Ex Parte Grudzinski et al

Patent Trial and Appeal Board

Feb 15, 2018

12556323 (P.T.A.B. Feb. 15, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/556,323 09/09/2009 Joseph J. Grudzinski 1512.308 2277
72088 7590 02/20/2018
WISCONSIN ALUMNI RESEARCH FOUNDATION
C/O BOYLE FREDRICKSON S.C
840 North Plankinton Avenue
Milwaukee, WI53203
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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):
docketing @boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH J. GRUDZINSKI, ROBERT JERAJ,
WOLFGANG A. TOME, and JAMEY P. WEICHERT
Appeal 2016-008455
Application 12/556,3231
Technology Center 3600
Before BRADLEY W. BAUMEISTER, ADAM J. PYONIN, and
AMBER L. HAGY, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1—22, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Real Party in Interest is identified as the Wisconsin Alumni Research
Foundation. See App. Br. 3.
Appeal 2016-008455
Application 12/556,323
STATEMENT OF THE CASE
The Application is directed to “methods and apparatus for the
treatment of tumors using radiopharmaceuticals and, in particular, to a
system for the computerized scheduling of the administration of such
radiopharmaceuticals.” Spec. 13.
Claims 1, 12, and 22 are independent. Claim 1 is reproduced below
for reference:
1. A system for planning a treatment schedule for a
treatment-radiopharmaceutical, the system comprising:
a radiation imaging machine adapted to scan a patient over
a volume to measure emitted radiation;
an electronic computer communicating with the radiation
imaging machine and executing a stored program held in non-
transitory computer readable medium to:
(1) receive a three-dimensional data set from the radiation
imaging machine indicating a history of tissue uptake of an
imaging-radiopharmaceutical in at least one volume of interest;
(2) deduce an active time of the imaging-
radiopharmaceutical in the volume of interest, the active time in
the form of a measured time activity curve providing radiation
dose rate as a function of time over a treatment period for the at
least one volume of interest; and
(3) prepare a treatment schedule for a treatment-
radiopharmaceutical different from the imaging-
radiopharmaceutical, based on the active time of the imaging-
radiopharmaceutical, the treatment schedule providing a
schedule of multiple delivery amounts and delivery times for the
treatment-radiopharmaceutical, the treatment schedule setting
the multiple delivery amounts and delivery times according to a
combining of multiple overlapping values of multiple time
activity curves spanning the treatment schedule, the multiple
time activity curves each based on the measured time activity
curve, each of the multiple time activity curves referenced to one
of the delivery amounts and delivery times, the delivery amounts
and delivery times constrained by a requirement that an
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Appeal 2016-008455
Application 12/556,323
overlapping radiation dose rate from a combination of the
multiple time activity curves referenced to the delivery amounts
and delivery times remains above a desired radiation dose rate
necessary to kill tumor cells based on the active time of the
treatment- radiopharmaceutical deduced from the active time of
the imaging radiopharmaceutical.
Claims 1—22 stand rejected under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter. Final Act. 3.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include an implicit
exception: laws of nature, natural phenomena, and abstract ideas are not
patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS BankInt 7, 134 S. Ct.
2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step
framework previously set forth in Mayo Collaborative Services v.
Prometheus Labs., Inc., 566 U.S. 66, 82—83 (2012), “for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp., 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,” e.g., to an abstract idea. Alice Corp., 134 S. Ct. at 2355. If the
claims are directed to a patent-ineligible concept, the inquiry proceeds to the
second step, where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
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Appeal 2016-008455
Application 12/556,323
application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at
1297).
The Court acknowledged in Mayo that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. Therefore, the we consider the
claims in their entirety to determine “whether their character as a whole is
directed to excluded subject matter.” McRO, Inc. v. Bandai Namco Games
Am., Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quotations omitted); see
also Diamond v. Diehr, 450 U.S. 175, 176 (1981) (“claims must be
considered as a whole.”).
CONTENTIONS AND ANALYSIS
In rejecting the pending claims under § 101, the Examiner finds the
claims are directed to the abstract concept of “solving a business problem,
that of determining and scheduling a patient treatment utilizing computers,”
because “the claims are directed to a series of steps or an apparatus related to
planning and scheduling a radiopharmaceutical treatment schedule based on
a measured time activity curve for a particular radiation dose.” Final Act. 3,
5; see also Ans. 6—7. The Examiner finds the claims do not include
additional elements sufficient to amount to significantly more than the
judicial exception because the additional elements or combination of
elements other than the abstract idea “amount to no more than a recitation of
. . . generic computer structure that serves to perform generic computer
functions,” and “functions that are well understood, routine, and
conventional activities previously known to the pertinent industry.” Final
Act. 3^4; see also Ans. 8.
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Appeal 2016-008455
Application 12/556,323
We find the Examiner’s characterization of the claims—an abstract
idea encompassing solving the business problem of determining and
scheduling a patient treatment utilizing computers—does not properly
account for the limitations of “a radiation imaging machine adapted to scan a
patient over a volume to measure emitted radiation; [and] an electronic
computer communicating with the radiation imaging machine,” as recited in
independent claim 1, and similarly recited in independent claims 12 and 22.
The Examiner’s determination that the claims are directed to an abstract
concept, therefore, does not reflect the character of the claims as a whole.
SeeMcRO, Inc. 837 F.3d at 1312.
Accordingly, we do not sustain the rejection of claims 1—22 under
35U.S.C. § 101.
DECISION
The Examiner’s decision rejecting claims 1—22 is reversed.
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).
REVERSED
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