SOLDEA, OCTAVIAN et al.

Patent Trials and Appeals Board

Jan 23, 2020

14762908 - (D) (P.T.A.B. Jan. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/762,908 07/23/2015 OCTAVIAN SOLDEA 2012P01210WOUS 1685
24737 7590 01/23/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
MOYER, ANDREW M
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
01/23/2020 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 OCTAVIAN SOLDEA, GERARDO SANTIAGO FLORES, and
RADU SERBAN JASINSCHI
____________________

Appeal 2019-000904
Application 14/762,908
Technology Center 2600
____________________

Before JOSEPH L. DIXON, ROBERT E. NAPPI, and JUSTIN BUSCH,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
ROBERT E. NAPPI.

Opinion Dissenting-in-part filed by Administrative Patent Judge
JUSTIN BUSCH.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 through 5, 11, 13 through 15, 20, 24, and 26
through 32. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Koninklijke Philips N.V. is the real party
in interest. Appeal Br. 3.
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INVENTION
The invention is directed to an apparatus for processing of medical
images. Spec. Abstract. Claim 1 is illustrative of the invention and is
reproduced below.
1. An apparatus for processing an image to determine
medical information, the apparatus comprising:
a first processor configured to receive the
image which represents characteristics of a part of a
human or animal body, wherein the first processor is
further configured to determine an image associated
set of signatures from the image only, and wherein the
image associated set of signatures provides a unique
representation of characteristics of a corresponding
image and is represented by less data than the
corresponding image;
a database memory storage configured to store
a plurality of sample images, each sample image
comprising a sample associated set of signatures and
medical data associated with said each sample image,
wherein the sample associated set of signatures
provides a unique representation of characteristics of a
corresponding sample image and is represented by
less data than the corresponding sample image;
a second processor configured to search the
entire database memory storage and determine at least
one matching sample based on a comparison between
the image associated set of signatures and the sample
associated set of signatures; and
a third processor configured to determine the
medical information for the image based on the at
least one matching sample and the medical data
associated with the at least one matching sample.

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EXAMINER’S REJECTION2
The Examiner rejected claims 1 through 5, 11, 13 through 15, 20, 24,
and 26 through 32 under 35 U.S.C. § 101 for being directed to patent-
ineligible subject matter. Final Act. 5.
The Examiner rejected claims 1 through 5, 11, 13 through 15, 20, 24,
and 26 through 32 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement. Final Act. 4.
The Examiner rejected claims 24 and 29 through 32 under 35 U.S.C.
§ 102(e) as anticipated by Zankowski (US 2012/0027271 A1, published Feb.
2, 2012). Final Act. 6–10.
The Examiner rejected claims 1 through 5, 11, 13 through 15, 20, and
26 through 28 under 35 U.S.C. § 103 as being unpatentable over Zankowski,
and Matsumoto (US 2006/0103670 A1, published May 18, 2006). Final
Act. 11–16.

ANALYSIS
Rejection under 35 U.S.C. § 101
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.

2 Throughout this Decision we refer to the Appeal Brief filed June 22, 2018
(“Appeal Br.”); Reply Brief filed November 15, 2018 (“Reply Br.”); Final
Office Action mailed January 23, 2018 (“Final Act.”); and the Examiner’s
Answer mailed September 17, 2018 (“Ans.”).
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There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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) (“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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 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))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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 (citation omitted). “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].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office (“USPTO”) published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
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Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that guidance, we first determine whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan.
2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
DISCUSSION
The Examiner determined the claims are not patent eligible because
they are directed to a judicial exception without reciting significantly more.
Final Act. 5–6. Specifically, the Examiner finds the claims are directed to
the abstract idea of data recognition and storage. Final Act. 4 (citing
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Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014)).
Appellant argues the claims are not directed to an abstract idea but
rather directed to image processing of digital images, which is not a process
that can be performed by a human being. Appeal Br. 12–15. Further,
Appellant argues that the claims are directed to solving a technical problem
of reducing the computational resources of comparing a large number of
reference images and as such recite significantly more than the abstract idea.
Appeal Br. 17–18, Reply Br. 5–6 (citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1, 24, and 32 under 35 U.S.C. § 101,
because the record does not support the Examiner’s determination that the
claims do not recite an improvement in a computer related technology.
Each of the independent claims recites limitations directed to
receiving an image (a data gathering or observation element), and searching
a database to determine a match (a data analysis or evaluation element).
Thus, the claims include limitations which recite an abstract mental process.
However, we concur with Appellant that the claimed invention is necessarily
rooted in computer technology and improves the operation of the computer
network, as were the claims in DDR Holdings. Thus, we consider the claims
to be drawn to a practical application of the abstract idea. In DDR Holdings,
the claimed invention created a hybrid web page that combined
advantageous elements from two web pages, bypassing the expected manner
of sending a visitor to another party’s web page, in order to solve the
internet-centric problem of retaining website visitors. DDR Holdings, 773
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F.3d at 1257–59. Here, each independent claim recites a determination that
an image associated with signatures from the image only, that provide a
representation of a characteristic of the image which is less data than the
corresponding image; that a comparison is made between the image
associated with the signatures and other images to determine a match; and
the match is used to determine medical information. Appellant’s
Specification identifies that the use of images associated with signatures in
the matching is to reduce computational resources and generate more
accurate reliable data as it reduces the number of images used in the image
comparison. Specification p. 2, ll. 1-–11. Further, Appellant’s Specification
discusses that the use of signatures represents significantly less data than that
used to represent the image and allows for efficient communication between
units. Specification, p. 3, 5-28. As such, the claims are directed to an
improvement in a computer-related technology, i.e., more efficiently finding
matches and medical information associated with medical images. Thus,
similar to DDR Holdings, the instant claims overcome a problem specifically
arising in computer memory devices, and thus are necessarily rooted in
computer technology and improve the operation of the computer. Further,
we concur with Appellant’s argument, on page 6 of the Reply Brief, that
their claims are more similar to those at issue in Finjan, Inc. v. Blue coat
Sys., Inc., 879 F.3d. 1299 (Fed. Cir. 2018) than those at issue in Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016). In
Finjan, the court held the “the claims recite more than a mere result. Instead
they recite specific steps … that accomplish the desired result.” Finjan, 879
F.3d at 1305. Here, the claims recite specific steps determining an image
with a set of signatures and performing a search of the database to determine
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a match between the image associated with the signatures and samples
images in a database associated with signatures. It is these specific steps
that produce the result of improved efficiency. As such, the independent
claims, and the claims which depend thereupon, recite patent-eligible subject
matter. Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 24, and 32, and the claims which depend thereupon,
under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.

Rejection under 35 U.S.C. § 112
The Examiner rejected claims 1 through 5, 11, 13 through 15, 20, 24,
26 through 32 as not complying with the written-description requirement
because the Specification does not demonstrate Appellant had possession of
the claimed “a unique representation of characteristics of a corresponding
image” or “search the entire database memory storage.” Final Act 4.
Appellant argues that the originally filed Specification provides
support for the signatures being a unique representation of a characteristic of
the image. Appeal Br. 9 (citing the published application US 2015/0356733
A1 ¶¶ 12, 51, 92, 95, 96 and 104), Reply Br. 3–4. Appellant states:
a dictionary definition of “unique” as “belonging or connected
to (one particular person, group, or place).” A synonym for
“unique” is “specific.” A person having ordinary skill in the art
would clearly understand the abovementioned paragraphs -
presented in the context of the entire specification, and not in
vacuum - to provide adequate description and support for the
claimed limitation of “a unique representation of characteristics
of a corresponding image.”

Appeal Br. 9. Further, Appellant asserts that the skilled artisan would
understand the Specification to disclose the limitation of searching the entire
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database, as the Specification discusses searching a database and there is no
limiting language to indicate anything other than the whole database is
searched. Appeal Br. 9–10, Reply Br. 3–4.
We are not persuaded of error in the Examiner’s written description
rejection with respect to the “unique representation of characteristics”
limitation, however we are persuaded of error with respect to the “search the
entire database” limitation. The written-description requirement serves “to
ensure that the inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later claimed by him;
how the specification accomplishes this is not material.” In re Wertheim,
541 F.2d 257, 262 (CCPA 1976). Here, as the Examiner identifies, the
signature representative of a unique representation of a characteristic in a
corresponding image is not discussed in the originally filed claims or the
Specification. We have reviewed the sections of Appellant’s Specification
cited in the arguments discussed above and do not find that they discuss that
the signatures are unique as argued by Appellant. The Specification
identifies the signatures as being representative of portions of the images,
(an indication of a property of or derived from the image) but does not
identify that they are specific to the image or belong to one particular
person, group or place (a one of a kind characteristic of the image).
Specification 3, ll. 23–25. Further, Appellant’s Specification discusses
signatures being matched with signatures of other images, which also
suggest that the signatures are not unique, associated with one particular,
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person group or place. See Spec. p. 13, ll. 9–12.3 Thus, Appellant’s
arguments have not persuaded us the originally filed Specification
demonstrates possession of the limitations directed to the “unique
representation of characteristics.” As such we are not persuaded of error in
the Examiner’s rejection under 35 U.S.C. § 112 as directed to this limitation.
With respect to the limitation directed to searching the entire database,
the Examiner has not responded to Appellant’s arguments. We have
reviewed Appellant’s arguments, and we concur that the skilled artisan
would consider the discussions of searching the database, absent any
discussion that only part of the database is searched, to demonstrate
possession of the limitation as directed to searching the whole database. As
such we are persuaded of error in the Examiner’s rejection under 35 U.S.C.
§ 112 as directed to this limitation.

Rejection under 35 U.S.C. § 102
Appellant argues that the Examiner’s rejection is in error as
Zankowski does not teach the limitation directed to the images associated
with a set of signatures provides a unique representation of a characteristic
of an image as recited in independent claims 24 and 32. Appeal Br. 19–20.
Specifically, Appellant argues that Zankowski’s sparse landmark signature is

3 We also note the Examiner’s and Appellant’s discussion of signatures in
cryptography are of no consequence to this case. Answer 16, Reply Br. 3.
Neither the claims or Appellant’s Specification relate to cryptograph.
Signatures in cryptography are used for verifying authenticity and do not
necessarily relate to the characteristics of the data (image) as in Appellant’s
claims and Specification.
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not a unique signature, as one landmark signature can be mistaken for a
different landmark signature. Appeal Br. 19–20 (citing Zankowski ¶¶ 23–
26), Reply Br. 13.
The Examiner responds to Appellant’s arguments by finding that
Zankowski teaches the sparse landmark signatures serve as an index.
Answer 18. The Examiner states:
Those of ordinary skill in the art would understand that the
signature would be unique so that it is capable of being an
index for the knowledge-base. Indices by their very function are
unique in order to differentiate each and every entry. Applicant
argues that ¶ 0026 of Zankowski indicates shared signatures.
On the contrary, that paragraph merely states that the same
body parts will have the same number of landmarks – which
doesn’t indicate that signatures or landmarks themselves are
identical – just the number.
Answer 18–19.
While we concur with the Examiner, Zankowski does teach using a
signature landmark as an index we do not find that this teaching meets the
definition of unique discussed above, i.e., specific to the image or belong to
one particular person, group or place. For example, Zankowski discusses
the three points of bone can be used as the signature to identify the pelvic
girdle, a structure common to most people, and thus not unique to a specific
person. See Zankowski ¶ 25. Further, as discussed by Appellant, one
landmark signature can be mistaken for a different landmark signature. See
Zankowski ¶ 26, and thus not unique to a specific group or place. Thus, the
Examiner has not shown that the set of signature landmarks (or index
generated therefrom) provide a unique representation. Accordingly, we do
not sustain the Examiner’s anticipation rejection of independent claims 24
and 32 and dependent claims 29 through 31.
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Rejection under 35 U.S.C. § 103
Appellant argues that the obviousness rejection of independent claim
1 is in error as the claim similarly recites a limitation directed to the images
associated with a set of signatures provides a unique representation of a
characteristic of an image. Appeal Br. 21.
We are persuaded of error in the Examiner’s obviousness rejection of
independent claim 1. The Examiner’s rejection relies upon Zankowski to
teach this disputed limitation. Final Act. 11, 12. As discussed above with
respect to the anticipation rejection of claim 24, we disagree with the
Examiner’s finding that Zankowski teaches a set of signatures provides a
unique representation of the image. Further, the Examiner has not shown
that the additional teachings of Matsumoto teach such a signature providing
a unique representation. Accordingly, we do not sustain the Examiner’s
obviousness rejection of independent claim 1, and dependent claims 2
through 5, 11, 13 through 15, 20, and 26 through 28.

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CONCLUSION
In Summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–5, 11,
13–15, 20,
24, 26–32
101 Eligibility 1–5, 11, 13–15,
20, 24, 26–32
1– 5, 11,
13–15, 20,
24, 26–32
112 first
paragraph
Written
Description
1–5, 11, 13–15,
20, 24, 26–32

24, 29–32 102 Zankowski 24, 29–32
1–5, 11,
13–15, 20,
26–28
103 Zankowski,
Matsumoto
1–5, 11, 13–15,
20, 26–28
Overall
Outcome
1–5, 11, 13–15,
20, 24, 26–32

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). See 37
C.F.R. § 41.50(f).

AFFIRMED

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BUSCH, Administrative Patent Judge, dissenting in part.

I agree with and join the Majority’s decision except with respect to the
portion of the decision reversing the Examiner’s rejection of claims 1–5, 11,
13–15, 20, 24, and 26–32 under 35 U.S.C. § 101 as being directed to an
abstract idea without significantly more. I agree with the Examiner’s
findings and conclusions with respect to this ground of rejection.
As the Majority notes, the Supreme Court’s two-step framework
guides patent eligibility analysis under 35 U.S.C. § 101. Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 217 (2014). As also set forth by the Majority, after
the Briefs were filed, the Office published revised guidance for evaluating
subject matter eligibility under 35 U.S.C. § 101, specifically with respect to
applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
As part of our inquiry, we “look at the ‘focus of the claimed advance
over the prior art’ to determine if the claim’s ‘character as a whole’ is
directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). The Guidance
directs us to address this inquiry using two prongs of analysis: (i) does the
claim recite a judicial exception (e.g., an abstract idea) (“Prong One”), and
(ii) if so, is the judicial exception integrated into a practical application
(“Prong Two”). 84 Fed. Reg. at 54. If the judicial exception is integrated into
a practical application, the claim is patent eligible under § 101. 84 Fed. Reg.
at 54–55. If the claim is directed to a judicial exception (i.e., the claim both
recites a judicial exception and fails to integrate the exception into a
practical application), we next determine whether the claim provides an
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inventive concept, which includes determining whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56.
The Examiner concludes the claims are directed to the mental process
of data recognition and storage. Final Act. 5 (citing Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014)); Ans. 17–18 (additionally citing In re Abele, 684 F.2d 902
(CCPA 1982)). Generally, Appellant argues the claims are not directed to an
abstract idea and include an inventive concept because the claims overcome
technical problems in the art. Appeal Br. 11–18; Reply Br. 4–12. More
specifically, Appellant asserts the claims recite specific steps that solve the
technological problems related to storing and processing a large number of
images that occupy a large amount of space by only storing a signature of an
image and comparing that signature to signatures of all the other images
stored in a database. See Appeal Br. 10; Reply Br. 7 (quoting Spec. 1:21–
2:11).
Because I agree with the Majority’s determination that the claims
recite abstract ideas, I do not address the Prong One analysis in detail.
However, I initially note Appellant argues the claims as a group and
independent claim 24 could be entirely performed by a person—i.e., claim
24 does not require computer components. See Appeal Br. 27 (claim 24).
Additionally, independent claims 1, 24, and 32 do not recite any
requirements regarding: (1) the size or type of the received image; (2) the
size of each sample image stored in the database; or (3) the number of
sample images (plus corresponding signatures and medical data) in the
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“entire database” to which the received image is compared. I find the steps
of determining a set of signatures, searching sample images and determining
at least one matching sample, and determining medical information recite
mental steps because each involves simply an evaluation of information.4 In
combination, these elements merely require performing a series of steps that,
but for the generic computer implementation (recited in claims 1 and 32),
could be performed mentally. See 84 Fed. Reg. 52. Accordingly, I would
find Appellant’s claims recite an abstract idea because the Appellant’s
claims as a whole, and in fact all of the limitations other than the generic
computer elements recited in claims 1 and 32, recite abstract ideas.
Because the claims recite a judicial exception, I move to Prong Two
and analyze whether the claims integrate the judicial exception into a
practical application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial

4 If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of
“computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (explaining mental
processes are not patentable); 84 Fed. Reg. at 52–53 nn.14–15.
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exception(s)” and evaluate those additional elements to determine whether
they integrate the judicial exception into a recognized practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev.
08.2017, Jan. 2018).
This is where I respectfully disagree with the Majority Opinion. I
initially note independent claim 24 does not recite any additional limitations
beyond the abstract mental steps. See 84 Fed. Reg. at 54 (explaining that we
look to the elements recited in addition to the abstract idea to determine
whether the claims integrate the abstract idea into a practical application).
However, for purposes of my Prong Two analysis, I treat independent claim
1 as representative and address the additional limitations recited therein
because claim 1 includes additional limitations not recited in claim 24.
Nevertheless, I find claim 1 recites only generic computer components at a
high level that do not integrate the judicial exception into a practical
application.
More particularly, claim 1 does not recite additional limitations that:
(i) improve the functionality of a computer or other technology or technical
field, see MPEP § 2106.05(a); (ii) use a “particular machine” to apply or use
the judicial exception, see MPEP § 2106.05(b); (iii) transform an article to a
different thing or state, see MPEP § 2106.05(c); or (iv) provide any other
meaningful limitation, see MPEP § 2106.05(e). See also 84 Fed. Reg. at 55.
Rather, claim 1’s additionally recited elements simply use computers as
tools to implement the abstract idea requiring no more than generic
computer elements to perform generic computer functions.
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As referenced above regarding Prong One, I agree with the Examiner
that each of the steps recited in claim 1, as broadly recited, merely describe
mental steps a physician may perform. See Final Act. 5; Ans. 18. As also
noted above, the claims do not limit either (1) the type and size of images
received or stored in the database or (2) the number of sample images in the
database. A doctor may identify a signature—i.e., a certain portion of the x-
ray that contains relevant information (e.g., a particular pattern of lighter
areas and darker areas around a potential injury)—of an x-ray image for a
patient. The doctor may then recall previously reviewed x-rays and mentally
determine whether the signature associated with previously reviewed x-rays
(i.e., a particular pattern) matches the current x-ray. Given the breadth of
Appellant’s claims, considered in light of the Specification, and particularly
given the breadth of the claimed generation of a signature, I find the claims
encompass a doctor performing these mental steps. In other words, contrary
to Appellant’s assertion, the claims are directed to the idea of using a subset
of data (i.e., a signature) in place of an entire image rather than a particular
solution or set of steps to achieve the result. Therefore, to the extent
Appellant alleges the invention improves a computer or technology, I
disagree because I do not find the claims embody such an improvement.
Claim 1 does not recite an improvement to the functionality of a
computer, other technology, or a technical field because, other than the
recited mental steps, the claims recite only generic computer components
(i.e., three processors and a database). “[R]elying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
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1363 (Fed. Cir. 2015); see Alice, 573 U.S. at 224 (“use of a computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions” is not an inventive concept). Moreover, to the extent claim 1
improves the speed of a comparison or the number of comparisons possible,
this improvement lies in the use of generic technology, an improvement in
the process (i.e., selecting which data—smaller amounts of data representing
larger amounts of data—to compare), or some combination of the two.
Claim 1’s recited “first processor,” “database memory storage,”
“second processor,” and “third processor” are generic computer elements
recited at a high level of generality. The Specification indicates the
processors may be implemented in a central processing unit (CPU) and/or a
graphical processing unit (GPU) and, although the processors may be
“physically separate processing entities,” “any suitable distribution of
functionality between different . . . processors may be used without
detracting from the invention.” Spec. 12:11–15, 15:18–16:25, 31:25–29; see
also Spec. 19:2–3 (“signature processor 103 may be implemented by a GPU
or a combination of a GPU and a CPU”). Otherwise, the Specification
generally describes these elements by the particular functions the processors
perform. See Spec. passim. The Specification describes the processors and
database in a way that indicates these elements are generic computer
elements. Cf. Berkheimer Memo5 § III.A.1.

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018), available at https://www.uspto.gov/sites/default/
files/documents/memo-berkheimer-20180419.PDF (explaining that a
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Appellant argues merely reciting these generic components renders
the claims patent eligible. See Reply Br. 6, 9 (alleging the claims use the
recited processors and database memory storage to solve a technological
problem and, therefore, the claims recite eligible subject matter).6 However,
using generic computer components, without more, does not render an
otherwise ineligible claim eligible. 84 Fed. Reg. 55; buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”); FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic
computer elements like a microprocessor or user interface do not alone
transform an otherwise abstract idea into patent-eligible subject matter.”).
Appellant argues the claims “allow for increased flexibility, reduced
cost, increased efficiency, reduced computational resources usage,
generation of more accurate or reliable medical data and/or improved
performance.” Appeal Br. 17–18 (citing Spec. 2:1–11). However, as
discussed above and to the extent claim 1 even embodies these advantages, I
find the improved data selection using generic computer components

specification that describes additional elements “in a manner that indicates
that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well-
understood, routine, and conventional).
6 Appellant cites Data Engine Techs. LLC v. Google LLC, 906 F.3d 999
(Fed. Cir. 2018) in support of this argument. Appeal Br. 6, 9. I fail to see the
relevance of the Federal Circuit’s holding that improved user interfaces may
solve a technological problem to Appellant’s claims, which are not directed
to a user interface.
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provides the alleged benefits. In other words, the alleged improvement is not
to a computer or other technology or technical field, but the improvement is
in the process that constitutes the abstract idea and merely uses technology
as a tool to apply the abstract idea. See also 84 Fed. Reg. at 55.
Appellant also asserts claim 1 is similar to various claims the Federal
Circuit previously found eligible and contends the pending claims also
should be found eligible. Appeal Br. 14; Reply Br. 5–10. In particular,
Appellant argues: (1) the claims are similar to Abele’s claim 6, which the
Federal Circuit found were directed to an improved CAT-scan process and,
therefore, eligible, Appeal Br. 13–15; Reply Br. 9–10; (2) the Examiner fails
to consider the claims in light of the Specification, Reply Br. 7–8; (2) like
the claims in Finjan, Appellant’s claims are directed to specific steps to
accomplish a result, not merely the result itself, Reply Br. 6 (citing Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d. 1299 (Fed. Cir. 2018)), 8–9; and (3)
the Examiner has not properly identified evidence supporting a conclusion
that the claims’ additional elements are well-understood, routine, and
conventional, Reply Br. 10–12 (citing Berkheimer v. HP Inc., 881 F.3d
1360, 1370 (Fed. Cir. 2018)). I disagree.
I disagree with Appellant that the Examiner failed to evaluate claim 1
in light of the Specification. It is true that we must interpret the claims in
light of the Specification, but we do not import limitations not recited into
the claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). Appellant
highlights certain disclosures in the Specification identifying alleged
improvements, but does not persuasively identify any limitations that the
Examiner improperly construes. Reply Br. 7–8.
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Furthermore, I agree with the Examiner that claim 1 is more similar to
Abele’s ineligible claim 5 than Abele’s eligible claim 6. See Abele, 684 F.2d
at 908–09 (distinguishing claim 6, which was directed to an improved CAT-
scan process, from claim 5, which was directed merely to an algorithm).
Specifically, claim 1 does not require a particular type of image or a
particular machine to generate the image. In contrast to the data in Abele,
claim 1 merely recites determining a signature of one image and comparing
it to the signature of other images, then retrieving medical data related to a
matched image. See In re BRCA1- & BRCA2-Based Hereditary Cancer Test
Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (concluding “comparing
BRCA sequences and determining the existence of alterations” are patent-
ineligible abstract ideas of comparing and analyzing).
Similarly, I find claim 1 to be more similar to the ineligible claims in
Intellectual Ventures than the eligible claims in Finjan. In Finjan, the
Federal Circuit determined the claims recited an improvement to computer
technology because, unlike traditional virus scanning that could identify
only previously known viruses, the eligible claims recited the ability to
identify potentially hostile operations including “obfuscated code,” which
“enables more flexible and nuanced virus filtering.” Finjan, 879 F.3d at
1304. On the other hand, claim 1 broadly recites merely implementing a
mental process of comparing less than all available data using generic
computers as tools.
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application and I agree with the Examiner
that the claims are directed to an abstract idea. Because I would determine
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the claims are directed to an abstract idea, I analyze the claims under step
two of Alice to determine if there are additional limitations that individually,
or as an ordered combination, ensure the claims amount to “significantly
more” than the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566
U.S. at 72–73, 77–79). As stated in the Guidance, many of the
considerations to determine whether the claims amount to “significantly
more” under step two of the Alice framework are already considered as part
of determining whether the judicial exception has been integrated into a
practical application. 84 Fed. Reg. at 56. Thus, at this point of the analysis, I
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply append well-understood, routine, conventional activities at a
high level of generality. 84 Fed. Reg. at 56.
An inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?’” (emphasis added, brackets in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218–
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
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Alice “only assessed whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine and conventional” (emphasis added)).
As discussed above, claim 1’s only additionally recited elements are
the processors and database. As discussed above, the Specification supports
the conclusion that the additional elements are generic devices recited at a
high level of generality, and Appellant does not argue these elements,
individually or in combination, were beyond what was well-understood,
routine, and conventional in the art. See Berkheimer Memo § III.A.1.
Moreover, the selection of which data (i.e., the signatures) to compare is part
of the abstract idea and not an additional element. “If a claim’s only
‘inventive concept’ is the application of an abstract idea using conventional
and well-understood techniques, the claim has not been transformed into a
patent-eligible application of an abstract idea.” BSG Tech, 899 F.3d at 1290–
91 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)).
“[I]t is irrelevant whether [the claimed abstract idea] may have been non-
routine or unconventional as a factual matter . . . narrowing or reformulating
an abstract idea does not add ‘significantly more’ to it.” BSG Tech, 899 F.3d
at 1291.
For the reasons discussed above, I am not persuaded the Examiner
erred, and I would sustain the Examiner’s rejection of claims 1–5, 11, 13–
15, 20, 24, and 26–32 under 35 U.S.C. § 101.