Abi-Jaoudeh, Nadine et al.

Patent Trials and Appeals Board

Dec 4, 2019

14396064 - (D) (P.T.A.B. Dec. 4, 2019)

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.
14/396,064 10/22/2014 Nadine Abi-Jaoudeh 2012P00311WOUS 6020
24737 7590 12/04/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
SMITH, RUTH S
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
12/04/2019 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 NADINE ABI-JAOUDEH, MING LI, SAMUEL KADOURY,
ANKUR KAPOOR, NICOLAAS JAN NOORDHOEK,
ALESSANDRO GUIDO RADAELLI, BART CARELSEN, and
BRADFORD JOHNS WOOD
__________

Appeal 2019-001568
Application 14/396,064
Technology Center 3700
__________

Before JOHN C. KERINS, EDWARD A. BROWN, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Koninklijke Philips N.V.,1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 1–25. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellant is the “applicant” under 37 C.F.R. § 1.42(b) and identifies itself
as the sole real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The Specification
The Specification’s disclosure “relates to imaging thermometry . . .
with particular application to computed tomography (CT) in connection with
an interventional procedure in which temperature monitoring of tissue being
treated is of interest.” Spec. 1:1–4.
The Rejected Claims
Claims 1–25 are rejected. Final Act. 1. No other claims are pending.
Id. Claims 1, 15, and 25 are independent. Appeal Br. 12–16. Claim 1 is
illustrative and reproduced below.
1. A computing device, comprising:
a thermometry image generator, implemented by a
computer processor, that generates thermometry image data
based on baseline computed tomography image data and
subsequently acquired intermittent computed tomography
image data, wherein the thermometry image data includes
voxels or pixels indicating a change in a temperature in a
volume or region of interest, wherein the volume or region of
interest is heated between the acquisition of the baseline and the
acquisition of the intermittent computed tomography image
data, and wherein the thermometry image generator employs a
Wronskian change detector algorithm to generate the
thermometry image data; and
a thermal map generator, implemented by a computer
processor, that generates a thermal map for image data voxels
or pixels representing a volume or region of interest of a subject
based on the thermometry image data, and a predetermined
change in value to temperature lookup table; and
a display that visually presents the thermal map in
connection with image data of the volume or region of interest.
Id. at 12.
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The Examiner’s Rejections
The following rejections are before us for review:
1. claims 1–25 under the judicial exception to 35 U.S.C. § 101
(Final Act. 3);
2. claim 25 under 35 U.S.C. § 101 as non-statutory (id. at 3–4);
3. claims 1–14 under 35 U.S.C. § 112(b)/¶2 as indefinite (id. at 4);
4. claims 1–7, 10, 11, 13, 15–17, 19–23, and 25 under 35 U.S.C.
§ 103 as being unpatentable over Nields,2 Gibbs,3 and Edgar4 (id. at 5);
5. claims 8, 9, and 24 under 35 U.S.C. § 103 as being unpatentable
over Nields, Gibbs, Edgar, and Jain5 or Dastmalchi6 (id. at 7–8); and
6. claims 12, 14, and 18 under 35 U.S.C. § 103 as being
unpatentable over Nields, Gibbs, Edgar, and Ringermacher7 (id. at 8).
DISCUSSION
Rejection 1—Patent Eligibility
The Examiner rejected claims 1–25 under the judicial exception to
35 U.S.C. § 101. Final Act. 3. Appellant argues all claims together. Appeal
Br. 5–7. Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Section 101 provides that “[w]hoever 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

2 US 2008/0033418 Al, published Feb. 7, 2008 (“Nields”).
3 US 2008/0111881 A1, published May 15, 2008 (“Gibbs”).
4 US 2006/0258927 A1, published Nov. 16, 2006 (“Edgar”).
5 US 2014/0100452 A1, published Apr. 10, 2014 (“Jain”).
6 US 2008/0100612 Al, published May 1, 2008 (“Dastmalchi”).
7 US 2010/0088041 Al, published Apr. 8, 2010 (“Ringermacher”).
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the conditions and requirements of this title.” 35 U.S.C. § 101. However,
the Supreme Court has “long held that this provision contains an important
implicit exception: [l]aws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, we “first determine whether the claims at issue are
directed to a patent-ineligible concept.” Alice, 573 U.S. at 218. If the claims
are determined to be directed to an ineligible concept, then we “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.” Id. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)).
On January 7, 2019, the Director issued 2019 Revised Patent Subject
Matter Eligibility Guidance (“Revised Guidance”), which explains how the
Director directs that patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101 be analyzed. 84 Fed. Reg. 50–57.
Per the Revised Guidance, the first step of Alice (i.e., Office Step 2A)
consists of two prongs. In Prong One, we must determine whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon. 84 Fed. Reg. at 54 (Section III.A.1.). If it does not, the claim
is patent eligible. Id. With respect to the abstract idea category of judicial
exceptions, an abstract idea must fall within one of the enumerated
groupings of abstract ideas in the Revised Guidance or be a “tentative
abstract idea,” with the latter situation predicted to be rare. Id. at 51–52
(Section I, enumerating three groupings of abstract ideas), 54
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(Section III.A.1., describing Step 2A Prong One), 56–57 (Section III.D.,
explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, we proceed to Step 2A
Prong Two, in which we must determine if the “claim as a whole integrates
the recited judicial exception into a practical application of the exception.”
Id. at 54 (Section II.A.2.). If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception and fails to integrate it into a
practical application, we then proceed to the second step of Alice (i.e., Office
Step 2B). In that step, we then evaluate the additional limitations of the
claim, both individually and as an ordered combination, to determine
whether they provide an inventive concept. Id. at 56 (Section III.B.). In
particular, we look to whether the claim:
 Adds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept may be
present; or
 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.
Id.
Revised Guidance Step 2A Prong One
In Prong One of Step 2A, we determine whether claim 1 recites a
judicial exception (i.e., a law of nature, natural phenomenon, or abstract
idea).
The Examiner determined that claim 1 recites “an abstract idea [that]
includes generating thermometry image data using a Wronskian change
detector algorithm and generating a thermal map based on the thermometry
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image data in comparison to data in a lookup table.” Final Act. 3. We agree
that claim 1 recites an abstract idea in the mathematical concepts category
(i.e., “a Wronskian change detector algorithm”) as set forth in relevant case
law and the Revised Guidance. See Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“The concept of hedging . . . reduced to a mathematical formula . . .
is an unpatentable abstract idea[.]”); Diamond v. Diehr, 450 U.S. 175, 191
(1981) (“A mathematical formula as such is not accorded the protection of
our patent laws”) (citing Benson, 409 U.S. 63); 84 Fed. Reg. at 52.
Revised Guidance Step 2A Prong Two
In Prong Two of Step 2A, we determine whether claim 1 as a whole
integrates the recited judicial exception (here, an abstract idea) into a
practical application of the exception.
Appellant’s claim 1 is not ineligible merely because it recites “a
Wronskian change detector algorithm.” Cf. Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (“[A] process is not
unpatentable simply because it contains a law of nature or a mathematical
algorithm.”) (quoting Diamond v. Diehr, 450 U.S. 175, 187 (1981)). In fact,
“an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.” Id.
(quoting Diehr, 450 U.S. at 187).
One exemplary consideration as to whether a recited abstract idea is
integrated into a practical application is whether additional claim language
“reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” 84 Fed. Reg. at 55.
Appellant argues:
The claims set out a specific set of rules to provide a CT
real-time temperature monitoring tool. These rules include
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generating thermometry image data based on baseline computed
tomography image data and subsequently acquired intermittent
computed tomography image data, wherein the thermometry
image data indicates a change in a temperature in a volume or
region of interest and generated by a Wronskian change detector
algorithm. This process has not previously been performed by a
human or a computer.
Hence, like McRo, the application describes a specific way
to solve a problem with the current way of providing a CT real-
time temperature monitoring tool. Furthermore, like McRo, the
claim limitations are not merely an automation of an existing
processed carried out in the same manner. The above limitations
have not previously been performed by a human or a computer.
For at least the reasons stated above, claim 1 is an improvement
to an existing technological process.
Appeal Br. 6–7 (referring to McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016)).
We are persuaded by Appellant’s arguments that the rejected claims
integrate the recited Wronksian change detector algorithm into a practical
application. Further, as in McRO, Appellant’s claims use “limited rules in a
process specifically designed to achieve an improved technological result,”
here, improved computed tomography real-time temperature monitoring.
See McRO, 837 F.3d at 1316. For the foregoing reasons, we reverse the
rejection of claims 1–25 under the judicial exception to 35 U.S.C. § 101.8

8 In addition to citing McRo, the Appeal Brief also cites In re Abele, 684
F.2d 902 (CCPA 1982). Appeal Br. 5. If it were good law, In re Abele
would clearly support eligibility of Appellant’s claims. See, e.g., In re
Abele, 684 F.2d at 904) (holding as patent eligible the following claim:

A method of displaying [X-ray attenuation data produced in a
two dimensional field by a computed tomography scanner] in a
field comprising the steps of calculating the difference between
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Rejection 2—Non-Statutory
The Examiner rejected claim 25 as directed to non-statutory subject
matter, i.e., subject matter not set forth in 35 U.S.C. § 101. Final Act. 3.
More specifically, the Examiner determined that claim 25, which recites “[a]
computer readable storage medium encoded with computer readable
instructions,” encompasses both transitory and non-transitory storage media.
Id.
Appellant argues that claim 25’s recitation of “storage medium”
should be construed, in light of the Specification, as limited to non-transitory
storage media. Appeal Br. 7. Appellant points out that the Specification
actually uses the qualifying term “non-transitory.” Id. (citing Spec. 5:15–
20). However, that argument supports the Examiner’s construction and
undermines Appellant’s proposed construction. “[W]hile it is true that
claims are to be interpreted in light of the specification . . . , it does not
follow that limitations from the specification may be read into the claims. . .
. [T]he claims define the invention.” Sjolund v. Musland, 847 F.2d 1573,
1581–82 (Fed. Cir. 1988).
For the foregoing reasons, we affirm the rejection, under 35 U.S.C.
§ 101, of claim 25 as directed to non-statutory subject matter.

the local value of the data at a data point in the field and the
average value of the data in a region of the field which surrounds
said point for each point in said field, and displaying the value of
said difference as a signed gray scale at a point in a picture which
corresponds to said data point.).
However, the eligibility test applied in Abele was abrogated by In re Bilski,
545 F.3d 943 (Fed. Cir. 2008) (en banc), aff’d but criticized sub nom. Bilski
v. Kappos, 561 U.S. 593 (2010).
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Rejection 3—Indefiniteness
The Examiner rejected claims 1–14 as indefinite in violation of 35
U.S.C. § 112(b)/¶2. Id. at 4. Appellant does not argue against this rejection
and accordingly does not establish error therein. See generally Appeal Br.;
see also Ans. 7 (“The Examiner notes that the Appellant’s brief is silent with
respect to the rejection of claims 1–14 under 35 USC 112, second
paragraph.”); Reply Br. 1–4 (remaining silent regarding this rejection).
Accordingly, we summarily affirm the rejection.
Rejections 4––Obviousness
The Examiner rejected 1–7, 10, 11, 13, 15–17, 19–23, and 25 under
35 U.S.C. § 103(a) as being unpatentable over Nields, Gibbs, and Edgar.
Final Act. 5.
Independent claim 1 recites “wherein the thermometry image
generator employs a Wronskian change detector algorithm to generate the
thermometry image data.” Appeal Br. 12. Independent claim 15 similarly
recites “a Wronskian change detector algorithm generates the thermometry
image data.” Id. at 14. Independent claim 25 similarly recites “wherein a
Wronskian change detector algorithm generates the thermometry image
data.” Id. at 16.
The Examiner concedes that Nields fails to disclose these limitations.
Final Act. 6 (“Nields et al fail to disclose that the thermometry image
generator employs a Wronskian change detector algorithm to generate the
thermometry image data.”). However, the Examiner finds that the “use of a
Wronskian change detector algorithm is well known in the art for detecting
parameter changes.” Id. (citing Gibbs ¶50). Based on that finding, the
Examiner concludes:
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It would have been obvious to one skilled in the art to have
modified Nields et al such that the thermometry image generator
employs a Wronskian change detector algorithm to generate the
thermometry image data as such is a well-known expedient in the
art and would yield predictable results.
Id.
Appellant argues that the rejection does not establish a prima facie
case of obviousness. Appeal Br. 7–8; see In re Rijckaert, 9 F.3d 1531, 1532
(Fed. Cir. 1993) (“In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of obviousness.
Only if that burden is met, does the burden of coming forward with evidence
or argument shift to the applicant.” (citation omitted)).
Appellant explains that “Gibbs discloses detecting the presence of an
object in one photo that was not previously in an earlier acquired photo.”
Appeal Br. 9 (citing Gibbs ¶¶16, 18, 50, and 52). And, in one embodiment,
Gibbs discloses using a Wronksian algorithm for that purpose. Gibbs ¶50.
The Examiner similarly describes the scope of Gibbs’s disclosure. See Ans.
8 (“Gibbs disclose[s] the use of a change detection algorithm such as a
Wronskian algorithm for detecting change between images.”). Thus,
Appellant argues that a combination of Gibbs and Nields would result in
“using a Wronskian algorithm to visually detect an unknown object in a CT
image that was not in a previously acquired CT image” but not “to generate
thermometry image data.” Appeal Br. 9.
The Examiner responds to Appellant’s argument as follows:
[T]he Examiner disagrees that because Gibbs et al is directed to
the use of a Wronskian algorithm to detect moving objects, such
an algorithm is only useful for such a purpose. Gibbs disclose
the use of a change detection algorithm such as a Wronskian
algorithm for detecting change between images and while Gibbs
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et al disclose the use of such a change detection algorithm for
something other than detecting change in thermometry data, this
does not preclude the use of such a known change detection
algorithm for detecting change in any other type of image data
parameter.
Ans. 8. The Examiner’s response does not adequately rebut Appellant’s
argument. Appellant is not arguing that Gibbs teaches away from, or
otherwise precludes, using a Wronksian algorithm to generate thermometry
image data. Rather, Appellant is arguing that merely incorporating Gibb’s
teaching of using a Wronksian algorithm to detect visual differences
between images does not satisfy the claim language of using a Wronksian
algorithm to generate thermometry image data. Appeal Br. 9.
The Examiner has not shown how the prior art would allegedly meet
the similarly recited limitations of independent claims 1, 15, and 25 that
generally require using a Wronskian change detector algorithm to generate
thermometry image data. The rejection likewise does not present a prima
facie case that dependent claims 2–7, 10, 11, 13, 16, 17, and 19–23 would
have been obvious. See Fine, 837 F.2d at 1076 (“Dependent claims are
nonobvious under section 103 if the independent claims from which they
depend are nonobvious.”). Accordingly, the rejection of all of these claims
must be reversed. Id. (reversing for failure to establish a prima facie case of
obviousness).
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Rejections 5 and 6––Obviousness
In Rejections 5 and 6, the Examiner asserts additional references to
meet additional limitations recited in claims 8, 9, 12, 14, 18, and 24, all of
which ultimately depend from claim 1 or 15. Final Act. 7–8. The Examiner
did not, however, rely on the additional references in a manner that could
cure the deficiency noted above in Rejection 4. Id. Accordingly, for similar
reasons, we reverse Rejections 5 and 6.
SUMMARY
Claims
Rejected
35 U.S.C. Basis Affirmed Reversed
1–25 § 101 Judicial
Exception
1–25
25 § 101 Non-Statutory 25
1–14 § 112(b)/¶2 Indefiniteness 1–14
1–7, 10, 11,
13, 15–17,
19–23, 25
§ 103 Nields, Gibbs,
Edgar
1–7, 10,
11, 13,
15–17,
19–23, 25
8, 9, 24 § 103 Nields, Gibbs,
Edgar,
Jain/Dastmalchi
8, 9, 24
12, 14, 18 § 103 Nields, Gibbs,
Edgar,
Ringermacher
12, 14, 18
Overall
Outcome
1–14, 25 15–24

AFFIRMED-IN-PART