MIM Software Inc.

Patent Trials and Appeals Board

Sep 21, 2020

15425748 - (D) (P.T.A.B. Sep. 21, 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.
15/425,748 02/06/2017 JONATHAN WILLIAM PIPER 014716-000017 1059
23380 7590 09/21/2020
TUCKER ELLIS LLP
950 MAIN AVENUE
SUITE 1100
CLEVELAND, OH 44113-7213
EXAMINER
YANG, WEI WEN
ART UNIT PAPER NUMBER
2667
NOTIFICATION DATE DELIVERY MODE
09/21/2020 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):
patents@tuckerellis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JONATHAN WILLIAM PIPER1
________________

Appeal 2019-001752
Application 15/425,748
Technology Center 2600
________________

Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and
JOHN F. HORVATH, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 21–40, which constitute all claims pending in this
application. Appeal Br. 3–9. Claims 1–20 have been canceled. Appeal
Br. 11. We have jurisdiction under 35 U.S.C. § 6(b). The Board conducts a
limited de novo review of the appealed rejections for error based upon the
issues identified by Appellant, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
We AFFIRM-IN-PART.

1 Appellant identifies MIM Software Inc. as the real party in interest.
Appeal Brief filed July 2, 2018 (“Appeal Br.”), at 2.
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Application 15/425,748

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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
In accordance with the teachings described herein, systems and
methods are provided for generating a seed plan for use in
radiation therapy. The system includes an image database, the
image database comprising image slices and a seed template
database comprising seed templates. A contour engine is
configured to generate target contour data to identify one or more
objects within each image slice. A reslicer engine is configured
to rotate the contoured image about an angle of rotation to
produce a resliced contoured image, such that the resliced
contoured image is resampled at an angle perpendicular to the
angle of rotation and intersecting an isocenter. The system also
includes a seed grid engine configured to generate a seed grid
perpendicular to the angle of rotation.
Spec. Abstract.2
Independent claim 21, reproduced below, illustrates the subject matter
of the appealed claims:
21. A method, comprising:
receiving first contour information that identifies a
feature of a first image;
determining a reference orientation relative to the feature
in the first image based on a viewpoint and at least one point in
the feature in the first image; and
generating second contour information, based on the first
contour information, that indicates the feature as viewed from
the reference orientation.

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: Appellant’s Specification,
filed February 6, 2017 (“Spec.”); the Final Action mailed November 30,
2017 (“Final Act.”); the Examiner’s Answer mailed Oct. 17, 2018 (“Ans.”);
and the Reply Brief filed Dec. 17, 2018 (“Reply Br.”).
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Application 15/425,748

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STATEMENT OF THE REJECTIONS
Claims 21–25 stand rejected under 35 U.S.C. § 101 as being directed
to a judicial exception to patent-eligible subject matter (an abstract idea).
Final Act. 3–5.
Claims 37–40 stand rejected under 35 U.S.C. § 101 as being directed
to patent ineligible subject matter. Final Act. 5.
Claims 21–26, 29–34, and 37–39 stand rejected under 35 U.S.C. § 103
as being unpatentable over Zaider (US 2004/0092786 A1; published May
13, 2004), Lure (US 2005/0084178 A1; published April 21, 2005), and
Kaufman (US 2001/0031920 A1; published Oct. 18, 2001). Final Act. 6–13.
Claims 27, 28, 35, 36, and 40 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Zaider, Lure, and Kaufman, and Wang
(US 61/280278; filed Oct. 30, 2009; subsequently published as
US 2011/0107270 A1 on May 5, 2011). Final Act. 13–18.

THE SECTION 101 REJECTIONS
Appellant does not challenge either of the two rejections under
35 U.S.C. § 101. Appeal Br. 3. Accordingly, we summarily affirm these
rejections of claims 21–25 and 37–40.

THE SECTION 103 REJECTIONS
Determinations and Contentions
The Examiner finds that Zaider discloses a method including
receiving first contour information that identifies a feature of a first image.
Final Act. 6–7 (mapping the recited first contour information to Zaider’s
prostate contour 138).
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The Examiner finds that Zaider discloses the claimed step of
“determining a reference orientation relative to the feature in the first image
based on a viewpoint and at least one point in the feature in the first image.”
Final Act. 7. Specifically, the Examiner relies on Zaider’s teaching of
virtual seeds projected in the x-z plane. Id. The Examiner reasons,
the axis of rotation, and .theta. the angle of rotation {Herein,
orientation and corresponding “the axis of rotation, and .theta.
the angle of rotation” is a reference orientation; and rotation
angle and rotation axis are considered as the viewpoint suitable
for medical procedure, the angle is the determined reference
orientation}[.]
Id. at 7–8 (citing Zaider ¶¶ 97–99) (emphasis omitted).
The Examiner relies on Kaufman for supporting the Examiner’s
interpretations of the terms “‘viewpoint’ and the corresponding ‘reference
orientation’ in the same technique application.” Id. at 8. The Examiner
determines,
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to further modify Zaider’s
method using Kaufman’s teachings by including applying
“viewpoint” and the corresponding “reference orientation” to
Zaider’s rotation transformation in order to adjust both the
position and viewing angle to a particular portion of interest in
the image and to identify specific image features.
Id. (citing Kaufman ¶¶ 71–75).
The Examiner further finds that Zaider discloses generating second
contour information. Id. at 9. Specifically, the Examiner interprets the
claimed “second contour information” as corresponding to Zaider’s
optimized prescription isodose curve 140. Ans. 25.
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The Examiner finds that Lure further supports “Zaider’s teaching of
generating a second contour based on the transformation applied on the first
contour.” Id. at 10. According to the Examiner,
Lure discloses generating second contour information,
based on the first contour information . . . to compute the optimal
unit quaternion rotation parameters. With this method, the
translation parameters are found using the difference between the
centroids of two images after the rotation. These parameters
formed an orthonormal transformation matrix for the next
iteration. This process is repeated until the root mean square
error between two closest voxels reaches a pre-defined value.
Once the iterative matching is completed, the transformation
matrix is then applied to re-slice (or transform) the second CT
image according to the first CT image’s geometrical position in
3D.
Final Act. 11 (citing Lure ¶¶ 28, 30–42).
The Examiner determines,
Zaider (as modified by Kaufman) and Lure are
combinable as they are in the same field of endeavor:
transformation of medical images. Therefore it would have been
obvious to one of ordinary skill in the art at the time the invention
was made to further modify Zaider (as modified by Kaufman)’s
method for facilitating generation of a plan for a medical
procedure using Lure’s teachings by including generating second
contour information {of reslicing the 30 volume according to a
planning plane to generate a second set of image slices} to
Zaider’s slicing to generate planar images in order to identify
specific image features.
Final Act. 11 (citing Lure ¶ 11).
Appellant argues, inter alia, that Zaider fails to disclose generating
second contour information. Appeal Br. 7. According to Appellant, “Zaider
merely discloses a single prostate contour outlined by the physician on an
ultrasound image.” Id.
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Appellant further asserts, “the combination of Lure and Zaider cannot
teach a transformation of a contour based on a reference orientation
[because], in Zaider, no contours are transformed at all.” Appeal Br. 8. In
support of this assertion, Appellant argues that the passages of Lure upon
which the Examiner relies for teaching second contour information, “merely
relate to a volumetric registration of CT images obtained a different times.”
Id. According to Appellant, paragraph 42 of Lure “merely describes
applying a transformation matrix (that results from the volumetric
registration . . . ) to a second CT image so as to coincide with a first CT
image.” Id. Appellant reiterates, “in Lure, second contour information is
never generated based on the first contour information [because] the
volumetric registration requires both CT images to already be respectively
contoured.” Id. (citing Lure ¶ 40, claim 5).

ANALYSIS
“Before considering the rejections . . . , we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974). We, therefore, start our review by determining the meaning of the
claim term “contour information.”
Appellant’s Specification states, “[c]ontouring is the process of
identifying an object within an image by outlining or otherwise
distinguishing the object from the rest of the image.” Spec. ¶ 3. Appellant’s
Specification then further explains what “contouring” means within the
context of the present invention:
Medical images, such as CT (computed tomography), MR
(magnetic resonance), US (ultrasound), or PET (positron
emission tomography) scans, are regularly contoured to identify
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certain pieces of anatomy within the image. For example, a
radiologist or oncologist may contour a medical image to identify
a tumor within the image. Software tools are available to assist
in this type of “manual” contouring, in which the physician uses
the software to create the contour by tracing the boundary of the
object or objects within the image.
Id.
In light of the Specification’s definition and usage of the term
“contouring,” the Examiner’s interpretation of Zaider’s optimized
prescription isodose curve 140 as corresponding to the claimed “second
contour information” is unreasonable. Zaider’s prescription isodose curve is
a representation in Zaider’s patent drawings of the radiation dose that is
prescribed over the area of the prostate. Zaider ¶¶ 14, 66–70. Unlike
Zaider’s contour of the prostate 138, the isodose curve 140 is not a
representation of an outline of the prostate or of any other structure that is
actually drawn onto a medical image. Id. ¶ 67 (“the bold black dotted line
138 outline[s] the contour of the prostate, and the solid curve 140 closer to
the prostate contour represents the 100% prescription isodose.”).
For these reasons, Appellant persuades us of error in the Examiner’s
obviousness rejection of independent claim 21. Accordingly, we reverse the
obviousness rejection of that claim and also of claims 22–26, 29–34, and
37–39, which either depend from claim 21 or otherwise recite substantially
similar limitations.
With respect to the remaining rejection of dependent claims 27, 28,
35, 36, and 40, the Examiner does not rely on Wang to cure the deficiency of
the obviousness rejection noted above. Final Act. 15. We, therefore, reverse
the obviousness rejection of these claims for the reasons we set forth in
relation to reversing the rejection of claim 21.
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Application 15/425,748

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CONCLUSION
In summary:

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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2017).

AFFIRMED-IN-PART

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
21–25, 37–40 101 Eligibility 21–25, 37–40
21–26, 29–34,
37–39
103 Zaider, Lure,
Kaufman
21–26,
29–34,
37–39
27, 28, 35, 36,
40
103 Zaider, Lure,
Kaufman,
Wang
27, 28, 35,
36, 40
Overall
Outcome
21–25, 37–40 26–36