Popilock, Robert et al.

Patent Trials and Appeals Board

Jan 15, 2020

13512032 - (D) (P.T.A.B. Jan. 15, 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.
13/512,032 05/25/2012 Robert Popilock 2009P01729WOUS 1041
24737 7590 01/15/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
BEKERMAN, MICHAEL
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/15/2020 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 ROBERT POPILOCK and MATTHEW J. WALKER

Appeal 2019-001274
Application 13/512,032
Technology Center 3600

BEFORE DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JOHN G. NEW, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 103 as obvious
and 35 U.S.C. § 101 as lacking patent-eligibility. Pursuant to 35 U.S.C.
§ 134(a), Appellant1 appeals from the Examiner’s decision to reject the
claims. 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. Appellant identifies the real party in interest as
Koninklijke Philips N.V., Eindhoven, NL. Appeal Br. 2.
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STATEMENT OF THE CASE
Claims 1–7, 10–17, and 19–31 stand finally rejected by the Examiner
as follows:
1. Claims 1–7, 10–17, and 19–31 under pre-AIA 35 U.S.C. § 103(a)
as obvious in view of Miller et al. (US 2006/0074286 A1, published Apr. 6,
2006) (“Miller”) and Segawa et al. (EP 1 486 902 A1, published Dec. 15,
2004) (“Segawa”). Final Act. 4.
2. Claims 1–7, 10–17, and 19–31 under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception to patent eligibility.
Final Act. 2.
Claims 1 and 17 are illustrative of the appealed subject matter and are
reproduced below (bracketed numbers have been added for reference to the
recited limitations in each claim):
1. A method, comprising:
[1] detecting a presence of a person interacting with a
medical imaging apparatus by at least one of a motion sensor
directly detecting motion by the person, an infrared sensor
directly sensing heat from the person, or an audio sensor
directly sensing sound made by the person;
[2] in response to the detected presence of the person
interacting with the medical imaging apparatus, requesting with
a configured processor an identification of the person via an
output region of a display of the medical imaging apparatus;
[3] receiving with the configured computer processor a
signal indicative of a response by the person to the request via
an input region of the display, and the signal includes the
identification of the person;
[4] comparing with the configured computer processor
the identification in the signal with an identification in an
electronic schedule for the medical imaging apparatus;
[5] confirming the identification of the person with the
configured processor in response to the signal matching the
identification from the electronic schedule; and
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[6] in response to the confirmed identification of the
person, presenting information via the display based on the
confirmed identification of the person.

17. An imaging system, comprising:
[1] an imaging apparatus which performs an imaging
examination and includes at least one of a CT scanner, a MR
scanner, a PET scanner, a SPECT scanner, an X-ray scanner, or
an Ultrasound scanner, and including:
[2] a patient examination region; and
[3] a display for presenting to a person and
receiving information via the display;
[4] a console that controls an operation of the imaging
apparatus;
[5] an electronic assistant that includes one or more
configured computer processors and selects one or more
programs from pre-recorded electronic media, [6] wherein the
one or more programs are presented via the display according to
a type of the person; and
wherein the display includes:
[7] an output region that presents the one or more
programs; and
[8] an input region that accepts at least one of
sound, optical, or tactile input directly from the person
wherein the one or more programs are selected by the person
based on an input received in the input region.

OBVIOUSNESS REJECTION
Claim 1
The Examiner found that Miller describes an imaging system as
required by claim 1, but not step [1] of “detecting a presence of a person
interacting with a medical imaging apparatus by at least one of a motion
sensor directly detecting motion by the person, an infrared sensor directly
sensing heat from the person, or an audio sensor directly sensing sound
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made by the person.” Final Act. 4. For this feature, the Examiner cited the
magnetic card reader described by Segawa. The Examiner found that the
magnetic card reader is “motion sensor” because “the card needs to be
moved into the proximity of the reader.” Id. The Examiner determined it
would have been obvious to have detected the presence of the patient as in
step [1] of claim 1, and confirmed the patient identity as in steps [2] and [3],
as “to ensure the correct patient is present for the procedure.” Id. at 5.
Appellant contends that the magnetic card reader “does not directly
detect the presence of a person by a motion sensor . . . . At best, the
magnetic card reader directly detects motion of a card and a card is not a
person.” Appeal Br. 13.
We agree with Appellant. The claim requires detecting the presence
of the person by a motion sensor “directly detecting motion by the person.”
Segawa discloses that a patient is given a consultation card (“IC card”) with
patient information. Segawa ¶¶ 3, 6. The card can be magnetic card. Id.
The imaging system comprises “a card reader capable of reading the
information in the IC card in a non-contact manner.” Id. at ¶ 33. “When the
patient brings the IC card 80 near the card reader 70,” the patient
identification information is read.” Id. at ¶ 48. Thus, the presence of the
patient is detected by the card reader, but the motion of the patient is only
being detected indirectly by virtue of the patient carrying the card. The
claim, however, requires the motion sensor to be “directly detecting motion
by the person,” but the card reader in Segawa does not directly detect
motion of the person. All limitations in a claim must be given when
determining a claim’s patentability over the prior art. In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983). Thus, giving the term “directly” appropriate
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weight, we agree with Appellant that Segawa’s card reader does not meet the
limitation of “a motion sensor directly detecting motion by the person.”
Claim 31 also requires “detecting a presence of a patient interacting
with an imaging apparatus according to a sensor which directly senses the
presence of the patient by at least one of motion.” (Emphasis added.) The
obviousness rejection is affirmed for the same reason as for claim 1.
The obviousness rejection of claims 1 and 31, and dependent claims
2–7 and 10–16 is reversed.

Claim 17
With respect to claim 17, the Examiner found that
Miller teaches [1] an imaging apparatus CT scanner including [2]
a patient examination region (Paragraph 0014) and [3] a display
(Paragraph 0015) [3] a console that controls the operation
(Paragraph 0030), and [5] an electronic assistant that selects pre-
recorded electronic media for presenting on the display
(Paragraph 0026). Miller teaches the person is a patient
undergoing an examination and that the information displayed
[6] is based on (or meant for) the fact that the person is a patient
(Paragraph 0022).
Final Act. 8 (bracketed numbering added to reference the limitations in
claim 17).
The Examiner further found that “Miller and Segawa do not appear to
specify [8] a sound sensor, an optical sensor, or a tactile sensor.” Final Act.
8. However, the Examiner found that “Segawa does teach a sensor
(Paragraph 0050). Sound sensors, optical sensors, and tactile sensors have
all been old and well known long before the filing of Applicant’s invention.”
Id. Based on this finding, the Examiner determined it would have been
obvious to one having ordinary skill in the art at the time the invention was
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made “to use any of these sensors to sense the presence of a patient since the
claimed invention is merely a combination of old elements and the
combination of each element merely would have performed the same
function as it did separately and a person of ordinary skill in the art would
have recognized that the results of the combination were predictable.” Id. at
10 (emphasis added).
Claim 17, however, does not require the system to sense the presence
of a patient and then request identification of the patient, as required by
claim 1. Thus, the Examiner’s rationale for combining Miller and Segawa is
based on a limitation that does not appear in claim 17.
Appellant argues that the magnetic card reader described by Segawa
does not accept input from the person. Appeal Br. 22 ([8] “an input region
that accepts at least one of sound, optical, or tactile input directly from the
person”). We agree with Appellant. However, the Examiner also asserts
that Segawa discloses an input interface. Final Act. 6. The Examiner states
that it would be obvious to use other input interfaces in Segawa (Final Act.
6), but the Examiner does not explain how such interfaces would enable
identification of the person standing in front of the imaging device as
required by Segawa. Segawa ¶¶ 33, 45, 48.
In sum, Appellant identified deficiencies in the Examiner’s rejection
of claim 17 based on the combination of Miller and Segawa. However, for
the reasons set forth below, we find that Segawa discloses or makes obvious
the limitations of claim 17. Because our rationale differs from the

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Examiner’s, we designate the rejection of claim 17, and the claims which
depend from it, as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Figures 3 and 4 of Segawa show an imaging system ([1] and [2] of
claim 17) which comprises a display 13 and input device 12. Segawa ¶ 37.
The display serves as the recited [3] display having [7] an output region.
Display 13 and input 12 are part of console 10. Segawa, Figs. 3, 4. The
console 10 controls “operation of the imaging system” (Segawa ¶¶ 8, 10, 12)
and therefore meets the corresponding limitation [4] of the claim. The
console 10 also comprises a “central processing apparatus” (Segawa, Fig. 1),
which serves as the claimed [5] electronic assistant.
The 12 “command/data input device” is “including a keyboard and a
mouse.” Segawa ¶ 37. A mouse is a device that is used “to control the
motion of a cursor in two dimensions in a graphical user interface. Clicking
or hovering can select files, programs or actions from a list of names, or (in
graphical interfaces) through pictures called ‘icons’ and other elements.”
Mouse (computing) 9.2 Therefore, the display of Segawa contains the input
region of [8] which receives “tactile input” through the mouse.
Alternatively, as found by the Examiner, touch screens which receive
“tactile input” were known at the time of the invention. Ans. 7–8.
Therefore, it would have been obvious to have employed a touchscreen as
the user input device for its known and established function. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398 (2007).

2 Mouse (computing), Wikipedia, Aug. 5, 2008. Listed on attached PTO-
892.
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The claim also requires that “[6] wherein the one or more programs
are presented via the display according to a type of the person.” Claim 17.
A technician operates console 10 (Segawa ¶ 32), which includes the display
13 and input device 12. The technician uses the console to control the
imaging apparatus (limitation [4] of claim 17). Id. Although Segawa
doesn’t explicitly state that the console and input device is used to select the
program to accomplish the scan as required by limitation [8] (“wherein the
one or more programs are selected by the person based on an input received
in the input region”), Segawa refers to controlling aspects of the imaging
system (Segawa ¶¶ 33, 37), and therefore it would have been obvious to the
ordinary skilled worker that such an imaging scan program would be
selected by the technician (the “type” of person of [6]) using the mouse or
touchscreen to initiate the scan. Claim 17. Segawa also describes a storage
device 16 for storing applications that is connected to the CPU of the
console. Segawa ¶ 37, Fig. 1. The applications are “for storing several kinds
of application programs and several kinds of calculation/correction data files
necessary for operating the present apparatus.” Id. Therefore, it would have
been obvious to one of ordinary skill in the art to have selected those
programs (“pre-recorded electronic media”) from the storage device 16
using a mouse of touchscreen.
In sum, we find that Segawa describes or suggests all the limitations
of claim 17, and we accordingly enter a new ground of rejection for that
claim. Because claims 23–25, 30, and 31 are not separately argued they fall
with claim 17.

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Claim 19
Appellant separately argues claim 19 (Appeal Br. 23), which depends
from claim 17 and further recites “wherein the selected one or more
programs request identification information from the person interacting with
the display and the input includes the identification information.”
As discussed by Appellant, Segawa automatically identifies the
person when standing in front of the card reader. Segawa ¶ 50. Segawa,
however, does not describe selecting a program which requests information
from the person as required by the claim. However, the Examiner states that
it would have been obvious to one of ordinary skill in the art at the time the
invention was made “to include a prompt on the display showing a user
where to enter their information after detection of a presence of a user in
order to save power and make the system more user friendly.” Final Act. 5.
Appellant addressed the Examiner’s discussion about “printed matter,” but
did not addressed that Examiner’s rationale for including the request for
identification information. Appeal Br. 23–24. Consequently, we affirm the
rejection of claim 19 for the reasons set forth by the Examiner. Because this
claim depends from claim 17, however, we designate the affirmance a new
ground of rejection for the reasons set forth above with respect to claim 17.

Claims 20–22
Appellant separately argues dependent claim 20, which depends from
claims 19 and 17, and further recites “wherein the person is a patient and the
electronic assistant confirms the patient’s identification based on the input
and a patient identification from an electronic schedule.” The Examiner
found that Segawa describes an electronic schedule. Final Act. 4–5.
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Appellant contends that this limitation is not described by Segawa.
Appeal Br. 24–25.
We do not agree.
As explained in the Answer, Segawa contains the following
disclosure:
the operation console means 10 compares the information
identifying the subject to be examined read by the information
reading means 70 with information identifying a current subject
to be examined managed by said operation console means 10
itself, and when they do not match, displays information
indicating the mismatch on said display means 32
Segawa ¶ 19.
We agree with the Examiner that the comparison of the identified
person to “a current subject to be examined managed by said operation
console means 10 itself” indicates, or reasonably suggests, that an electronic
schedule is being consulted to determine the “current subject to be
examined.” Id. Appellant did not address paragraph 19 in their argument.
Accordingly, the rejection of claim 20, and dependent claims 21 and
22, is affirmed. Because these claims ultimately depend from claim 17,
however, we designate the affirmance a new ground of rejection for the
reasons set forth above with respect to claim 17.

Claim 26
Appellant separately argues dependent claim 26 (Appeal Br. 25),
which depends from claim 17 and further recites “wherein the presented one
or more programs includes information about the imaging examination.”
Segawa describes displaying information to the technician about the
scan. For example Segawa teaches “13 designates a display device (CRT)
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for displaying information on a scan plan including information identifying
the subject.” Segawa ¶ 37. The “scan plan” is “information about the
imaging examination” as required by claim 26 because the “scan” relates to
the imagine procedure (id.). Appellant did not address this disclosure in
Segawa. Accordingly, the obviousness rejection of claim 26 is affirmed.
Because this claim depends from claim 17, however, we designate the
affirmance a new ground of rejection for the reasons set forth above with
respect to claim 17.

Claim 28
Appellant separately argues dependent claim 28 (Appeal Br. 26),
which depends from claim 17 and further recites “wherein the presented one
or more programs includes a post-imaging examination survey, and
responses from the patient to the post-imaging survey are received by the
electronic assistant via the input region of the display.”
In rejecting claim 17 based on Segawa, we considered the [5] electric
assistant to be the console 10.
The Examiner, however, cited the “console” in paragraph 30 of Miller
as the electronic assistant. Final Act 8. Paragraph 30 of Miller does not
describes a console as asserted by the Examiner. It describes a control room
404 and display controller 402. The display controller receives commands
from the control room 404 to display renderings on the patient display 104.
Miller ¶ 31. Thus, the display controller does not include “programs from
pre-recorded electronic media” and therefore does not meet the limitation of
[5] the electronic assistant of claim 17. The control room 404 “sends out
information based on data received from various peripheral devices 408.”
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Miller ¶ 30. Miller does not disclose that 404 “selects one or more programs
from pre-recorded electronic media” as required by [5] of claim 17.
Consequently, Miller does not meet the electric assistant of claim 28.
Console 10 displays scan programs and other “kinds of application
programs.” Segawa § 37; supra at p. 8. The claim requires “post-
examination surveys” to be presented from the patient. The “survey”
information is printed matter. Claim limitations directed to the content of
information and lacking a requisite functional relationship to the substrate
upon which they are applied are not entitled to patentable weight because
such information is not patent eligible subject matter under 35 U.S.C. §
101.” Praxair Distribution, Inc. v. Mallinckrodt Hosp., 890 F.3d 1024, 1032
(Fed. Cir. 2018). To be given patentable weight, the printed matter must be
“functionally related to the substrate on which the printed matter is applied.
E.g., In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015); In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983).” Praxair, 890 F.3d at 1031–1032. In this
case, the “survey” does not have the requisite functional relationship to the
substrate because it does not change how the method is performed or have
any function, other than the informational content, itself, of the survey.
Consequently, we conclude that having a program that displays a survey is
not distinguishable from the applications described in Segawa.
The claim requires that the patient responds to the survey via the input
region of the electronic assistant. Any person can interface with console 10
of Segawa. We consider the limitation of claim 28 to be satisfied because
the console is capable of being used by a patient. We reach this conclusion
because claim 17 is directed an imagining system, and does not require the
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performance of a specific method. Therefore, Segawa satisfies the
requirements of claim 28.
Accordingly, the obviousness rejection of claim 28 is affirmed.
Because this claim depends from claim 17, however, we designate the
affirmance a new ground of rejection for the reasons set forth above with
respect to claim 17.

Claim 29
Appellant separately argues (Appeal Br. 27) dependent claim 29,
which depends from claim 17 and further “recites wherein the type of the
person includes at least one selected from a group comprising of an operator,
a service technician, and a manufacturing technician.”
Segawa teaches that a technician uses the console 10 to control (i.e.,
operate) the imagining apparatus. Segawa ¶ 32. The type of person is
therefore an “operator” as recited in the claim. The rejection is therefore
affirmed. Because this claim depends from claim 17, however, we designate
the affirmance a new ground of rejection for the reasons set forth above with
respect to claim 17.

Summary
Because our rationale for affirming the obviousness rejection of claim
17 and dependent claim 19–30 differs from the Examiner’s, we designate it
as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Claims 17
and 19–30 are rejected under 35 U.S.C. § 103 as obvious in view of Segawa.
The obviousness rejection of 17, 19–30 based on Segawa and Miller is
reversed.
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REJECTION BASED ON SECTION 101
Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs, Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If it is determined that the claims are directed to an ineligible concept, then
the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. The Court explained that
this step involves
a search for an ‘inventive concept’ — i.e., an element or
combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’
Alice, 573 U.S. at 217–18 (citing from Mayo, 566 U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
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nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
The PTO has published revised guidance on the application of
35 U.S.C. § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
(“Eligibility Guidance”). This guidance provides additional direction on
how to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Eligibility Guidance, looks at the
specific limitations in the claim to determine whether the claim recites a
judicial exception to patent eligibility. In Step 2A, Prong Two, the claims
are examined to identify whether there are additional elements in the claims
that integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” Eligibility
Guidance, 84 Fed. Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
inventive concept to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. Eligibility Guidance,
84 Fed. Reg. 56. In making this determination, we must consider whether
there are specific limitations or elements recited in the claim “that are not
well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present” or whether the claim
“simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
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exception, indicative that an inventive concept may not be present.”
Eligibility Guidance, 84 Fed. Reg. 56 (footnote omitted).
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

Claim 1
Discussion
Claim 1 recites that it is a “method.” A method is one of the broad
statutory categories of patent-eligible subject matter under 35 U.S.C. § 101.
We thus proceed to Step 2A, Prong One, of the Eligibility Guidance to
determine whether the method is directed to a judicial exception to patent
eligibility.
Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The Examiner found that the claims are directed to an abstract idea.
Final Act. 2.
In step [1] of the claim, the presence of a person is detected by a
motion detector. In response, identification of the person is requested in step
[2] and a signal indicative of the response is received with a computer
processor in step [3].
The method further comprises comparing the signal with an electronic
schedule (step [4]). Although this step is performed by a computer, it could
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be accomplished in the human mind by making an observation or evaluation.
This step therefore falls within the mental processes grouping of abstract
ideas. Eligibility Guidance, 84 Fed. Reg. 52 (“(c) Mental Processes—
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion)”). The next step of the claim, step [5], is
“confirming the identification of the person with the configured processor in
response to the signal matching the identification from the electronic
schedule.” This step could also be performed in the human mind by making
the evaluation that the identity of the person matches a person in the
electronic schedule.
We, therefore, conclude that the claim recites “Mental processes” in at
least steps [4] and [5], which is grouping (c) of the three categories of
abstract ideas set forth in the Eligibility Guidelines. We, therefore, proceed
to Step 2A, Prong Two, of the analysis to determine whether the abstract
ideas are integrated into a practical application.

Step 2A, Prong Two
Prong Two of Step 2A under the Eligibility Guidelines asks whether
there are additional elements that integrate the exception into a practical
application. As in the Mayo/Alice framework, we must look at the claim
elements individually and “as an ordered combination” to determine whether
the additional elements integrate the recited abstract idea into a practical
application. As discussed in the Eligibility Guidelines, “[a] claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that impose a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
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designed to monopolize the judicial exception.” Eligibility Guidance, 84
Fed. Reg. 54.
Integration into a practical application is evaluated by identifying
whether there are additional element individually, and in combination, which
go beyond the judicial exception. Id. at 54–55. As explained in the October
2019 Update to Subject Matter Eligibility3 “first the specification should be
evaluated to determine if the disclosure provides sufficient details such that
one of ordinary skill in the art would recognize the claimed invention as
providing an improvement.” PEG Update 12. According to the Eligibility
Update, the “specification need not explicitly set forth the improvement, but
it must describe the invention such that the improvement would be apparent
to one of ordinary skill in the art.” Id.
Appellant cites to the Specification as describing the advantages of the
claimed method and the technological improvement to the field of medical
imaging. Appeal Br. 9–10. Specifically, the Specification discloses:
When used to present imaging examination information
to a patient, a radiology technician (or other authorized person)
can prepare the imaging apparatus 100 for scanning the patient
concurrently as the interactive electronic assistant 120 goes
over various information with the patient such as verifying the
patient’s identification, explaining the examination, providing
instructions for the examination, etc. This may reduce the
amount of time a patient is in the examination room, which may
improve the examination experience for the patient. Moreover,
the information presented to the patient may depend on various
factors such as patient age, a language of the patient, and/or
other patient specific information, which may facilitate

3 Available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (last accessed Nov. 15, 2019) (“PEG Update.”)

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reducing any patient anxiety and/or improving the likelihood
that the instructions will be followed. Furthermore, the
information presented can be used to facilitate patient
verification.
Spec. 5:21–31.
The technological improvement described by the Specification, and in
the Appeal Brief, is therefore “scanning the patient,” verifying the patient’s
identity, and providing patient specific information to the patient. The step
of verifying the patient’s identity corresponds to the abstract idea of step [5].
The improvement cannot be to the abstract idea, itself. An additional
element beyond the judicial exception is necessary to establish integration of
the exception into a practical application. Eligibility Guidance, 84 Fed. Reg.
54–55. Therefore, step [5] cannot alone impart eligibility to the claims.
The Specification describes “scanning the patient” to verify the
patient’s identity. Spec. 5:21–31 (reproduced above). This corresponds to
step [1] of claim 1 of “detecting a presence of a person interacting with a
medical imaging apparatus by at least one of a motion sensor directly
detecting motion by the person.” The motion sensor performs as a motion
sensor would conventionally perform, namely detecting the motion of the
person to determine the presence of the person at the medical imaging
apparatus. The subsequent steps in the claim do not improve how the
detection is accomplished. Appellant did not provide evidence of a
technological improvement to the “motion sensor.” Thus, the claims are
distinguishable from those in Thales Visionix, Inc. v. U.S., 850 F.3d 1343
(Fed. Cir. 2017) in which claims directed to using inertial sensors were
found to be patentable under § 101. In Thales, the improvement was found
to be in the placement of inertial sensors on a moving platform and the
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reference frame in which the gravitational field is measured. The court
found that the Thales claims were patent eligible under § 101 because they
“are directed to systems and methods that use inertial sensors in a non-
conventional manner to reduce errors in measuring the relative position and
orientation of a moving object on a moving reference frame.” Id. at 1348.
Evidence was not presented here that the motion sensor, itself, was used in
an unconventional way to improve the motion detection.
After detection is accomplished, a request is made to confirm
“identification of the person via an output region of a display of the medical
imaging apparatus” and then receive “a signal indicative of a response by the
person to the request via an input region of the display” that includes
identification of the person. Steps [2], [3] of claim 1. In the subsequent
steps, the signal in step [4] is compared to an electronic schedule and then a
match is confirmed in step [5] between the identified person and the
electronic schedule. In response, [6] information is presented to the person
based on the confirmed identification.
Appellant contends that these steps integrate the judicial exception
into a practical application. They cite McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) and BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) in
support of their contention. Appeal Br. 10; Reply Br. 7.
This argument does not persuade us that the Examiner erred in
rejecting the claims as ineligible for a patent. In McRO, the court found that,
although the McRO claims involved the manipulation of data, e.g.,
generating morph weight sets to animate lip and facial expressions of three
dimensional characters, the claimed “automation goes beyond merely
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‘organizing [existing] information into a new form’ or carrying out a
fundamental economic practice.” McRO, 837 F.3d at 1315 (citation
omitted). Instead, the court found that the “claimed process uses a combined
order of specific rules that renders information into a specific format that is
then used and applied to create desired results: a sequence of synchronized,
animated characters.” Id. McRO found that the recited rules “are limiting in
that they define morph weight sets as a function of the timing of phoneme
sub-sequences.” McRO, 837 F.3d at 1313. The claims were found to be
directed to a “technological improvement over the existing, manual 3-D
animation techniques,” McRO, 837 F.3d at 1316.
In finding the claim patent-eligible, McRO noted that the “abstract
idea exception has been applied to prevent patenting of claims that abstractly
cover results where ‘it matters not by what process or machinery the result is
accomplished.’ [O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113,]; see also
Mayo, 132 S.Ct. at 1301.” McRO, 837 F.3d at 1314. McRO stated that
therefore, a court must “look to whether the claims in these patents focus on
a specific means or method that improves the relevant technology or are
instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery.” McRO, 837 F.3d at 1314.
Here, the claims recite a specific order of steps that result in the
display of information to person “based on the confirmed identification of
the person.” Claim 1. However, the steps themselves do not recite how the
identification request is made, nor how the identification signal is received,
nor how the information is presented to the confirmed person. Unlike in
McRO where the rules dictated how the result was achieved (e.g.,
“generating morph weight sets to animate lip and facial expressions of three
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dimensional characters” McRO, 837 F.3d at 1315), the claims here do not
invoke a specific means for accomplishing the identification of the person
and display of information, but rather claim the desired result (“requesting”
identification; “receiving” a signal; “presenting information”).
Appellant states that the steps “act in concert” and that each step is
“specifically defined.” Appeal Br. 11. We agree that the steps are
“specifically defined”; however, the specificity is only with respect to the
desired result, not to how the result is accomplished. The steps recited in the
claim do not, as in McRO, recite a specific way in which the result is
accomplished. As to the steps “acting in concert,” Appellant has not
explained the steps as a whole result in a technological improvement.
Appellant makes statements that the claims are “’building blocks’ into
‘something’” that “reflect a specific implementation.” Appeal Br. 11. We
do not agree. The steps as a whole result in presenting information to the
identified person. A “technical effect” is not achieved as in McRO
(Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1167 (Fed. Cir. 2019). Here,
the presented “information” is just an output and unrelated to the steps in the
claim, except by being selected “based on” the identification of the person.
The outputted information is not an improvement to existing information as
was the 3D-animation in McRO.
Appellant also cites BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350–51 (Fed. Cir. 2016). In BASCOM, the
court held the claims eligible for a patent because:
The claims do not merely recite the abstract idea of filtering
content along with the requirement to perform it on the Internet,
or to perform it on a set of generic computer components. Such
claims would not contain an inventive concept. . . . [Rather] the
patent describes how its particular arrangement of elements is a
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technical improvement over prior art ways of filtering such
content.”
Id.
Here, Appellant failed to identify a particular arrangement of elements
that results in a technological improvement. It is true that the steps are
performed in particular order, but this order of steps does not improve a
motion sensor, a computer’s function, or the manner in which information
displayed to the person.
Appellant argues that the claims require a computer and computer and
computer implementation. Appeal Br. 9. However, “[s]teps that do nothing
more than spell out what it means to ‘apply it on a computer’ cannot confer
patent-eligibility. Alice, 134 S. Ct. at 2359.” Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1370–71 (Fed. Cir. 2015).
For the foregoing reason, we conclude that the identified judicial
exceptions of claim 1 are not integrated into a practical application.

Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B of the Eligibility
Guidelines, which asks whether there is an inventive concept. In making
this Step 2B determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present.”
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Eligibility Guidance, 84 Fed. Reg. 56 (footnote omitted). We must also
consider whether the combination of steps perform “in an unconventional
way and therefore include an ‘inventive concept,’ rendering the claim
eligible at Step 2B.” Id. In this part of the analysis, we must also consider
“the elements of each claim both individually and ‘as an ordered
combination’” must be considered “to determine whether the additional
elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217.
Appellant argues:
Conventional practice does not include detecting a person
interacting with the medical imaging system. Conventional
practice relies on a radiological technician or other person to
initiate interaction with the medical imaging device through a
device that the person understands how to operate.
Appeal Br. 10.
Appellant argues that the “claimed aspects provide an improvement to
the technical field of medical imaging, including providing the advantages
discussed above, via the executing the series of process ‘rules’ or steps as
defined by the claims and paraphrased above.” Appeal Br. 10
Appellant’s contention that “[c]onventional practice does not include
detecting a person interacting with the medical imaging system” is not
supported the evidence. Appeal Br. 10. As discussed above, Segawa
describes using card reader to detect the presence of a person at an
imagining apparatus. Segawa 50 (“When the patient A entering the
examination room brings his IC card 80 near that position [on the gantry of
the imaging apparatus], identification information on the patient A is
automatically read.”). Although Segawa does not describe a motion sensor,
the publication established that it was known in the art to detect a person at
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an imaging apparatus. Thus, Appellant’s argument does not persuade us that
“detecting” the presence of the person at the imagining apparatus provides
an inventive step to the claims. In making this determination, we recognize
that the rejection was reversed based on Segawa and Miller, but this was
because the Examiner characterized the card reader in Segawa as a “motion
detector,” an interpretation of the term which we found to be erroneous.
Thus, our determination was not based on the finding it was unconventional
to detect a person interacting with a medical imaging system, but rather on
the Examiner’s failure to show the specific device recited in the claims.
In considering the claim as an ordered combination, we have not been
specifically directed to a combination of additional elements that act in
concert in an unconventional manner to identify the patient and present
information on the display to the person. Steps [2] and [3] of the claim
identify the person in response to receiving an input on the display.
Appellant has not explained how this process is unconventional. Instead, it
appears to be a conventional use of generic computer components to ask a
question (e.g., “are you John Doe?”) and respond to it (“Yes, I am”). Once
the confirmation is made as a part of this ordered process, information is
presented in step [5]. But Appellant has not argued that the manner in which
the information is presented is unconventional. For example, the
Specification discloses that the information can be obtained from an
electronic media library, but does not describe how such information is
retrieved. Spec. 6:31–7:5.
For the foregoing reasons, the § 101 rejection of claim 1 is affirmed.
Claim 31 has similar limitations and is affirmed for the same reasons.
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Dependent claims 2–7 and 10–16 were not separately argued and therefore
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

Claim 17
Claim 17 is directed to an imaging system comprising an imaging
apparatus and electronic assistant that includes configured processors. The
apparatus and processors are “machines,” a statutory category of invention
listed in 35 U.S.C. § 101. The Examiner did not identify limitations in claim
17 which recited abstract ideas. Final Act. 2–3. Consequently, we reverse
the rejection of claim 17, and dependent claims 19–30.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–7, 10–
17, 19–
31
103 Miller, Segawa 1–7, 10–
17, 19–31

17, 19–
30
103 Segawa 17, 19–
30
1–7, 10–
17, 19–
101 Eligibility 1–7 and
10–16, 31
17, 19–30
Overall
Outcome
1–7 and
10–16, 31
17, 19–
30

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)(iv).

AFFIRMED