,
and t ]his combination would not preempt the use of this approach in all
fields." Appeal Br. 20. We cannot agree. Steps (A)(a}-(e) encapsulate the
general principle of medical diagnosis-to observe an aspect of an
anatomical characteristic, in this case a "feature of the lesion," and form a
diagnosis based thereon-within ordinary and conventional aspects of
computing: capturing data ("an image"), extracting a component of the data
(a "feature"), transmitting post-solution activity, the result of a medical
diagnosis ("a ground truth"), while excluding personally identifying patient
information. There are no specific structures or acts required of the data
collection or transmission. Those acts are recited only in generic and
abstract fashion and can be carried out with essentially any capturing and
transmitting means or steps. There are also no specific requirements
regarding how to derive a feature and form a diagnosis-a basic tool of
medical practice. The reach of these steps is clearly broad and preemptive.
Furthermore, Appellant's argument on this point does not address
persuasively the Examiner's determination that claim 4 is directed to an
abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (holding that "[w]hile preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility").
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Appellant quotes additional language from claim 4 and makes the
assertion, "this claimed combination of steps which is tied to hardware,
including client sites and a server, is an intricate set of steps and ... the
combination is not a mere abstract idea." Appeal Br. 21. However, the
broad generic recitations of conventional features of "client sites" and a
"server" are not the types of "hardware" recitations that would serve to
remove the claim from the realm of the abstract. The latter was one of the
specific examples discussed in the May 19, 2016 guidance itself and the
former falls within the realm of gathering data over a network as discussed
in the July 2015 guidance3 (to which the May 19, 2016 guidance refers).
July 2015 guidance p. 7. Moreover, Appellant cites no authority supporting
the proposition that the mere intricacy of a recited set of steps precludes the
set of steps from being directed to an abstract idea without significantly
more. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed.
Cir. 2016) ("Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.").
Appellant again argues that limitations (B}-(E) of claim 4 would not
"monopolize the basic tools of scientific and technological work." Again,
we disagree. Limitation (B)(b) is exemplary of the degree of abstractness of
claim 4 and with it the breath of claim coverage that Appellant seeks
exclusive right to: "training a computer-aided diagnostic decision support
3 https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf
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system with the received messages. "4 This limitation covers any
conceivable method, known and unknown, by which a physician, scientist,
computer engineer or any other person involved in the diagnosis of lesions
or tumors might train a computer to diagnose anything about that lesion or
tumor ( claim 4), or more particularly, its malignancy ( claim 5). This is
clearly an overreaching attempt to preempt the basic tools of medical
diagnosis. This is not altered by the fact that limitation (B)(b) is surrounded
by ordinary any conventional data acquisition and communication steps like
sending, receiving, and presenting data, because, as discussed above, patent
eligibility is not dependent on the so-called draftsman's art. Further,
Appellant makes only naked assertions and does not identify with
particularity precisely what aspects of claim 4 that relate to data acquisition
and communication should not be regarded as routine and conventional.
Appeal Br. 21; Reply. Br. 6.
The remainder of section E of the Appeal Brief, inconsistently with
the requirements of 37 C.F.R. § 4I.37(c)(l)(iv), quotes language from
various other claims coupled with general assertions they are directed to
subject matter that is, for example, "anything but an abstract idea." Appeal
Br. 21-23. "Filing a Board appeal does not, unto itself, entitle an appellant to
de nova review of all aspects of a rejection." See Ex Parte Frye, 94
USPQ2d at 1075. "[T]he Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection." Id at 107 5-76 ( citations
4 See also, for example, claim 19: "a diagnostic decision support processor
programmed to incrementally train a diagnostic decision support routine
using the respective pairs of the received messages" and claim 20: "wherein
the diagnostic decision support processor is further programmed to: process
the features with the diagnostic decision support routine to generate a
diagnosis for the lesion."
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omitted). Again, arguments must address the Examiner's action. 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv )("The arguments shall explain why the examiner erred as to
each ground of rejection contested by appellant"). If the Examiner regarded
certain steps or elements as conventional (Final Act. 3; Ans. 19-21) it is
incumbent upon Appellant to point out with particularly what steps or
elements should not have been so regarded and provide at least some
rebuttal apprising us as to why. We note briefly, claims 13 and 19 do not
appear to present any eligibility issues distinct from those presented
regarding claim 4. 5 We also note, regarding the dependent claims, that
limiting the diagnosis being performed to a determination of malignancy
( claims 5 and 6) or limiting the feature used for making the diagnosis ( claim
15) may narrow the abstract idea but these recitations do not make the
claimed subject matter non-abstract. Ans. 19-21. These claims still serve to
preempt the basic tools of medical diagnosis, just in a slightly more
particular way. Reciting a "user interface" ( claims 6, 9), "display" ( claims 6,
9, 26-29), "processor" ( claims 14, 17, 25), "imaging device" ( claim 16),
"transmitter" ( claim 20) or "computer-readable medium carrying software"
( claim 24 ), in such broad and generic terms amounts to including the types
of limitations that have repeatedly been held not to make the claimed subject
matter amount to "significantly more" under the Alice inquiry. Requesting a
diagnosis be made using the system ( claim 14 ), in effect, is doing no more
than coupling the abstract concept with a directive to "apply it." See Mayo,
supra.
5 Claim 13 is broader than claims 4 and 19 in the sense that it involves just
the collection of data without computer diagnosis training.
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For the foregoing reasons we are in agreement with the Examiner's
conclusion that the claims are not directed to patent-eligible subject matter
and are therefore properly rejected under § 101.
DECISION
The Examiner's rejections are 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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