Ex Parte Auvray et al

Patent Trial and Appeal Board

Sep 27, 2017

14240853 (P.T.A.B. Sep. 27, 2017)

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.
14/240,853 02/25/2014 Vincent Maurice Andre Auvray 2011P01095WOUS 5189
24737 7590 09/29/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue DOAN, PHUC N
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
2619
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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 VINCENT MAURICE ANDRE AUVRAY and
RAOUL FLORENT
Appeal 2016-008720
Application 14/240,8531
Technology Center 2600
Before LARRY J. HUME, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-13 and 15-18, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Koninklijke Philips,
N.V. App. Br. 3.
Appeal 2016-008720
Application 14/240,853
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to a visualizing vascular treatment
outcomes. Spec. 1:5-9. Claim 1 illustrates the appealed subject matter and
reads as follows:
1. A device for vascular treatment outcome
visualization, comprising;
a processing unit;
an interface unit; and
a display unit;
wherein the interface unit is configured to provide
the processing unit with a first image data of a region of
interest of a vascular structure at a first point in time; and
to provide the processing unit with at least one second
image data of a region of interest of a vascular structure
at a second point in time; wherein, between the first point
in time and the second point in time, a vascular treatment
is applied to the vascular structure;
wherein the first point in time relates to a pre­
treatment state, and the second point in time relates to a
post-treatment state; wherein between the pre-treatment
state and the post-treatment state, a medical intervention
has been performed affecting the vascular structure in the
region of interest;
wherein the processing unit is configured to
combine the first and the at least one second image data
to generate a joint outcome visualization image data (24);
and
wherein the display unit is configured to display
the joint outcome visualization image data.
The Examiner’s Rejections
Claims 1-13 and 15-18 stand rejected under 35 U.S.C. § 101 as
directed to patent ineligible subject matter. Final Act. 5-6.
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Application 14/240,853
Claims 1-13 and 15-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Stiles (US 2010/0240986 Al; Sept. 23, 2010) and Florent
et al. (WO 2011/039673 Al; April 7, 2011). Final Act. 6-12.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
Examiner’s conclusions. We highlight the following additional points.
Ineligible Subject Matter
Alice identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§101. In Alice, the Supreme Court reiterated the framework set out in Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012), for
“distinguishing patents that claim . . . abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S.Ct. 2347, 2355 (2014). Assuming that a claim nominally
falls within one of the statutory categories of machine, manufacture, process,
or composition of matter, the first step in the analysis is to determine if the
claim is directed to a law of nature, a natural phenomenon, or an abstract
idea (judicial exceptions). If so, the second step is to determine whether any
element or combination of elements in the claim is sufficient to transform
the nature of the claim into a patent eligible application, that is, to ensure
that the claim amounts to significantly more than the judicial exception.
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Application 14/240,853
With respect to step one of the Alice analysis, the Examiner finds
claim 1 is directed to the abstract idea of “processing image information on a
generic hardware processor.” Final Act. 5-6. Appellants do not argue the
Examiner erred in finding claim 1 is directed to an abstract idea. App.
Br. 5-11. Instead, Appellants’ arguments are directed to step two of the
Alice analysis. Accordingly, Appellants have not persuaded us the Examiner
erred with respect to step one of the Alice analysis.
Regarding step two, Appellants argue claim 1 amounts to
“significantly more than the judicial exception.” App. Br. 5-11. In
particular, Appellants argue claim 1 recites improvements to another
technology or technical field by generating an image of a summary so that a
clinician and patient can see how a vessel was treated. Id. at 6-7.
Appellants argue claim 1 applies meaningful limits to improve the technical
process by producing a summary image that shows whether an intervention
was successful because both the pre-treatment and post-treatment states are
shown in one image. Id. at 7-8.
Appellants further argue claim 1 transforms or reduces each of a “first
image” and a “second image” into a “joint outcome visualization image” for
display and, therefore, effects a “transformation or reduction of a particular
article to a different state or thing.” App. Br. 8-9.
Finally, Appellants argue claim 1 recites limitations that are not “well-
understood, routine and conventional in the field” because the Examiner’s
obviousness rejection is improper for the reasons discussed below.
Appellants have not persuaded us of Examiner error. We disagree
with Appellants’ contentions that the claims are directed to improving the
technical field of outcome visualization. Claim 1 is directed to generating
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Application 14/240,853
first image data of a vascular structure at a pre-treatment point in time and
second image data of the vascular structure at a post-treatment point in time.
The first and second image data are displayed together as “joint outcome
visualization image data.” The claim, therefore, merely recites combining
first and second image data to produce joint image data without providing
details as to how this is accomplished. This is not an improvement to the
technical field of joint outcome visualization, but instead is merely an
automation of a process that could be performed by a human using existing
imaging technology, such as photos or x-rays.
Our reviewing court has “made clear that mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v.
Westlake Svcs., 2016-2001, at 19 (Fed. Cir. June 9, 2017). Like the claims
in Credit Acceptance, the focus of Appellants’ claim 1 is on the existing
practice, “and the recited generic computer elements ‘are invoked merely as
a tool.’” Id. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016)); see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1334 (Fed. Cir. 2015) (collecting cases).
Appellants’ argument that the claims are unconventional because the
Examiner’s obviousness rejection is improper is also unavailing. Although
the second step of the Alice framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or non-obviousness,
but rather a search for “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., 134 S. Ct. at
2355. “[T]he § 101 patent-eligibility inquiry and, say, the § 102 novelty
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inquiry might sometimes overlap.” Mayo, 132 S.Ct. at 1304. “But, a claim
for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). Thus, a novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Appellants’ argument regarding the obviousness of claim 1 focuses on
whether this practice is novel or non-obvious, rather than whether such a use
transforms the claims into something more than the abstract idea itself.
Accordingly, we find it unpersuasive.
Appellants also argue the claims “transform” each of a “first image”
and a “second image” into a “joint outcome visualization image.” See App.
Br. 8-9. The Supreme Court has held that the machine-or-transformation
test is not the sole test governing patent eligibility analysis, but remains a
“useful clue” in the second step of the Alice framework. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). Under this test, a
claimed process can be patent-eligible if “(1) it is tied to a particular
machine or apparatus, or (2) it transforms a particular article into a different
state or thing.” In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008).
Appellants have not persuaded us that the claims satisfy either prong
of this test. Claim 1 is not tied to any particular novel machine or apparatus,
only a general purpose computer. The Federal Circuit has repeatedly held
that the Internet and general purpose computers are not sufficient to save a
patent under the machine prong of this test. See Ultramercial, 772 F.3d at
716; CyberSource Corp. v. Retails Decisions, Inc., 654 F.3d 1366, 1372
(Fed. Cir. 2011). Claim 1 also fails to satisfy the “transformation” prong
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because “[t]he mere manipulation or reorganization of data, however, does
not satisfy the transformation prong.” CyberSource, 654 F.3d at 1375.
For the reasons identified above, we agree with the Examiner that the
claims do not recite an “inventive concept” sufficient to transform the claims
from an abstract idea to a patent eligible application. Accordingly,
Appellants have not persuaded us the Examiner erred in rejecting claim 1 as
patent-ineligible subject matter. We, therefore, sustain the subject matter
ineligibility rejection of claim 1. Appellant argues the patentability of
independent claims 10 and 15 for the same reasons. App. Br. 11. We,
therefore, sustain the subject matter ineligibility rejection of claims 10
and 15 for the same reasons. We also sustain the subject matter ineligible
rejection of dependent claims 2-9, 11-13, and 16-18, which Appellants did
not argue separately. Id.
Obviousness
Appellants argue the Examiner erred in rejecting claim 1 as obvious
because Florent does not teach or suggest a “first point in time [that] relates
to a pre-treatment state” and a “second point in time [that] relates to a post­
treatment state.” App. Br. 11-18. In particular, Appellants argue Florent
discloses generating a fluoroscopy image of a patient prior to or during
treatment. Id. at 12. Appellants argue Stiles does not cure this deficiency
because Stiles does not disclose combining a pre-treatment image and a
post-treatment image. Id. at 13-14. According to Appellants, Stiles
discloses combining images from a single period of time (i.e., pre-treatment
images or post-treatment images) instead of combining pre- and post­
treatment images. Id. at 13-14.
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Appellants further argue an ordinarily skilled artisan would not have
been motivated to combine Florent and Stiles in the manner suggested by the
Examiner because the purpose of Florent’s method is to allow a clinician to
visualize the interventional device within the patient’s anatomy at the time
of treatment. Id. at 15 (citing Florent 1:21-23). Appellants argue that if
Florent were modified as proposed, the method would no longer be capable
of supporting this objective, changing Florent’s principle of operation and
rendering it unsuitable for its intended purpose. Id. at 15-16.
Appellants have not persuaded us the Examiner erred. The Examiner
finds, and we agree, Florent teaches combining angiography images
acquired as a first point in time (pre-treatment) and a second point in time
(intra-treatment). Ans. 7 (citing Florent 6:25-8:13). Stiles teaches the
benefits of examining post-treatment images. Id. at 7-8 (citing Stiles 1 85).
The proposed combination would add Stiles’ post-treatment image to the
Florent’s pre-treatment and intra-treatment images. Id. at 8. Appellants’
arguments attacking Florent and Stiles individually are not persuasive
because the Examiner relies on the combination of the references for the
disputed limitations. One cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of
references. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants’ arguments that combining the references would render
Florent unsuitable for its intended purpose assume that such a combination
would remove the intra-treatment images taught in Florent. See App.
Br. 15-16. However, this argument is contrary to the Examiner’s proposed
combination. See Ans. 8. Moreover, “[t]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
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into the structure of the primary reference. . . . Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(citations omitted); see also, In reNievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
Accordingly, Appellants have not persuaded us the Examiner erred in
rejecting claims 1-13 and 15-18 as obvious over Florent and Stiles. We,
therefore, sustain the obviousness rejection of claim 1, independent claims
10 and 15, and dependent claims 2-9, 11-13, and 16-18, which Appellants
did not argue separately. App. Br. 18.
DECISION
We affirm the decision of the Examiner to reject claims 1-13
and 15-18.
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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