Kabushiki Kaisha TOPCON

Patent Trials and Appeals Board

Jun 17, 2020

2019006614 (P.T.A.B. Jun. 17, 2020)

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.
14/090,382 11/26/2013 Charles A. Reisman TPCN-50170US1 2377
116 7590 06/17/2020
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES A. REISMAN
Appeal 2019-006614
Application 14/090,382
Technology Center 3600
Before ADAM J. PYONIN, MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Kabushiki
Kaisha Topcon. Appeal Br. 2.
Appeal 2019-006614
Application 14/090,382

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STATEMENT OF THE CASE
Introduction
The Application relates to “a data visualization method and computer
apparatus for graphically depicting a result of an optical or other type of scan
of a biological tissue.” Spec. ¶ 2. Claims 1–22 are pending; claims 1, 8, 14,
and 18 are independent. Appeal Br. 17–22. Claim 8 is reproduced below
for reference (emphasis added):
8. A method of presenting experimentally-determined data
relating to a region of interest on a medical patient for predicting
whether the medical patient has a medical condition, the method
comprising:
using a computer processor, accessing a receiver operating
characteristic analysis of historical data for the region of interest
on each of a plurality of different subjects from a nontransitory
computer memory, wherein each of the plurality of different
subjects is known as having the medical condition or not having
the medical condition when the historical data was collected, and
the region of interest on each of the plurality of different subjects
corresponds to the region of interest on the medical patient;
identifying a subset of spatial locations in the region of
interest where the experimentally determined data is an accurate
predictor of the medical condition to be utilized to reach an at
least preliminary conclusion regarding the medical patient
based on the receiver operating characteristic analysis of the
historical data;
comparing the experimentally-determined data at the
subset of spatial locations of the medical patient to the receiver
operating characteristic analysis of the historical data stored by
the computer-readable medium; and
generating a graphic display to be presented by a display
device operatively connected to the computer processor to a user
for graphically expressing a result of said comparing.
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Application 14/090,382

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References and Rejections
The Examiner rejects claims 1–22 under 35 U.S.C. § 101 as being
patent ineligible. Page 2 of Non-Final Action mailed November 7, 2018
(“Non-Final Act.”).
The Examiner rejects claims 1, 2, 4–10, and 12–20 under 35 U.S.C.
§ 103(a) as being unpatentable over Knighton (US 8,801,187 B1; Aug. 12,
2014) and Applegate (US 2006/0187413 A1; Aug. 24, 2006). Non-Final
Act. 12.
The Examiner rejects claims 3 and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Knighton, Applegate, and Rao (US 2003/0125988
A1; July 3, 2003). Non-Final Act. 20.
The Examiner rejects claims 21 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Knighton, Applegate, and Huang (US
2008/0309881 A1; Dec. 18, 2008). Non-Final Act. 22.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).

Patent Eligibility
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, because “the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more.” Non-Final Act. 2; see Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 217–218 (2014) (describing the two-step framework “for
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Application 14/090,382

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distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”).
After the mailing of the Non-Final Action—but prior to the mailing of
the Answer or the filing of the Briefs—the U.S. Patent and Trademark
Office (USPTO) published revised guidance on the application of § 101
(“Guidance”). See 2019 Revised Patent Subject Matter Eligibility Guidance
Notice, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Notice”); see also USPTO, October
2019 Update: Subject Matter Eligibility (“October Update”) (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf). “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Notice, 84
Fed. Reg. at 51; see also October Update at 1.
Under the Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).
Notice, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, does the Office then look, under Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Notice, 84 Fed. Reg. at 52–56.

A. Step 2A, Prong One
We agree with the Examiner that claim 8 recites “the abstract idea
grouping of concepts performed in the human mind (including an
observation, evaluation, judgement, opinion).” Ans. 5. Claim 8 recites steps
of accessing, identifying, and comparing information. Such data review and
analysis are examples of observation, evaluation, judgment, opinion, and
thus recite an abstract concept under the Guidance. See Notice, 84 Fed. Reg.
at 52; Non-Final Act. 6; Ans. 6.
Accordingly, we agree with the Examiner that the claim recites an
abstract idea under Prong One of the Guidance. See Notice, 84 Fed. Reg. at
52, 54.

B. Step 2A, Prong Two
Appellant argues the claims are patent eligible, because “even if
various portions of the claimed analysis are identified as abstract features,
those features are practically applied in each of the claims by
generating/displaying particular graphical representations of the results of
that analysis.” Appeal Br. 13. Appellant contends “the practical application
is evident in the improvement provided to medical diagnostic technologies,”
as “the claims . . . improve[e] the manner of comparison of patient data to
historical data indicative of conditions/symptoms to increase proper
diagnosis.” Id. at 14.
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We are persuaded by Appellant’s argument. The Examiner
determines the claimed displaying step does not integrate the judicial
exception into a practical application:
These claim limitations appear to recite a merely generic display
untethered from the rest of the claim language as they broadly
describe an image/graphic display that presents a result of the
comparison step where the display does not include
alphanumeric characters, but instead includes colors, such as the
well-known heat map represented in Figure 6 of the instant
disclosure. “[M]erely presenting the results of abstract processes
of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis.”
Ans. 7 (quoting Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016)). We appreciate the Examiner’s well-reasoned and
thoughtful analysis in both the Non-Final Action and the Answer; however,
we disagree with the Examiner on this point.
The displaying step recited in claim 8 is to express the comparing
result; i.e., the claim displays a comparison of the patient data with
particularly identified “experimentally determined data [that] is an accurate
predictor of the medical condition to be utilized to reach an at least
preliminary conclusion regarding the medical patient based on the receiver
operating characteristic analysis of the historical data.” Appeal Br. 18. This
displaying step is not ancillary, as the display of the comparison information
is a specific step that is needed to diagnose a patient’s medical (e.g., eye)
condition. See Reply Br. 6 (“Presenting the displays in a graphical form,
however, constitutes a particular manner of presentation that allows the
benefits of the processing to be realized.”); Spec. ¶ 51 (“such a step limits
the data that must be considered and analyzed by a clinician attempting to
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make a diagnosis”). Thus, we find Electric Power to be inapposite, because
Appellant’s claim 8 does not merely use a computer as a tool to perform an
abstract idea; rather, the claim (as discussed further below) provides a
technological improvement by use of the recited display. Cf. Elec. Power
Grp., 830 F.3d at 1354 (“The present case is different: the focus of the
claims is not on such an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools.”).
We also determine the improved medical diagnostic display of
Appellant’s claim 8 provides a technological benefit. For example, as
explained in the Specification, “even glaucoma specialists can disagree
about whether a new patient with a certain cluster of symptoms has
glaucoma,” and the claimed technique “can improve the accuracy of a test
for glaucoma based on the retinal thickness over that of a test based solely
on a comparison of a measured retinal thickness to a threshold value alone.”
Spec. ¶¶ 7, 34; see also Spec. ¶¶ 33, 51. That is, claim 8 provides a more
accurate diagnostic test, which “improves technology, [so] the claim
imposes meaningful limits on any recited judicial exception, and the claim
[is] eligible.” October Update at 11; cf. CardioNet, LLC v. InfoBionic, Inc,
955 F.3d 1358, 1369–70 (Fed. Cir. 2020) (“When read as a whole, and in
light of the written description, we conclude that claim 1 of the ’207 patent
is directed to an improved cardiac monitoring device,” as “the device more
accurately detects the occurrence of atrial fibrillation and atrial flutter . . . .
We accept those statements as true and consider them important in our
determination that the claims are drawn to a technological improvement.”).
Based on the record before us, we agree with Appellant that claim 8 “results
in improvements to medical diagnostic technologies and is integrated into a
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practical application via display of the identified spatial locations and
resulting diagnostic comparisons.” Reply Br. 7.
Accordingly, we determine that claim 8 recites additional elements
that integrate the underlying abstract idea into a practical application.
Notice, 84 Fed. Reg. at 54. Because “the exception is so integrated, . . . the
claim is not directed to a judicial exception (Step 2A: NO) and is eligible.”
Id.
We do not sustain the Examiner’s eligibility rejection of independent
claim 8, independent claims 1, 14, and 18 which recite similar limitations, or
the claims dependent thereon.

Obviousness
We disagree with Appellant that the Examiner erred and adopt as our
own the findings and reasons set forth by the Examiner with respect to the
obviousness rejection, to the extent consistent with our analysis below. We
add the following primarily for emphasis.
Appellant argues the Examiner’s obviousness rejection of independent
claim 8 is in error, because “none of the cited references teach or suggest
identifying spatial locations based on an ROC [(receiver-operating-
characteristic)] analysis as claimed.” Appeal Br. 9. Appellant contends
“[t]he examiner acknowledged that Knighton does not teach these features
as they relate to using an ROC analysis,” and “[n]owhere does Applegate
describe ROC values or characteristics that are capable of or determining
physiological regions of subjects, as recited by the claims.” Id. at 8, 9
(emphasis omitted). Appellant emphasizes that “[i]t is these deficiencies in
each reference that are precisely why the combination fails—that is, none of
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the references teach or suggest identifying the spatial locations to use for
diagnosis based on the ROC analysis.” Reply Br. 2 (emphasis omitted).
Appellant does not persuade us of reversible error in the Examiner’s
obviousness rejection. We note Appellant does not challenge the
Examiner’s findings that “Knighton identifies spatial locations
(pixel/pixels/areas) and compares these spatial locations of a current patient
to spatial locations of patients with or without glaucoma to determine
whether the current patient has glaucoma,” and “Applegate uses receiver
operating characteristic analysis to obtain the diagnosis.” Ans. 4, 5;
Knighton 6:27–38; Applegate ¶¶ 12–20; see also Reply Br. 2.
Appellant does not persuasively show the Examiner errs in
determining “it would have been obvious to one [of] ordinary skill in the art
to expand Knighton’s patient eye disease diagnosis system which
particularly uses optical coherence tomography with the optical filter eye
disease detection method of Applegate,” based on the “motivation of the
ease at which optical signatures for different diseases are defined and used
regardless of the operating characteristics of the particular measurement
system.” Ans. 5; Non-Final Act. 28. We find the Examiner’s explanation to
constitute articulated reasoning with rational underpinnings sufficient to
justify the legal conclusion of obviousness. Appellant fails to establish that
combining Knighton’s teachings of eye locations for comparisons in health
screenings with Applegate’s teachings of using receiver operating
characteristic (ROC) analysis for historical eye data, was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). See Non-Final Act. 16. Thus, we
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are not persuaded the Examiner errs in finding the disputed limitations of
claim 8 to be obvious in view of the combined teachings of Knighton and
Applegate.
Appellant argues independent claims 1, 14, and 18 contain limitations
commensurate in scope with claim 8, which are not taught or suggested by
the cited references for the same reasons provided for claim 8. See Appeal
Br. 10, 11; Reply Br. 3. For the reasons above, we are not persuaded of
Examiner error. Appellant presents similar arguments that the combination
does not teach the use of ROC analysis with thickness data (claim 14) or for
generating an image (claim 18). Similar to the reasons discussed above for
claim 8, we are not persuaded the Examiner errs in finding these limitations
to be obvious in view of the combined teachings of Knighton and Applegate.
See Ans. 4 (“Knighton teaches characterizing the thickness of layers,” and
“maps for the historic data and for the macula to be tested are formed and
compared.”); Ans. 5 (“Applegate uses receiver operating characteristic
analysis to obtain the diagnosis,” and “the combination of Applegate with
Knighton . . . would have been obvious to one [of] ordinary skill in the
art.”); see also Non-Final Act. 12, 13, 17, 18–20. Thus, we are not
persuaded the Examiner’s obviousness rejection of these claims is in error.
Accordingly, we sustain the Examiner’s obviousness rejection of the
independent claims, and the rejections of the claims dependent thereon
which are not separately argued. See Appeal Br. 12.

Appeal 2019-006614
Application 14/090,382

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22 101 Eligibility 1–22
1, 2, 4–10,
12–20
103 Knighton,
Applegate
1, 2, 4–10,
12–20

3, 11 103 Knighton,
Applegate, Rao
3, 11
20, 21 Knighton,
Applegate, Huang
21, 22
Overall
Outcome
1–22

The Examiner’s decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim on appeal. See 37
C.F.R. § 41.50(a)(1).

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED