KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Aug 13, 2020

15021733 - (D) (P.T.A.B. Aug. 13, 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.
15/021,733 03/14/2016 Jörg SABCZYNSKI 2013P00666WOUS 6060
24737 7590 08/13/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
WEISBERG, AMY REGINA
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/13/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JÖRG SABCZYNSKI, KIRSTEN REGINA MEETZ,
THOMAS BUELOW, and DOMINIK BENJAMIN KUTRA

Appeal 2019-006676
Application 15/021,733
Technology Center 3600
____________

Before MICHAEL L. HOELTER, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20 (i.e., all the claims on appeal).2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Koninklijke Philips Electronics N. V.” Appeal Br. 2.
2 The Examiner states, “[c]laims 10–11 are objected to as being dependent
upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims.” Final Act. 25.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to surgical intervention
planning.” Spec. 1:2. Method claim 1, computer-readable medium claim
12, and apparatus claim 13 are independent. Claim 1 is illustrative of the
claims on appeal and is reproduced below.
1. A method comprising[:]
receiving surface data of a patient’s surface,
receiving intervention data about a planned surgical
intervention, the intervention data including data representing a
targeted object,
creating a surface representation of a part of the patient’s
body based on the received data of the patient’s surface,
selecting a first surgical method out of a plurality of
parameterized surgical methods stored in a database,
adapting geometrical parameters of a surgical
intervention plan based on the selected first surgical method,
the intervention data, and the surface representation, thereby
calculating an adapted surgical intervention plan,
displaying the adapted surgical intervention plan to a
user, and
transferring the adapted surgical intervention plan to the
patient’s surface to identify where incisions are to be made in
accordance with this adapted surgical intervention plan.
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REFERENCES
Name Reference Date
Yaroslavsky et al
(“Yaroslavsky”)
US 2005/0094147 A1 May 5, 2005
Chauhan et al.
(“Chauhan”)
US 2006/0020279 A1 Jan. 26, 2006
Simon C. Mears et al., Visibility of Surgical Site Marking After
Preoperative Skin Preparation, OPEN ACCESS JOURNAL OF PLASTIC
SURGERY (2008) (“Mears”)
Shin Nakajima et al., Computer-assisted Surgical Planning for
Cerebrovascular Neurosurgery, NEUROSURGERY, Vol. 41(2) (Aug. 1997)
pp. 403–10 (“Nakajima”)

ISSUES ON APPEAL3
Claims 1–5 and 7–9 are rejected under 35 U.S.C. § 101 because they
recite “a method for planning surgery” which “covers a mental process” and
hence, “recite[] an abstract idea.” Final Act. 2.
Claim 12 is rejected under 35 U.S.C. § 101 because it “recites a
computer program for planning surgery,” which “covers a mental process”
and hence, “recites an abstract idea.” Final Act. 3.
Claims 17–19 are rejected under 35 U.S.C. § 101 and § 33(a) of the
America Invents Act as being directed to or encompassing a human
organism. Final Act. 10.
Claim 13 is interpreted under 35 U.S.C. § 112(f) because the
limitation is not modified by sufficient structure, material, or acts for
performing the claimed function. Final Act. 11.

3 The Examiner withdrew the rejection of claim 6 “under 101 as being
directed to non-statutory subject matter.” Ans. 3. Additionally, “the 101
[rejection] of claims 13–14 and 18–19 is withdrawn.” Final Act. 5.
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Claims 13–19 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 12.
Claims 13–19 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention. Final Act. 13.
Claims 1–9, 12–14, 18, and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over Chauhan, Nakajima, and Mears. Final Act. 14.
Claims 17 and 20 are rejected under 35 U.S.C. § 103 as unpatentable
over Chauhan, Nakajima, Mears, and Yaroslavsky. Final Act. 25.
THE REJECTIONS OF CLAIMS 1–5, 7–9, and 12
UNDER 35 U.S.C. § 101
Background
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)
and in Alice. See Alice, 573 U.S. at 217–18. In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
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(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “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].’”4 Id.
(quoting Mayo, 566 U.S. at 77).

4 The USPTO has published revised guidance on the application of § 101.
See USPTO’s January 7, 2019, Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), and
supplemented at 84 Fed. Reg. 55942 (Oct. 18, 2019) (“Office Guidance”).
Regarding this Office Guidance, our reviewing court stated, “the Office
Guidance is not, itself, the law of patent eligibility, does not carry the force
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Analysis
Appellant argues claims 1–5, 7–9, and 12 together. See Appeal Br. 7–
9. We select claim 1 for review, with 2–5, 7–9, and 12 standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
1. Does Claim 1 fall within a Statutory Category of § 101?
As an initial matter, we must first ascertain whether claim 1 recites
one of the enumerated statutory classes of subject matter that is eligible
under 35 U.S.C. § 101, namely, a process, machine, manufacture, or
composition of matter. The Examiner initially contends that claim 1 does
not fall into any of these categories (see Final Act. 2), but subsequently
reverses course stating the “Examiner agrees with Appellant that the claims
fall within one of the four categories of statutory subject matter.” Ans. 4.
We also agree with Appellant that claim 1 “recites a method . . . and
accordingly, is a ‘process’ under 35 U.S.C. [§] 101.” Appeal Br. 7.

of law, and is not binding in our patent eligibility analysis.” In re Rudy, 956
F.3d 1379, 1383 (Fed. Cir. 2020). “To the extent the Office Guidance
contradicts or does not fully accord with our caselaw, it is our case law, and
the Supreme Court precedent it is based upon, that must control.” Rudy, 956
F.3d at 1383 (referencing Cleveland Clinic Found. v. True Health
Diagnostics LLC, 760 F. App’x. 1013, 1021 (Fed. Cir. 2019) (holding
claims ineligible, despite Office Guidance suggesting otherwise, where
statements and examples in the Guidance were inconsistent with Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015)): see
also In re Zach Zunshine, No. 2020–1254, 2020 WL 3816803, at *2 (Fed.
Cir. July 8, 2020).
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2. Does Claim 1 Recite a Mental Process, i.e., a Judicial Exception/Abstract
Idea?
The Examiner determines that claim 1 is “directed to . . . a method of
planning surgery, [which] is a process that, under its broadest reasonable
interpretation, covers a mental process (observation, evaluation, judgement,
opinion).” Final Act. 2. As a consequence, “the claim recites an abstract
idea.” Final Act. 2.
Appellant initially contends, “the Examiner does not address which
element(s) [of claim 1] recite a judicial exception.” Appeal Br. 7
(replicating certain paragraphs from the Final Office Action). Appellant
states that the Examiner, by “classifying the entire claim as a ‘method for
planning surgery[,] . . . does not identify where each claim recites an abstract
idea.” Appeal Br. 8. We disagree with this assessment by Appellant
because other paragraphs not replicated by Appellant clearly show the
Examiner was specifically identifying “[t]he steps of receiving, creating,
selecting, adapting, displaying, and transferring” as the focus of the
Examiner’s examination. Final Act. 2 (stating that these steps “are not tied
to any machine”). We thus disagree with Appellant’s above contention that
the Examiner did not address which elements “recite a judicial exception.”
Appellant also contends that claim 1 is “not directed to an Abstract
Idea” because claim 1 is “directed to determining and marking where
incisions are to be made on a patient’s body.” Appeal Br. 8. In other
words, claim 1 “is not a mere mental process, as asserted by the Examiner.”
Appeal Br. 8. The Examiner responds by addressing both the “displaying”
and “transferring” steps associated with marking “the patient’s surface to
identify where incisions are to be made,” as recited. Ans. 4. The Examiner
describes these steps as “displaying information (i.e., the plan), and
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transmitting information (i.e., to the patient’s surface/body)” reasoning that
these steps are “directed to planning surgery.” Ans. 4. The Examiner
concludes that these steps of claim 1 “under its broadest reasonable
interpretation covers a mental process that could be performed via pen and
paper.” Ans. 4.
The Examiner further reasons that “[e]ven if Examiner took
Appellant’s position that [claim 1 is] ‘directed to’” the above “determining
and marking where incisions are to be made,” these steps “are still directed
to a mental process for the same reasons Examiner articulated above,” i.e.,
“could be performed via pen and paper,” and also “may include simply
marking the patient.” Ans. 4–5. Appellant seems to agree, stating “a
surgeon may mentally estimate where incisions are to be made while
viewing the patient.” Reply Br. 3. However, Appellant contends that the
surgeon’s “mental process does not include ‘creating a surface
representation of a part of the patient’s body based on the received data of
the patient’s surface,” as recited. Reply Br. 3. Appellant’s contention is not
persuasive because Appellant does not explain how a surgeon, “while
viewing the patient” and evaluating a procedure, fails to (does not) mentally
contemplate that part of the patient’s body based on received data.
Perhaps to clarify Appellant’s position on this point, Appellant
contends that “[f]or the physician to ‘create a surface representation’, the
physician would need to, for example, create a model of [that] part of the
patient’s body.” Reply Br. 3. However, claim 1 is silent as to whether the
surface representation created need be an actual physical model (as opposed
to a mental image or virtualization). Appellant’s Specification indicates
otherwise, stating, “[i]n case of an interactive implementation, the surface
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representation is visualized 508 e.g. on a computer screen.” Spec. 17:11–12.
Hence, “surface representation,” as used by Appellant, encompasses non-
tangible expressions as well.
Appellant further contends “that marking a patient is a physical act; it
is not a mental process as asserted by the Examiner.” Reply Br. 4. The
Examiner, however, finds, “[t]ransferring a plan may include a mental step
(visualizing the plan), visualizing the plan on a computer screen showing the
patient, or using a conventional marker (i.e., sharpie) to just mark the
incision site.” Final Act. 6. We do not find error in the Examiner’s analysis
based on the record before us.
Appellant additionally disagrees that claim 1 is “‘directed to’ an
abstract idea” because Appellant’s method is directed to “accurately
determining and marking where incisions are to be made.” Reply Br. 4
(emphasis added). Appellant states, “[t]he accurate identification of where
incisions are to be made substantially removes the dependence on the skill of
the particular doctor in estimating where the incisions are best made.” Reply
Br. 4. First, there is no recitation to accuracy in claim 1. Also, Appellant
does not explain how third-party marking “removes the dependence on the
skill of the particular doctor” who still needs to ascertain that such markings
are, in fact, properly located. Appellant’s arguments in this regard may be
addressing the so-called “additional elements” referred to in the Office
Guidance. Even if regarded as such, we find those additional elements
amount, at most, to insignificant extra-solution activity. Further, this
argument does not explain why Appellant’s recited methodology
(characterized as “a method for planning surgery” (Final Act. 2)) is not the
underlying subject matter to which the claim is truly directed or why such
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methodology recited in claim 1 is not “directed towards an abstract idea,” as
the Examiner determined. Final Act. 2.
3. Has the Judicial Exception/Abstract Idea Been Integrated Into a
Practical Application, or Does Claim 1 Contain an Inventive Concept
Sufficient to Transform The Judicial Exception/Abstract Idea Into a Patent-
Eligible Application?5
Appellant also contends that the Examiner failed to consider “the
claim as a whole” (Reply Br. 5), but as stated above, the Examiner
enumerated each of the steps considered, and Appellant does not identify
any step left wanting. Accordingly, and based on the above reasons, we are
not persuaded by Appellant that the Examiner erred in determining that
claim 1 is “directed to . . . a mental process,” and thus “an abstract idea,”
i.e., a “judicial exception.” Final Act. 2.
As expressed above, if a claim is “directed to” an abstract idea, we are
then instructed by the Supreme Court to “examine the elements of the claim
to determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (characterized as “Mayo step two”). Here, the
Examiner finds that “[t]his judicial exception is not integrated into a
practical application.” Final Act. 2. For example, the Examiner (focusing
on the transferring step) states that such step “do[es] not add significantly
more so as to transform the abstract idea into patent-eligible subject matter.”
Final Act. 8; see also Final Act. 2 (“The steps of receiving, creating,

5 The Office Guidance “explains that a patent claim or patent application
claim that recites a judicial exception is not ‘directed to’ the judicial
exception if the judicial exception is integrated into a practical application of
the judicial exception.” Office Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).
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selecting, adapting, displaying, and transferring are not tied to any
machine.”). In other words, whether “[v]iewed alone [or] as a whole, the
additional claim elements do not provide meaningful limitations to transform
the abstract idea into a patent eligible application.” Final Act. 8. The
Examiner finds that “[t]he transferring step simply refer[s to] using a marker
to identify on a patient’s surface where incision[s] are to be made.” Final
Act. 8. Regarding that point, Mears teaches that “marking the surgical site is
essential for the planning of any surgical procedure.” Final Act. 8
(referencing Mears “page 364”). Hence, as per the Examiner, such marking
of the surgical site is “conventional and well known.” Final Act. 8.
Appellant disagrees, stating that a process “that obtains a surface
representation of a patient’s body and identifies where incisions are to be
made . . . is clearly a practical application.” Appeal Br. 9; see also Reply Br.
7 (“clearly amounts to significantly more than a mental process”). It is not
disputed that marking a patient’s body prior to surgery may be of value but
Appellant does not dispute that it is also well known and conventional to do
so. Mears teaches that as far back as 2003, “the Joint Commission on
Accreditation of Healthcare Organizations developed guidelines that require
. . . marking of the surgical site on the patient.” Mears, 364. Hence, whether
useful or not, Appellant does not make clear how the recited (and required)
marking steps “impose a meaningful limit on whatever abstract idea may be
recited” in claim 1. Appeal Br. 9; see also Reply Br. 6.
Appellant further contends that, because the Examiner erred with
respect to sub-section 2 above, “subsequent determination of whether the
claims include additional elements that are sufficient to amount to
significantly more . . . is moot.” Appeal Br. 9. In view of it being
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conventional to pre-mark surgical patients (see Mears), Appellant provides
no further indication as to how such well known marking “transforms” claim
1 into patent-eligible subject matter. Accordingly, we are not persuaded the
Examiner erred in concluding that “claim 1 is rejected under 35 U.S.C. [§]
101 as being directed to non-statutory subject matter.” Final Act. 8. We
sustain the Examiner’s above rejections of claims 1–5, 7–9, and 12.
THE REJECTION OF CLAIMS 17–19
AS DIRECTED TO OR ENCOMPASSING A HUMAN ORGANISM
Claim 17 depends, indirectly, from independent apparatus claim 13,
whose rejection under § 101 has been withdrawn. See Final Act. 5. Claim
17 additionally recites, “wherein a photosensit[i]ve material is placed on the
patient’s surface, and the projecting device is configured to cause select
activation of the photosensitive material.” Emphasis added. The Examiner
finds this limitation “positively claim[s] the human body.” Appellant
disagrees, contending that this claim does “not assert a property right in a
human being.” Appeal Br. 10; see also Reply Br. 8.
Claim 17 recites a photosensitive material is placed, i.e., located, “on
the patient’s surface.” Lacking such a location “on the patient’s surface,”
this requirement of the claim cannot be satisfied. We thus conclude that,
indeed, claim 17 includes a positive recitation to a human body because
fulfilling this provision requires placement on a human body. The Examiner
proffered assistance, stating that “[u]tilizing language such as ‘configured
to’ is a means for overcoming a 101 rejection of these claims.” Final Act.
10. We agree, but Appellant elected to not amend claim 17 as suggested by
the Examiner. In this regard, we further note that claim 17 recites that “the
projecting device is configured to cause select activation of the
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photosensitive material.” Thus, claim 17 explicitly uses the term
“configured to” with respect to another claim element yet avoids using this
term regarding the placement of the photosensitive material on the patient’s
surface. Consequently, we do not understand claim 17, in its present form,
to recite that the photosensitive material “is configured to be placed on the
patient’s surface.” Rather, such placement on the human body is actually
required by the claim. Accordingly, and based on the record presented, we
sustain the Examiner’s rejection of claim 17 under both Sections 101 and
33(a) as “being directed to or encompassing a human organism.” Final Act.
10.
Claim 18 depends directly from claim 13. Parent claim 13 recites,
“the calculation circuit is configured to create a surface representation of a
part of the patient’s body based on the surface data.” Emphasis added.
Claim 18 recites “wherein the calculation circuit creates the surface
representation of the part of the patient’s body using surface triangulation
and texture mapping.” In other words, claim 18 specifies the methodology
by which the surface representation is to be undertaken. Thus, the recitation
in claim 18 to creating a surface representation of a part of the patient’s body
modifies parent claim 13 which, as indicated above, states that the
calculation circuit is “configured to” create such a representation. As a
consequence, we do not agree with the Examiner that claim 18 (read in view
of parent claim 13) “positively claim[s] the human body” as stated. Final
Act. 10. Accordingly, we do not sustain the Examiner’s rejection of claim
18 under either Section 101 or 33(a).
Claim 19 also depends directly from claim 13. Claim 19 additionally
recites “wherein the display device displays the adapted surgical intervention
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plan in form of at least a line of a future skin incision in the created surface
representation of the part of the patient’s body.” In other words, the only
recitation to a human body in claim 19 is the reference to “the created
surface representation of the part of the patient’s body.” As noted above,
this “surface representation” is created by a calculation circuit that is
“configured to” produce such a representation. Consequently, like claim 18,
we do not agree with the Examiner that claim 19 (read in view of parent
claim 13) “positively claim[s] the human body” as the Examiner states.
Final Act. 10. Accordingly, we do not sustain the Examiner’s rejection of
claim 19 under either Section 101 or 33(a).
THE INTERPRETATION OF CLAIM 13 UNDER 35 U.S.C. § 112(F),
AND THE SUBSEQUENT REJECTIONS OF CLAIMS 13–19
AS LACKING WRITTEN DESCRIPTION SUPPORT
AND BEING INDEFINITE
Independent apparatus claim 13 includes a limitation to “a transfer
device.” The Examiner states that “[b]ased upon the specification this
appears to be an overhead projector or pen.” Final Act. 11. Appellant does
not dispute this identification by the Examiner. See Appeal Br. 10–13.
Accordingly, we do not fault the Examiner’s claim construction on this
point.
The Examiner additionally notes that claim 13 recites “a receiving
circuit, a calculation circuit, [and] an interface circuit.” Final Act. 11. The
Examiner states, “[i]t appears Applicant contends (see Appeal Brief) circuit
is akin to the term ‘unit,’” and further that “it appears Applicant is using
circuit but means unit when unit is subject to a 112f interpretation.” Final
Act. 11. The Examiner maintains this understanding of the claim term
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“circuit” because “the word circuit is not in the specification.” Final Act.
12. The consequence of this Section 112(f) interpretation by the Examiner is
that claim 13 (and its dependent claims 14–19) thus fails “to comply with the
written description requirement” (Final Act. 12) and is “indefinite” (Final
Act. 13). This is because, as expressed above, the Examiner is interpreting
“circuit” to mean “unit.” See Final Act. 11–13.
Appellant explains that, previously, “[i]n response to an interpretation
of these claims under 35 U.S.C. 112(f), [Appellant] replaced the term ‘unit’
in the claims with ‘circuit’, to clearly indicate the structure of the claimed
elements.” Appeal Br. 10. Appellant replicates a portion of MPEP § 2181
which identifies “circuit” as an “example[] of structural terms that have
been found not to invoke 35 U.S.C. [§] 112(f).” Appeal Br. 10 (emphasis
added). The Examiner acknowledges that such amendment took place. See
Ans. 9 (“the original term ‘unit’ was subject to a 112f interpretation” and
“Appellant amended the claims to change ‘unit’ to ‘circuit’” in view of
MPEP § 2181).
Both parties agree that “[t]he term ‘circuit’ is narrower than the term
unit.” Final Act. 12, Appeal Br. 11. Appellant further identifies where
“units” is employed in Appellant’s Specification and that “applicants
respectfully maintain that in the context of the applicants’ specification,
these ‘units’ must inherently contain circuitry.” Appeal Br. 11 (referencing
Spec. 10:15–26).
Further, regarding indefiniteness, Appellant contends, “applicants use
the term ‘circuit’ in the claims in accordance with its ordinary meaning.”
Appeal Br. 12. This is the case, according to Appellant, whether relying on
the definition from “Merriam-Webster” or that from Wikipedia (which cites
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to “Charles Alexander and Matthew Sadiku (2004). ‘Fundamentals of
Electric Circuits’. McGraw-Hill”). Appeal Br. 12. We thus understand
from Appellant’s amendment, that, according to Appellant, the Examiner’s
interpretation under § 112(f) has been rebutted (i.e., “circuits,” not “units”),
the claim term “circuit” has written description support (the disclosed
“‘units’ must inherently contain circuitry”) and the term “circuit” is not
indefinite (Appellant uses “the term ‘circuit’ in the claims in accordance
with its ordinary meaning”). See above.
The Examiner disagrees that “these ‘units’ must inherently contain
circuitry” because, based on Appellant’s Specification “it appears the
calculation unit and receiving unit may instead be an algorithm, data, or
software for processing data.” Ans. 9 (referencing “page 10 of Appellant’s
specification”). The Examiner concludes from this investigation of
Appellant’s Specification that “[t]here is no evidence from these citations
that the calculation unit and receiving unit MUST be a circuit when in fact it
appears based on Appellant’s specification they are data, software, or an
algorithm.” Ans. 10. The Examiner reasons, “[t]he fact that a certain result
or characteristic may occur or be present in the prior art is not sufficient to
establish the inherency of that result or characteristic.” Ans. 10.
“Accordingly, the term circuitry is contrary to its ordinary meaning thus the
112b rejection is maintained.” Alternatively, as per the Examiner, “[i]n the
event the terms ‘circuitry’ are viewed as being interchangeable with ‘unit’,
then the Examiner maintains the 112f interpretation of the claims and
corresponding 112b for lacking clear structure in the specification.” Ans.
10.
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It is clear from page 10 of Appellant’s Specification that the identified
“receiving unit,” “calculation unit” and “interface” (see Final Act. 11), along
with “a display unit,” are described as performing certain functions.6 Based
on such disclosure, “[t]he applicants specifically claim that the calculation
unit/circuit performs a function, as does the receiving unit/circuit. Neither
an ‘algorithm’ nor ‘data’ nor ‘software’ can perform any function without
circuitry.” Reply Br. 8 (referencing “Wikipedia, ‘Software’” which states
“Computer hardware and software require each other and neither can be
realistically used without the other” (emphasis added)). Thus, according to
Appellant, “replacing the term ‘unit’ with the more specific term ‘circuit’
does not invoke 35 U.S.C. 112(a).” Reply Br. 9. In other words, there is
sufficient written description support for the claim term “circuit” as now
employed in Appellant’s claims 13–19.
In view of the above, Appellant has persuasively shown that the term
“circuit,” as normally understood, has written description support because,
in view of the above reference, the disclosed “‘units’ must inherently contain
circuitry” (Appeal Br. 11) and cannot comprise solely “data, software, or an
algorithm” as proposed by the Examiner (Ans. 10).
Further, because Appellant repeatedly asserts that the term “circuit” is
used in its customary and ordinary sense (see Appeal Br. 12; Reply Br. 9),
and even provides external definitions consistent with such usage (see
Appeal Br. 12), we agree with Appellant that such “us[age] does not render

6 Appellant’s Specification discusses “a receiving unit for receiving [certain]
data;” a “calculation unit is configured for creating a surface representation;”
“the interface is configured for receiving a user input;” and, “the display unit
is configured for displaying” the adapted intervention plan. Spec. 10:11–22.
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the claims indefinite.” Appeal Br. 13. Accordingly, and based on the record
presented, we do not agree with the Examiner’s conclusion that claim 13
invokes 35 U.S.C. § 112(f), nor do we agree that claim 13 lacks written
description support or is indefinite. We interpret the claims as not invoking
35 U.S.C. § 112(f), and we reverse these rejections by the Examiner of
claims 13–19.
THE REJECTION OF CLAIMS 1–9, 12–14, 18, AND 19
AS UNPATENTABLE OVER CHAUHAN, NAKAJIMA, AND MEARS
Appellant argues all these claims together. See Appeal Br. 13–17.
We select method claim 1 for review, with the remaining claims standing or
falling with claim 1.
The Examiner relies on Chauhan for teaching many of the various
recited steps of claim 1. See Final Act. 14–15. However, the Examiner
relies on Nakajima for teaching that it is known for a surgeon to “select[] the
most appropriate therapeutic intervention” and also provides a reason for
Nakajima’s combination with Chauhan. See Final Act. 15. The Examiner
further relies on Mears for teaching “that ‘marking the surgical site is
essential for the planning of any surgical procedure’” and provides a reason
for Mears’ combination as well. Final Act. 15 (referencing “page 364” of
Mears).
Appellant focuses primarily on the teachings of Chauhan, contending
that this reference does not teach “receiving surface data of a patient’s
surface and creating a surface representation.” Appeal Br. 13; see also
Reply Br. 10. This is because “Chauhan’s imaging probe is used to provide
x-ray or ultrasound images of the abnormal tissue, which is below the
patient’s surface.” Appeal Br. 13 (emphasis added). In contrast, “the
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claimed patient’s surface must be the patient’s external surface.” Reply Br.
10. Thus, “Chauhan’s imaging probe does not provide surface data of a
patient’s surface.” Appeal Br. 14 (emphasis added).
The Examiner responds by referencing Chauhan’s paragraph 40 (also
referenced by Appellant, see Appeal Br. 10) which states “[i]maging probe
14 may be any device that can scan a patient or a region of a patient’s body
and produce a 2-D image of the scanned region.” Chauhan thereafter
discusses the exemplary use of “an ultrasound probe or, an x-ray device.”
Chauhan ¶ 40. This is in contrast to more conventional techniques “such as
physical breast examination” and the like. Chauhan ¶ 2.
This teaching in Chauhan of the probe being “any device that can scan
a patient or a region of a patient’s body” does not appear to be exclusive to
only below-surface techniques as Appellant contends. This is because
paragraph 91 discusses calculating “the coordinates required for the incision
and excisions to be performed by” a surgical instrument. See also Chauhan
¶¶ 93, 94. Thus, Chauhan must provide data about a patent’s surface (as
well as what may lie underneath) for Chauhan to provide “incision and
excision” coordinates. We are not appraised of how Chauhan would teach
otherwise.
However, in the matter before us, the Examiner expresses a
misleading understanding of the claim term “patient’s surface” by stating
“[a] tumor has a surface.” Ans. 12. While this statement is, undoubtedly,
true, we understand from Appellant’s Specification that the claim term
“patient’s surface” means the patient’s skin, in contrast to the surface of an
underlying tumor. See also Reply Br. 10. This is supported by Appellant’s
distinction between the two, i.e., “[i]n particular, structures which are
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positioned underneath the surface of the skin can be visualized.” Spec.
7:29–30. See also Spec. 3:11–12 (“this method allows for virtually drawing
the different surgical techniques onto the representation of the skin of the
patient”); 6:2–3 (“by drawing and/or projection the different results onto the
representation of the skin”); 20:15–16 (“The surgical plan can be seen by the
surgeon on the surface and marked with a pen.”).
Consequently, while the Examiner is correct that “[a] tumor has a
surface,” the tumor’s surface is not the proper understanding of “patient’s
surface” as used by Appellant in the claims.7 Accordingly, despite that
which Chauhan already appears to readily disclose (see above), the
Examiner’s premise that the claim term “patient’s surface” applies to
internal tumors is faulty. Thus, and solely because of this expressed claim
interpretation by the Examiner (see Ans. 12), we agree with Appellant that
the Examiner erred in not limiting the claim term “patient’s surface” to an
external surface (i.e., the skin) of a patient. See Reply Br. 10. Accordingly,
and based on the record presented, we reverse the Examiner’s rejection of
claims 1–9, 12–14, 18, and 19 as being obvious in view of Chauhan,
Nakajima, and Mears.

7 Construing individual words of a claim without considering the context in
which those words appear is simply not “reasonable.” Instead, “[i]t is the
use of the words in the context of the written description and customarily by
those skilled in the relevant art that accurately reflects both the ‘ordinary’
and the ‘customary’ meaning of the terms in the claims.” Ferguson
Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350
F.3d 1327, 1338 (Fed. Cir. 2003).
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THE REJECTION OF CLAIMS 17 AND 20 AS UNPATENTABLE
OVER CHAUHAN, NAKAJIMA, MEARS, AND YAROSLAVSKY
The Examiner does not rely on the additional reference to
Yaroslavsky in a manner that might cure the defect in the Examiner’s
interpretation of “surface” as discussed above with respect to claim 1.
Accordingly, and for similar reasons, we do not sustain the Examiner’s
rejection of claims 17 and 20 as being obvious in view of Chauhan,
Nakajima, Mears, and Yaroslavsky.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–9, 12 101 Non-statutory
subject matter
1–5, 7–9, 12
17 101 Claiming a human
organism
17
18, 19 101 Claiming a human
organism
18, 19
13–19 112(a),
112(b)
Written
description,
indefinite
13–19
1–9, 12–14,
18, 19
103 Chauhan,
Nakajima, Mears
1–9, 12–14,
18, 19
17, 20 103 Chauhan,
Nakajima, Mears,
Yaroslavsky
17, 20
Overall
Outcome8
1–5, 7–9, 12,
17
6, 13–16, 18–
20

8 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim
on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim.”
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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 IN PART