Ex Parte Anderson

Patent Trial and Appeal Board

May 18, 2018

14127663 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/127,663 12/19/2013 Martin Erskine Anderson
24737 7590 05/22/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2011P01049WOUS 8930
EXAMINER
GORT, ELAINE L
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
05/22/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN ERSKINE ANDERSON
Appeal2017-003006
Application 14/127,663
Technology Center 3600
Before ST. JOHN COURTENAY III, JOHN PINKERTON, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all the claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
Exemplary embodiments of Appellant's invention relate to "medical
diagnostic imaging systems and, in particular, to diagnostic imaging systems
which display a history of anatomical findings over serial studies." Spec. 1.
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Application 14/127,663
Representative Claim
1. A method for managing clinical findings from serial
studies of an anatomy of a patient, the method comprising:
generating, with a medical imaging system, a first medical
diagnostic image of the patient;
reviewing, on a display, the first image to identify a finding at a
location in the first image;
placing, via a user input associated with the display, an
anatomical tag at the location of the finding in the first image;
comparing, on the display, the finding in the first image with a
finding in a second medical diagnostic image of the patient of
the same anatomy of the patient; and
updating, on a system associated with the display, a record of
findings of the first and second images with the finding in the
first image.
(Emphasis added regarding contested limitations).
References and Rejections
A. Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2.
B. Claims 1-7 and 9-20 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being obvious over the combined teachings and suggestions of
Theriault (US 2008/0004520 Al; Jan. 3, 2008) in view of Inoue et al.
(US 2002/0050986 Al; May 2, 2002) ("Inoue").
C. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Theriault,
Inoue, and Hanna et al. (US 2001/0036307 Al; Nov. 1, 2001).
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Issues on Appeal
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1-20 under pre-AIA
35 U.S.C. § 103(a) as being obvious over the cited combination of
references?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Mayo/Alice Analysis under 35 US.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013) ). The Supreme Court in Alice reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
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that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
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The Examiner's Rejection A under 35 USC§ 101
Regarding the first step of the Alice/ Mayo analysis, the Examiner
concludes claims 1-20 are directed to an abstract idea: 1
The abstract idea is identified as: generating a first medical
diagnostic image of a patient; reviewing the first image to
identify a finding at a location in the first image; placing an
anatomical tag at the location of the finding in the first image;
comparing the finding in the first image with a finding in a
second medical diagnostic image of the same anatomy of the
patient; and updating a record of findings of the first and second
images with the finding in the first image. [The] [ c ]laimed
limitation[ s] are series of step[ s] that can be perform[ ed]
manually, hence [the] claims are [directed to an] abstract idea
under [the] example of organizing human activities. Updating [a]
record of [a] finding in medical images is an abstract idea
because it compares new and stored information and uses rules
to identify options, such as what to update in [the] record of
finding. [The] [d]ependent claims incorporate [the] same abstract
idea with additional parameter[ s].
Final Act. 3, emphasis added.
Regarding the second step of the Mayol Alice analysis, 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 or combination of elements in
the claims, other than the abstract idea per se, amount to no more
than a recitation of A) generic computer structure that serves to
perform generic computer functions that serve to merely link the
abstract idea to a particular technological environment (i.e.
imaging system, computer, storage device, display etc.).
1 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir.
2013).
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(specification does not describes any specialized component)
B) functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry. (receiving,
displaying and outputting data).
Final Act. 4, emphasis added. 2
For the aforementioned reasons, the Examiner concludes that all
claims 1-20 on appeal are not patent-eligible under 35 U.S.C. § 101.
Mayo/Alice Analysis - Step 1
Regarding Alice Step 1, Appellant (App. Br. 3--4) does not
substantively contest the Examiner's legal conclusion that claims 1-20 are
directed to an abstract idea: See Final Act. 3: "[The] claims are [an] abstract
idea under [the] example of organizing human activities. Updating [a]
record of [a] finding in medical images is an abstract idea because it
compares new and stored information and uses rules to identify options,
such as what to update in [the] record of finding." Emphasis added.
Therefore, regarding Alice step one, we note that arguments not made are
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Mayo/Alice Analysis - Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Final Act. 3--4;
2 The patent eligibility inquiry may contain underlying issues of fact. Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811F.3d1314, 1325 (Fed.
Cir. 2016). In particular, "[ t ]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881F.3d1360, 1368 (Fed. Cir. 2018).
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Ans. 2--4), we tum to the second part of the Alice/Mayo analysis. We
analyze the claims 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, 134 S. Ct. at 2357.
Regarding Alice Step 2, Appellant addresses the purported inventive
concept of the claims: "Independent claims 1 and 16 include additional
limitations that solve an imaging system-centric problem with a claimed
solution that is necessarily rooted in imaging system technology." App. Br.
4. In support, Appellant contends:
Claims 1 and 16 include a solution to this imaging system-centric
problem that is necessarily rooted in imaging system technology.
This includes placing, via a user input of a medical imaging
system, an anatomical tag at a location of an identified finding in
a first image on a display, and comparing the finding in the first
image with a finding in a second medical diagnostic image of the
patient of the same anatomy of the patient. This application states
this solution provides an efficient way to map findings in images
from other modalities to images of the current exam.
App. Br. 5, emphasis added.
Appellant's arguments do not persuade us the Examiner erred,
because Appellant essentially enumerates the claim limitations (id.) without
any persuasive explanation of how the limitations either individually, or as
an ordered combination, amount to an inventive concept that converts the
abstract idea into patent-eligible subject matter. In particular, we find the
steps (or functions) of Appellant's claims are merely performed using
generic computer processing hardware: "a medical imaging system," "a
display," and "a system associated with the display." Claim 1. See also
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independent claim 16: "a medical imaging system," "a first computer with a
display," and "a storage device."
Our reviewing court has "repeatedly held that such invocations of
computers and networks that are not even arguably inventive are
'insufficient to pass the test of an inventive concept in the application' of an
abstract idea." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355
(Fed. Cir. 2016) (internal citations omitted); see also Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017)
("Rather, the claims recite both a generic computer element-a processor-
and a series of generic computer 'components' that merely restate their
individual functions .... That is to say, they merely describe the functions
of the abstract idea itself.").
Because none of Appellant's claims on appeal is directed to an
improvement in a processor, database, or other computer/network
component, we find none of the claim limitations, viewed "both individually
and as an ordered combination," amounts to significantly more than the
judicial exception in order to sufficiently transform the nature of the claims
into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355 (internal
quotations omitted) (quoting Mayo, 566 U.S. at 79).
Applying the aforementioned guidance from our reviewing courts to
the claims before us on appeal, we conclude, in our Mayo/Alice analysis, that
each of Appellant's claims 1-20, considered as a whole, is directed to (under
step one), a patent-ineligible abstract idea, and under step two, does not
recite something "significantly more" to transform the nature of the claim
into a patent-eligible application.
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Although Appellant additionally cites McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Circ. 2016) as an intervening case in
the Reply Brief (5), we are not persuaded the Examiner erred because McRO
guides that "[ t ]he abstract idea exception prevents patenting a result where
'it matters not by what process or machinery the result is accomplished."'
McRO 837 F.3d at 1312, (quoting 0 'Reilly v. Morse, 56 U.S. 62, 113
(1854)) (emphasis added). Here, the claim 1 result of "updating, on a
system associated with the display, a record of findings of the first and
second images with the finding in the first image" is merely performed using
a generic computer system and a display.
Therefore, we conclude the additional elements recited in the claims
of generic computer hardware do not provide an inventive concept, without
more. Accordingly, for at least the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1-20, as being
directed to patent-ineligible subject matter in light of Alice and its progeny. 3
Rejection B of Claims 1-7 and 9-20 under§ 103(a)
Based upon Appellant's arguments, we decide the appeal of
rejection B under§ 103(a) of claims 1-7 and 9-20 on the basis of
representative independent claim 1. We address§ 103(a) rejection C of
dependent claim 8, infra. See n.3 infra.
Based upon our review of the record, we disagree with Appellant's
arguments, and agree with and adopt the Examiner's underlying factual
3 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See 3 7
C.F .R. § 41.3 7 ( c )(1 )(iv).
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findings and ultimate legal conclusion of obviousness for representative
independent claim 1. Specifically, we agree with and adopt the reasons,
rationales, and explanations articulated by the Examiner: (i) in the Final
Action (5-8) from which this appeal is taken, and, (ii) as set forth in the
Examiner's responsive explanations in the Answer (4---6). 4
Regarding representative claim 1, Appellant notes:
Independent claim 1 requires generating a first medical
diagnostic image of the patient, placing an anatomical tag at a
location of a finding in the first image, comparing the finding in
the first image with a finding in a second medical diagnostic
image of the patient of the anatomy of the patient, and updating
a medical record of findings of the first and second images with
the finding in the first image." Independent claim 16 recites
similar limitations.
App. Br. 5-6. Appellant contends "[t]he combination of Theriault and Inoue
does not disclose or suggest at least the above claim limitations." App. Br.
6.
In the Reply Brief (2), Appellant focuses the dispute on the claim 1
requirement of "comparing the finding in the first image with a finding in a
second medical diagnostic image of the same patient of the same anatomy
f h . " o t e patient ....
The Examiner finds Appellant is attacking the references individually.
Ans. 4. The Examiner finds the cited Inoue secondary reference teaches the
argued limitations which are missing from Theriault:
Inoue teaches it is old and well known to compar[ e ], on the
display, the finding in the first image with a finding in a second
medical diagnostic image of the patient of the same anatomy of
4 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
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the patient; (By disclosing, an image display apparatus
comprising input means for inputting two images of the same
subject obtained at different times, display means for displaying
the two inputted images in a manner enabling an observer to fuse
the two inputted images together for stereoscopic viewing, and
display control means for controlling the display means to
display the two inputted images such that the two images are
projected separately into the left and right eyes of the observer.
The observer 15 compares the images displayed on the display
devices 12, 13 and 14 and looks for changes indicative of disease
in the patient in question. See at least paragraph [0012] &
[0084])(figs. 2-5 are evidence that comparing images of same
anatomy).
Ans. 6.
The Examiner finds an artisan would have been motivated "to modify
the method of Theriault with the technique of comparing images of [the]
same anatomy of the same patient to [an] observer [to] look[] for differences
between the two. Furthermore, merely combining well known elements in
the prior art with predictable results does not render an invention patentably
distinct over such combination." Id.
Turning to the evidence, we find Inoue teaches or suggests
"comparing the finding in the first image with a finding in a second medical
diagnostic image of the same patient of the same anatomy of the patient," as
argued by Appellant, who principally focuses on Theriault. Reply Br. 2.
See e.g., Inoue, i-f 12, that expressly describes: "input means for inputting
two images of the same subject obtained at different times, display means
for displaying the two inputted images in a manner enabling an observer to
fuse the two inputted images together for stereoscopic viewing."
Therefore, when Theriault is modified by Inoue in the manner
proffered by the Examiner (Final Act. 7), on this record, we find a
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preponderance of the evidence supports the Examiner's findings that the
contested limitations are taught or suggested by the Examiner's proffered
modification. 5
Moreover, we are in accord with the Examiner's finding (Final Act. 7)
that the combination of the cited features of Theriault and Inoue would have
merely produced a predictable result. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 401 (2007) ("[A] combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.").
We disagree with Appellant that the proposed modification of
Theriault with Inoue "would render the prior art invention being modified
unsatisfactory for its intended purpose." (App. Br. 7). We see no reason
why a physician would not first use Theriault (e.g., see i-f 37) to compare
patients scans against reference images to first diagnose the condition (e.g., a
tumor), and then apply Inoue to compare a present scan of the same patient
with a previous scan of the patient at the same region of interest (ROI) to
determine if the subject tumor is regressing in response to treatment (e.g.,
chemotherapy or radiation treatments), or is instead progressing and not
responding to the therapy.
Therefore, on this record, we find the Examiner's findings regarding
the argued claim 1 features (i.e., requiring comparing scan images of the
5 Our reviewing court guides: "'the question under 35 USC 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (emphasis
added); see also MPEP § 2123.
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same patient of the same anatomy) are supported by a preponderance of the
evidence, based upon the combined teachings and suggestions of the cited
references.
Combinability of the References under§ 103
Appellant advances a second purported reason for reversal, and
contends the Theriault and Inoue references have been improperly combined
by the Examiner:
Theriault is directed to automatically generating a diagnosis for
a patient from reference images of known pathological
conditions of other patients. If a reference image were an image
of the same anatomy of the same patient with the pathological
condition known, then the comparison would not be needed
because the pathological condition of the patient would already
be known. Furthermore, the images in Inoue are not of a known
pathological condition; Inoue visually compares images of the
same patient and acquired at different times to detect differences
between the images.
App. Br. 6.
Appellant urges, inter alia:
it would not have been obvious to modify Theriault with Inoue
as purported by the Office at least because Theriault would not
automatically generate a diagnosis for a patient, which it is the
intended purpose of Theriault, because it would already be
known that the patient has the pathological condition that is in
the reference image of the pathological condition.
App. Br. 7.
We disagree, and find the Examiner (Final Act. 7) sets forth sufficient
"articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006).
We note the presence or absence of a reason "to combine references in an
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obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000 (Fed. Cir. 1999)). Furthermore, a reason to combine teachings from
the prior art "may be found in explicit or implicit teachings within the
references themselves, from the ordinary knowledge of those skilled in the
art, or from the nature of the problem to be solved." WMS Gaming Inc. v.
Int'! Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet,
149 F.3d 1350, 1355 (Fed. Cir. 1998)).
Here, the Examiner finds an artisan would have been motivated:
to modify the method of Theriault with [Inoue' s] technique of
comparing images of [the] same anatomy of the same patient to
[the] observer [who] looks for differences between the two.
Furthermore, merely combining well known elements in the
prior art with predictable results does not render an invention
patentably distinct over such combination.
Final Act. 7.
In further support of the proffered combination, the Examiner (id.)
cites to KSR, 550 U.S. 398, 401 (2007) ("[A] combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results."), and MPEP § 2141(III)(A)
("Combining prior art elements according to known methods to yield
predictable results.").
Moreover, Appellant does not provide evidence sufficient to
demonstrate that combining the teachings of Theriault and Inoue (and
Hanna), would have been "uniquely challenging or difficult for one of
ordinary skill in the art," (Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007)), nor has Appellant provided any objective
evidence of secondary considerations, which our reviewing court guides
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"operates as a beneficial check on hindsight." Cheese Systems, Inc. v. Tetra
Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013)
Therefore, based upon a preponderance of the evidence, we sustain
the Examiner's§ 103(a) rejection B of representative independent claim 1,
and of the additional claims 2-7 and 9-20, also rejected under rejection B,
which are not argued separately. See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection C of Remaining Claim 8
Because Appellant does not advance separate, substantive arguments
for the remaining rejected claim 8 on appeal, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). See e.g., "claim 8 is patentable over the
subject combination of references for at least the same reasons discussed
above with respect to claim 1, with claim 8 containing further distinguishing
patentable features." App. Br. 8. However, Appellant does not further
traverse the rejection by substantively explaining how the purported "further
distinguishing patentable features" of claim 8 distinguish over Hanna, in
combination of Theriault and Inoue. Id. Therefore, we sustain the
Examiner's § 103 rejection C of claim 8 for the same reasons discussed
above regarding § 103 rejection B of independent claim 1.
CONCLUSIONS
The Examiner did not err in rejecting claims 1-20, under 35 U.S.C.
§ 101, as being directed to patent-ineligible subject matter.
The Examiner did not err in rejecting claims 1-20, under pre-AIA
35 U.S.C. § 103(a), as being obvious over the combined teachings and
suggestions of the cited references.
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DECISION
We affirm the Examiner's decision rejecting claims 1-20, under
35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-20, under pre-
AIA 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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