Ron KIMMEL et al.

Patent Trials and Appeals Board

Sep 1, 2020

12772466 - (D) (P.T.A.B. Sep. 1, 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.
12/772,466 05/03/2010 Ron KIMMEL ITL.2923US (P53548) 3940
47795 7590 09/01/2020
TROP, PRUNER & HU, P.C.
PO Box 41790
HOUSTON, TX 77241
EXAMINER
NGUYEN, TRANG T
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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):
Inteldocs_docketing@cpaglobal.com
tphpto@tphm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RON KIMMEL, MICHAEL BRONSTEIN,
ALEXANDER BRONSTEIN, and EITAN ZEILER
____________

Appeal 2019-005816
Application 12/772,466
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1, 2, 4-8, 10, 11 and 18-21. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION

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 Intel Corporation.
Appeal Br. 3.

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Application 12/772,466
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THE INVENTION
Appellant claims a method and system for planning a surgical
procedure based on predicted results. (Spec. ¶ 1, Title).
Claim 1 is representative of the subject matter on appeal.
1. A method for planning a current medical procedure to be
performed on a body part of a current patient, the method comprising:
obtaining, using a computer, current first representation of a surface of
the body part of the current patient;
retrieving, using the computer, at least one record from a database of
records of previously performed medical procedures of previous patients, in
which each record includes parameters of a previously performed procedure
of said previously performed medical procedures, a first representation of
the body part of the previous patient prior to performance of the previously
performed procedure, and a second representation of a body part of the
previous patient after the performance of the previously performed
procedure, said at least one record being a best matching record based on a
similarity criterion;
creating a deformation map to characterize the transformation
between the first and second representations of the body part of the previous
patient, said map representing displacement between each of a plurality of
points on the first representation of the previous patient and corresponding
points on the second representation of the previous patient; and
applying the deformation map to the first representation of the surface
of the body part of the current patient to predict the transformation for the
current patient.

THE REJECTION
Claims 1, 2, 4-8, 10, 11, and 18-21re rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
Claims 1, 2, 4, 6–10 and 12–21 are rejected as unpatentable under 35
U.S.C. § 103(a) over Lu (US 2004/0146191 A1, published July 29, 2004),
Suetens (US 2008/0159608 A1, published July 3, 2008.
Claims 5 and 11 are rejected under 35 U.S.C. § 103(a) over Lu,
Suetens and Fotsch US 2004/0181430 A1, published Sept. 16, 2004.
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ANALYSIS
35 U.S.C. § 101 REJECTION
We will not sustain the rejection of claims 1, 2, 4-8, 10, 11 and 18-21
under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
ask, “[w]hat else is there in the claims before us?”
. . . To answer that question, . . . consider the
elements of each claim both individually and “as
an ordered combination” to determine whether the
additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The
Court] described step two of this analysis as 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 Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
(2012)) (citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
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Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims are directed to organizing
and manipulating information through mathematical correlations. (Final
Act. 3). The Examiner finds the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the additional elements, when considered both individually and as
an ordered combination, do not amount to significantly more than the
abstract idea. The Examiner finds that the additional elements merely add
computer functionality in the area of patient procedure planning, which may
increase the efficiency of the process, but does not confer patent eligibility
on an otherwise abstract idea. (Final Act. 4).
The Specification discloses that predicted outcome of a medical
operation is of concern to patients and surgeons and may especially be true
with respect to the fields of plastic, aesthetic, reconstructive, and cosmetic
surgery. In these fields, a body part may be reshaped or modified in order to
improve the appearance of the patient. Predicting the result is a major factor
in planning. Computer imaging and image processing techniques have been
utilized to predict the results of a surgical procedure. The method of the
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present invention includes providing a database of results of previously
performed surgical procedures (storing information), and acquiring a current
representation. (Spec. ¶ 4).
Claim 1 includes the steps of “creating a deformation map” and
“applying the deformation map to the first representation of the surface of
the body part of the current patient.” Appellant argues that these steps
cannot be performed practically in the human mind. (Reply Br. 2).
The Guidance explains that the abstract idea exception includes
“mental processes,” that is, acts that people can perform in their minds or
using pen and paper. See Guidance, 84 Fed. Reg. at 52 & nn. 14–15.
The Specification discloses:
Once a deformation map is obtained by calculation or retrieval,
the deformation map may be applied to the representation of the
input current surface. For example, a deformation map may
include a set of vector displacements associated with points or
facets of the pre-surgery surface representation. Application of
the deformation map to the current representation then applies
the vector displacement to each point or facet of the input
surface representation. The result of application of the
deformation map to the input surface is a representation of a
predicted surface. Typically, application of the deformation
map to the input surface is performed by the server. The
representation of the predicted surface may then be sent via the
network back to the remote station. At the remote station, the
representation of the predicted surface may be rendered as an
image and displayed on a display device, such as a monitor,
associated with the remote station. Thus, the patient or the
surgeon may review the displayed image of the predicted
surface to see whether the predicted results are satisfactory.

We fail to see, and the Examiner has not explained, how the applying
this step could practically be performed in the human mind. See the October
2019 Update at 7 (“Claims do not recite a mental process when they do not
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contain limitations that can practically be performed in the human mind, for
instance when the human mind is not equipped to perform the claim
limitations.”). While certain acts of collecting and analyzing information
may practically be performed in the human mind, the Examiner has not
established that the applying step of claim 1 can be performed in the human
mind. As such we will not sustain the rejection of claim 1 under 35 U.S.C.
§ 101.
35 U.S.C. § 103(a) REJECTIONS
We will not sustain this rejection because we agree with Appellant
that the prior art does not disclose “retrieving . . . at least one record from a
database of records of previously performed medical procedures of previous
patients,” and “said at least one record being a best matching record based
on similarity criterion” as required by claim 1. The Examiner relies on
paragraphs 19 and 21 of Suetens for teaching this subject matter. (Final Act.
7). However, Suetens teaches matching 2D pre-operative photographs with
3D pre-operative descriptions of the same patient — not of a previous
patient. Therefore, we will not sustain this rejection as it is directed to
claim 1.
We will also not sustain the rejections of the remaining claims under
35 U.S.C. § 103(a) because each of the remaining claims includes the
subject matter we find missing in Suetens, and the Examiner relies on
Suetens for teaching this subject matter in rejecting the remaining claims.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1, 2, 4-8, 10, 11
and 18-21 under 35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1, 2, 4-8, 10, 11
and 18-21under 35 U.S.C. § 103(a).
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DECISION
In summary:
Claim(s) 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4-8, 10
and 18-21
101 Ineligibility 1, 2, 4-8,
10, 11 and
18-21
1, 2, 4, 6-8, 10
and 18-21
103 Lu, Suetens 1–4, 6–10,
12–21
5, 11 103 Lu, Suetens,
Fotsch
5, 11
Overall
Outcome
1, 2, 4-8,
10, 11 and
18-21

REVERSED