Ex Parte Itagaki et al

Patent Trial and Appeal Board

Dec 29, 2016

12598168 (P.T.A.B. Dec. 29, 2016)

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.
12/598,168 10/29/2009 Hiroyuki Itagaki 1141/80959 6914
23432 7590 12/30/2016
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
12/30/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROYUKIITAGAKI and TAKASHINISHIHARA
Appeal 2015-002702
Application 12/598,1681
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
MATTHEW S. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hiroyuki Itagaki, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1—11 and 13—15. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellants identify Hitachi Medical Corporation as the real party in
interest. App. Br. 3.
Appeal 2015-002702
Application 12/598,168
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A magnetic resonance imaging apparatus comprising:
an image acquisition unit configured to divide an imaging
region of an object to be examined into a plurality of stations of
respective station positions, and acquire a plurality of images having
different image types for each station, while moving a table on which
the object is mounted, station by station;
a display control unit configured to display the plurality of
images in a predetermined display format; and
a classification processing unit configured to classify the
plurality of images by image types and station position, based on
imaging condition including imaging parameters,
wherein the display control unit displays the plurality of images
by image types in spatial order of station positions, based on the
classification result by the classification processing unit.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Giger US 2001/0043729 A1 Nov. 22,2001
Hayashi US 2002/0013524 A1 Jan. 31,2002
Schmitz US 2002/0087071 A1 Jul. 4,2002
Perren US 2003/0004518 A1 Jan. 2,2003
The following rejections are before us for review:
1. Claims 1—8, 10, 11, 13, and 14 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Giger, Perren, and Hayashi.
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2. Claims 9 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Giger, Perren, Hayashi, and Schmitz.
ISSUES
Did the Examiner err in rejecting claims 1—8, 10, 11, 13, and 14 under
35 U.S.C. §103(a) as being unpatentable over Giger, Perren, and Hayashi?
Did the Examiner err in rejecting claims 9 and 15 under 35 U.S.C.
§103 (a) as being unpatentable over Giger, Perren, Hayashi, and Schmitz?
ANALYSIS
The rejection of claims 1—8, 10, 11, 13, and 14 under 35 U.S.C. § 103(a) as
being unpatentable over Giger, Perren, and Hayashi.
The claimed subject matter involves a multi-station magnetic
resonance imaging apparatus (MRI). The Examiner’s position appears to be
that this is shown in para. 6 of Perren. See Ans. 3: “Giger does not explicitly
teach that the object to be examined into a plurality of stations of respective
station positions. However Perren in paragraph 6 teaches ... .”
We have reviewed para. 6 of Perren. It describes “a method for the
determination of reduction parameters for the subsequent adjustment of a
reduction device to reduce the fragments of a fractured bone ... .” It is not
apparent to us what in para. 6 of Perren equates to or would lead one of
ordinary skill to a multi-station MRI as is involved in the claimed subject
matter. We agree with the Appellants that:
Perren has nothing to do with examining an object at a plurality of
stations. Instead, Perren generates a mirror image of a first bone from
a plane of symmetry which is determined from positions of a first set
of points on a first bone obtained by comparing a contour of the first
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bone on a first side of a patient's body with respect to a corresponding
second bone on an opposite side of the patient's body.
Reply Br. 10.
Because the evidence relied upon does not disclose or lead one of
ordinary skill in the art to a multi-station MRI to which all the claims are
limited to, a prima facie case of obviousness has not been made out in the
first instance by a preponderance of the evidence. Accordingly, the rejection
is not sustained.
The rejection of claims 9 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Giger, Perren, Hayashi, and Schmitz.
This rejection of dependent claims is also not sustained for the same
reason discussed above.
NEW GROUND OF REJECTION
Claims 1—11 and 13—15 are rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to classification. Classification is a building block
of human ingenuity. As such the classification concept is an abstract idea.
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Step two is “a search for an ‘inventive concept’—i.e., 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.’” Id. (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of classification into an inventive concept.
The classification as claimed is more particularly image classification.
But applying the concept of classification to images in particular does not
make the classification concept any less abstract. At best it provides a
practical application for the classification concept in the image domain. But
a recitation of practical application for an abstract idea is insufficient to
transform an abstract idea into an inventive concept. Cf CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The Court
[Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation
of a practical application for the calculation could alone make the invention
patentable.”).
Claim 1 describes a multi-station MRI, comprising an image
acquisition unit, a display control unit, a classification processing unit. Each
unit is “configured” to perform certain functions. Notwithstanding, that no
“unit” claimed is structurally limited, e.g., there is no requirement that the
multi-station MRI as a whole or any “unit” of it be computer-implemented,
the multi-station MRI as claimed is generic. Claim 1 apparatus is a typical
multi-station MRI. Any multi-station MRI available at the time the
application was filed would have satisfied this. The Specification supports
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that view. See Spec, para 2 (“Among magnetic resonance imaging
apparatuses (hereinafter referred to as MRI apparatuses), there is a kind
comprising the multi-station imaging method which performs imaging ... .”).
See Spec., para. 12. In effect, the classification abstract idea to which claim
1 is directed to is applied to the images a generic multi-station MRI
necessarily produces. But merely reciting a generic multi-station MRI so as
to apply the classification abstract idea to its images is insufficient to
transform the classification abstract idea into an inventive concept. Cf.
Alice, 134 S. Ct. at 2358. “[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea “while adding the words ‘apply if” is not
enough for patent eligibility.”
Arguably, the claim 1 apparatus differs from the typical generic
multi-station MRI by including a classification processing unit; that is, “a
classification processing unit configured to classify the plurality of images
by image types and station position, based on imaging condition including
imaging parameters.” But the “unit” as claimed is described in general
functional terms, i.e., to classify images a generic multi-station MRI
necessarily produces, that does no more than place the classification abstract
idea in a particular context. Further classifying said images by “image types
and station position, based on imaging condition including imaging
parameters” does little to patentably transform the classification abstract
idea. The “unit” as claimed performs a classification that, apart from the
particular context within which it is placed, could be performed mentally or
manually. Nothing about the unit as claimed, or the apparatus claimed as a
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whole, suggests claim 1 provides a solution that is necessarily rooted in
multi-station MRIs in order to overcome a problem specifically arising in the
realm of multi-station MRIs. Cf. DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014) (“[a] claimed solution [that] is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.”) The multi-station
MRI as claimed does not operate in an unconventional manner to achieve an
improvement in its functionality. See Amdocs (Israel) Limited v. Openet
Telecom, Inc, No. 2015-1180, 2016 WL 6440387, *10 (Fed. Cir. Nov. 1,
2016). It merely recites the performance of some long-known practice of
classifying images with the requirement to perform said classification to
images from a typical generic multi-station MRI. Classifying images is not
transformed into an inventive concept by simply applying it to the images a
typical multi-station MRI necessarily produces.
For the foregoing reasons, we find that claim 1 covers claimed subject
matter that is judicially-excepted from patent eligibility under § 101. The
other independent claim — method claim 11 parallels claim 1 — similarly
covers claimed subject matter that is judicially-excepted from patent
eligibility under § 101. The dependent claims describe various classification
schemes which do little to patentably transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 1—11 and
13-15 under 35 U.S.C. § 101.
For the foregoing reasons, the rejections are reversed but the claims
are newly rejected under §101.
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CONCLUSIONS
The rejection of claims 1—8, 10, 11, 13, and 14 under 35 U.S.C.
§103 (a) as being unpatentable over Giger, Perren, and Hayashi is reversed.
The rejection of claims 9 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Giger, Perren, Hayashi, and Schmitz is reversed.
Claims 1—11 and 13—15 are newly rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
DECISION
The decision of the Examiner to reject claims 1—11 and 13—15 is
reversed.
Claims 1—11 and 13—15 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
REVERSED; 37 C.F.R, $ 41.50(b)
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