Ex Parte Itagaki et al

Patent Trial and Appeal Board

Aug 18, 2017

12598168 (P.T.A.B. Aug. 18, 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.
12/598,168 10/29/2009 Hiroyuki Itagaki 1141/80959 6914
23432 7590 08/21/2017
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
08/21/2017 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 HIROYUKI ITAGAKI and TAKASHI NISHIHARA
__________

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 REQUEST FOR REHEARING
The Appellants filed a "Rehearing Request" pursuant to 37 C.F.R.
§ 41.52 of the Decision on Appeal.2
In the Decision on Appeal, the Board

1 The Appellants identify Hitachi Medical Corporation as the real party in
interest. Req. 4.
2 This "Decision on Request for Rehearing" references the Appellants'
Rehearing Request ("Req.," filed Feb. 27, 2017) and the Decision on Appeal
("Dec.," mailed Dec. 30, 2016).
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1. reversed the rejection of claims 1–8, 10, 11, 13, and 14 under
35 U.S.C. § 103(a) as being unpatentable over Giger,3 Perren,4 and
Hayashi5;
2. reversed the rejection of claims 9 and 15 under 35 U.S.C. § 103(a)
as being unpatentable over Giger, Perren, Hayashi, and Schmitz6;
and
3. newly rejected claims 1–11 and 13–15 under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
The Request seeks reconsideration only of the Board's decision newly
rejecting claims 1–11 and 13–15 under 35 U.S.C. § 101.

DISCUSSION
The panel entered a new ground of rejection of claims 1–11 and 13–
15 under 35 U.S.C. § 101 pursuant to 37 C.F.R. § 41.50(b), which provides
that "[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review." See Dec. 8. Accordingly, the Board
did not make a final determination but rather raised a new question of
patent-eligibility. We have carefully reviewed the arguments set forth in the
Request for Rehearing but for the following reasons they do not persuade us
not to raise the question.

3 Giger, US 2001/0043729 A1, published Nov. 22, 2001.
4 Perren, US 2003/0004518 A1, published Jan. 2, 2003
5 Hayashi, US 2002/0013524 A1, published Jan. 31, 2002
6 Schmitz, US 2002/0087071 A1, published July 4, 2002
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Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.

Step one.
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. We stated: "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." Dec. 4.
The Appellants' arguments challenging our determination under Alice
step one are set forth on pages 13–18 of the Request (in the section entitled
"[IV.] B. PRESENT CLAIMS ARE NOT DIRECTED TO AN
ABSTRACT IDEA").
The Appellants begin by arguing that "as pointed out by the Federal
Circuit in Enfish [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016)], 822 F.3d at 1327 (Fed. Cir. 2016), the required inquiry under
Section 101 is whether, considered in light of the specification, each claim
as a whole is directed to excluded subject matter." Req. 13. That is correct.

The "directed to" inquiry
The "directed to" inquiry cannot simply ask whether the claims
involve a patent-ineligible concept, "[f]or all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
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or abstract ideas." Mayo Collaborative Services v. Prometheus Labs., Inc.,
566 U.S. 66, 71 (2012). Rather, the "directed to" inquiry applies a stage-one
filter to claims, considered in light of the Specification, based on whether
"their character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015);
see Genetic Techs. Ltd. v. Merial L.L.C., 2016 WL 1393573, at *5 (Fed. Cir.
April 8, 2016) (inquiring into "the focus of the claimed advance over the
prior art"); Enfish, 822 F.3d at 1335. "In determining the eligibility of
respondents' claimed process for patent protection under § 101, their claims
must be considered as a whole." Diamond v. Diehr, 450 U.S. 175, 188
(1981). The question is whether the claims as a whole "focus on a specific
means or method that improves the relevant technology" or are "directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016).
Like the Decision, the Request focuses on claim 1. No other claim is
discussed.
However, in the section entitled "III. SUMMARY OF CLAIMED
SUBJECT MATTER" the other independent claim on appeal, claim 11, is
mentioned and reproduced (as is claim 1). See Req. 8. We likewise
reproduce claim 11, side-by-side with claim 1.

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l. 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.
11. An image classification method
using a magnetic resonance imaging
apparatus, the image classification
method including:
an image acquisition step of
dividing an imaging region of
an object to be examined into
a plurality of stations of
respective station positions,
and acquiring a plurality of
images having different
image types for each station
amongst the plurality of
stations of respective station
positions, while moving a
table on which the object is
mounted, station by station;
an image type classification
step that classifies the
plurality of images by image
types and station position,
based on imaging condition
including imaging
parameters; and
a display step that displays
the plurality of images in a
predetermined format by the
image types in spatial order
of station positions, based on
the classification result of the
image type classification step.

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Only claim 1 was reproduced in the Decision. We stated that it was
"illustrative of the subject matter on appeal." Dec. 2. We "[took] claim 1 as
representative of the claims on appeal" (Dec. 4) in establishing that "[c]laims
1–11 and 13–15 are [to] be rejected under 35 U.S.C. § 101 as being directed
to judicially-excepted subject matter" (Dec. 4).
We stated later in the Decision that "[t]he other independent claim —
method claim 11 parallels claim 1 — similarly covers claimed subject matter
that is judicially-excepted from patent eligibility under § 101." Dec. 7.
Accordingly, the Board's position with respect to the question of
patent-eligibility under § 101 for the subject matter of claim 11 is similar to
the one more fully discussed in the Decision with respect to claim 1.
However, although claims 1 and 11 are similar in that they both
involve a multi-station MRI and "classif[y] [a] plurality of images by image
types and station position, based on imaging condition including imaging
parameters," they are not of identical scope.
Claim 1 recites an MRI apparatus while claim 11 more broadly recites
a method of "using" it. Claim 1 recites three units ("image acquisition,"
"display control," and "classification processing") of a magnetic resonance
imaging [MRI] apparatus configured to perform certain functions. On the
other hand, claim 11 recites "[a]n image classification method using a
magnetic resonance imaging apparatus" including three steps ("image
acquisition," "image type classification," and "display"). Unlike claim 1,
claim 11 does not link any of the recited steps to a unit of an MRI. Claim 11
calls for using an MRI for an "image classification method" but it includes
no limitation requiring the MRI to perform every one of the three recited
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steps. Therefore, for example, while claim 1 requires "a classification
processing unit configured to classify the plurality of images by image types
and station position, based on imaging condition including imaging
parameters," claim 11's "image type classification step that classifies the
plurality of images by image types and station position, based on imaging
condition including imaging parameters" does not.
As a result of claim 11's broader scope, the Board takes a stronger
position on the patent-ineligibility of claim 11. For claim 1 we stated that
"[t]he 'unit' [of claim 1] as claimed performs a classification that, apart from
the particular context within which it is placed, could be performed mentally
or manually" (Dec. 6 (emphasis added)). But one can manually "classif[y]
[a] plurality of images by image types and station position, based on imaging
condition including imaging parameters" (claim 11). Consequently, we take
a firmer position that claim 11 covers judicially-excepted subject matter and
thus is patent-ineligible under § 101.
Consistent with the Request and the Decision, we will continue to
focus on claim 1. We recognize that claim 1 recites an apparatus rather than,
per claim 11, a method. However, as the above side-by-side comparison
shows, the subject matter difference between claims 1 and 11 is
insubstantial, except that claim 11 is broader in scope. Both involve a multi-
station MRI and "classif[y] [a] plurality of images by image types and
station position, based on imaging condition including imaging parameters."
The "directed to" inquiry requires considering claims in light of the
Specification, based on whether "their character as a whole is directed to
excluded subject matter." Internet Patents Corp., 790 F.3d at 1346. In this
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case, it does not matter which independent claim we choose to represent the
claimed subject matter because their character as a whole are the same. Cf.
Alice, 134 S. Ct. at 2360:
The method claims recite the abstract idea implemented on a
generic computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art. ' " Mayo, supra, at ––––, 132 S.Ct., at 1294
(quoting Flook, 437 U.S., at 593, 98 S.Ct. 2522); see id., at 590,
98 S.Ct. 2522 ("The concept of patentable subject matter under
§ 101 is not 'like a nose of wax which may be turned and
twisted in any direction ... ' "). Holding that the system claims
are patent eligible would have exactly that result.
Because petitioner's system and media claims add nothing of
substance to the underlying abstract idea, we hold that they too
are patent ineligible under § 101.
Claim 1 is drawn to a magnetic resonance imaging [MRI] apparatus,
reciting three units ("image acquisition," "display control," and
"classification processing") configured to perform certain functions.
We stated in the Decision (albeit with respect to step two of the Alice
framework):
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 that view.
See Spec. para 2 ("Among magnetic resonance imaging
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apparatuses (hereinafter referred to as MRI apparatuses), there
is a kind comprising the multi-station imaging method which
performs imaging .... "). See Spec., para. 12.
Dec. 5–6.
The Request nowhere disputes the Board's finding that the claim 1
apparatus is broadly drawn to conventional multi-station MRIs.
The image acquisition unit of the claimed apparatus is also
conventional. It is required to be "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." Claim 1. But the Appellants show typical images obtained from a
conventional multi-station MRI that necessarily require an image acquisition
unit that functions as claimed. See the discussion at Req. 14–15.
The claim as a whole is aimed instead at classifying the acquired
images and then displaying them in the resulting classification. Cf. Req. 17
("the present claim 1 is directed to an improved approach in multi-station
MRI including classifying plural MRI images by image types and station
position, based on imaging condition including imaging parameters, and
displaying the plural images by image types in spatial order of station
positions, based on the classification result.")
Accordingly, the focus of claim 1 as a whole is on classifying images
acquired via conventional multi-station MRIs and displaying them according
to the classified result.
The abstract idea step of the inquiry calls upon us to look at the focus
of the claimed advance over the prior art to determine if the claim's
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"character as a whole is directed to excluded subject matter." Enfish, 822
F.3d at 1335 (quoting Internet Patents Corp., 790 F.3d at 1346).
In that regard, the Specification provides a section entitled "Problems
to be Solved" (Spec. page 3) which states
In the multi-station imaging method, when a plurality of
images are read in to be synthesized or compared, classification
of images is a crucial technique from the viewpoint of
improving operability since the images of a plurality of image
types and stations need to be classified.
Spec. para. 8. The Specification states that the prior art "only discloses the
user interface for displaying a plurality of station images simply by
sequence, station or slice in a predetermined display order, and the algorithm
for classifying the plurality of images is not taken into consideration."
(Spec. para. 9 (emphasis added)).
The objective of the present invention is to provide an MRI
apparatus capable of classifying a plurality of images obtained
by multi-station imaging, considering the above-described
circumstance.
Spec. para. 10.
In the conventional method for classification and rearrangement of
images, "[t]he unclassified images had been manually rearranged by an
operator in the conventional method. . . . The conventional method of
classification and rearrangement had been carried out by repeatedly
executing the above-mentioned procedure until image type which is
necessary for diagnosis is displayed." Spec. para. 30.
[0031] Such manual method of classification and rearrangement
of images becomes a heavy burden for the operator especially
in the case of using the multi-station imaging method for
imaging a wide region of an object or the case of juxtaposing
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and displaying the images of a plurality of image types, since
great number of images need to be classified and rearranged.
Therefore, it is desirable that the MRI apparatus executes the
classification and rearrangement of images automatically for
the purpose of reducing the workload of the operator.
[0032] The classification of the plurality of images obtained by
the multi-station imaging method and the rearrangement of the
images thereof using the classification result related to the
present invention will be described below. First, the algorithm
for achieving classification of the reconstruction images or
calculation image (hereinafter referred to as automatic
classification algorithm) will be described.
The classification process is then further described, exemplified by two
"embodiment[s] of automatic classification algorithm[s]" (Spec. paras. 35
and 57).
In light of the Specification's description of the problem and solution,
the advance over the prior art by the claimed invention is automatic
classification. This is the heart of the invention. Cf. Intellectual Ventures I
LLC v. Erie Indemnity Company, 850 F.3d 1315, 1328 (Fed. Cir. 2017) ("the
heart of the claimed invention lies in creating and using an index to search
for and retrieve data . . . an abstract concept.")
However, notwithstanding the advance over the prior art is automatic
classification, claim 1 is not so limited. Claim 1 calls for
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.
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Neither unit is required to perform its function automatically. See Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345
(Fed. Cir. 2013) (admonishing that "the important inquiry for a § 101
analysis is to look to the claim"; "the complexity of the implementing
software or the level of detail in the specification does not transform a claim
reciting only an abstract concept into a patent-eligible system or method.")
Accordingly, given the focus of claim 1 as a whole is on classifying
images acquired via conventional multi-station MRIs and displaying them
according to the classified result, and given that, in light of the Specification,
the heart of the invention is (automatic) classification, the claims are
properly characterized as being "directed to" classification (cf. Dec. 4
("classification")) or "more particularly image classification" (Dec. 5).
We now turn to the question of whether image classification to which
claim 1 is "directed to" is a patent-ineligible abstract idea. In that regard, we
look to other decisions for guidance. See Amdocs (Israel) Limited v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016):
Instead of a definition [for what an "abstract idea"
encompasses], then, the decisional mechanism courts now
apply is to examine earlier cases in which a similar or parallel
descriptive nature can be seen—what prior cases were about,
and which way they were decided. See, e.g., Elec. Power Grp.,
830 F.3d at 1353–54.[] That is the classic common law
methodology for creating law when a single governing
definitional context is not available. See generally Karl N.
Llewellyn, The Common Law Tradition: Deciding Appeals
(1960). This more flexible approach is also the approach
employed by the Supreme Court. See Alice, 134 S. Ct. at 2355–
57.
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In that regard, In re TLI Communications LLC Patent Litigation, 823
F.3d 607, 613 (Fed. Cir. 2016) is relevant. The court found there that
"representative claim 177 is drawn to the concept of classifying an image and
storing the image based on its classification." Id. at 611 (emphasis added).
While claim 17 requires concrete, tangible components such as
"a telephone unit" and a "server," the specification makes clear
that the recited physical components merely provide a generic
environment in which to carry out the abstract idea of classifying
and storing digital images in an organized manner. And the
specification's emphasis that the present invention "relates to a
method for recording, communicating and administering [a]
digital image" underscores that claim 17 is directed to an
abstract concept.
Id. (emphasis added).
Although TLI does not expressly discuss displaying, displaying per se
is an abstract idea. Cf. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) ("merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as

7 17. A method for recording and administering digital images, comprising
the steps of:
recording images using a digital pick up unit in a telephone unit,
storing the images recorded by the digital pick up unit in a digital
form as digital images,
transmitting data including at least the digital images and
classification information to a server, wherein said classification information
is prescribable by a user of the telephone unit for allocation to the digital
images,
receiving the data by the server,
extracting classification information which characterizes the digital
images from the received data, and
storing the digital images in the server, said step of storing taking into
consideration the classification information.
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identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis.") When "[t]he focus of the asserted claims"
is "on collecting information, analyzing it, and displaying certain results of
the collection and analysis," the claims are directed to an abstract idea. Id. at
1343. Combining displaying the classified result with classifying images
does not make the combination any less abstract. Cf. Shortridge v. Found.
Constr. Payroll Serv., LLC, No. 14-CV-04850-JCS, 2015 WL 1739256
(N.D. Cal. Apr. 14, 2015), aff'd, No. 2015-1898, 2016 WL 3742816 (Fed.
Cir. July 13, 2016).
Given these prior cases, it is appropriate to characterize the image
classification concept to which claim 1 is "directed to" as an abstract idea.
Accordingly, under step one of the Alice framework, we determine that
claim 1 is directed to an abstract idea.
The Appellants argue that
claim 1 of the present application is directed to an improved
approach in multi-station magnetic resonance imaging (MRI)
to display images having different image types to an operator.
Similar to the claims in Enfish which the Federal Circuit found
not to be directed to an abstract idea, the present claims are
directed to an improvement of an existing technology (here,
MRI image display control).
Req. 13 (emphasis added).
The "improved approach" that claim 1 is said to be directed to is
difficult to discern. Claim 1 seeks to "classify the plurality of images by
image types and station position, based on imaging condition including
imaging parameters" and then "display[ ] the plurality of images by image
types in spatial order of station positions, based on the classification result
by the classification processing unit." These limitations describe the
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classification result that is intended to be achieved. These limitations
provide no insight into the mechanism by which the (conventional) multi-
station MRI achieves said described classification result. The mechanism
responsible for achieving that particular result is insufficiently claimed to
support a determination that, under Alice step one, the claimed subject
matter is directed to "an improved approach in multi-station [MRI]" (Req.
13) rather than image classification. Cf. Credit Acceptance Corp. v.
Westlake Services, LLC, 2017 WL 2485469, *10, No. 2016-2001 (Fed. Cir.
June 9, 2017):
Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process. See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1342 (Fed. Cir. 2017) (explaining that "[o]ur law
demands more" than claim language that "provides only a
result-oriented solution, with insufficient detail for how a
computer accomplishes it"); Elec. Power Grp., 830 F.3d at
1354 (explaining that claims are directed to an abstract idea
where they do not recite "any particular assertedly inventive
technology for performing [conventional] functions").
As evidence that claim 1 is "[s]imilar to the claims in Enfish which the
Federal Circuit found not to be directed to an abstract idea [in that] the
present claims are directed to an improvement of an existing technology
(here, MRI image display control)" (Req. 13), the Appellants illustrate three
different arrangements in which images obtained by a three-station MRI can
be displayed. Req. 14–16.
The Specification (Fig. 2, reproduced below) discloses a typical multi-
station MRI sequence whereby images of different types are obtained at each
station.
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Fig. 2 of the Specification "shows the imaging order in the whole-body
MRI" (Spec. para 14).

The Specification further discloses
in the case that "display by image types" of the screen display
in Fig. 8 (a) [reproduced below] is highly prioritized, the
present invention may be set as applicable under the condition
of the display by slices, by making it possible to select the
display by slices which displays the images from the vertex to
the lower extremity in the vertical direction and the multi-slice
images of the specified image type in the lateral directions.
Spec. para 14.
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"Fig. 8 is an example of a screen for selecting automatic
classification functions of a whole-body MRI." Spec. para. 14.
Thereby, the Specification discloses a multi-station MRI for obtaining
images of a subject at different slices, each slice having a corresponding set
of different image types (Proton (P-W), T1-weighted (T1-W), and T2-
weighted (T2-W)).
In the Request, the Appellants illustrate results of scanning a subject's
torso, abdomen, and legs via a three-station multi-station MRI (i.e., Station
1, Station 2, Station 3, respectively) in the manner the Specification
discloses. Req. 14–16. Given three slices (Slice-1; Slice-2; and, Slice-3), 27
images could be obtained. Here is a list:
1. Station 1 (torso), Slice 1, P-W
2. Station 1 (torso), Slice 1, T1-W
3. Station 1 (torso), Slice 1, T2-W
4. Station 1 (torso), Slice 2, P-W
5. Station 1 (torso), Slice 2, T1-W
6. Station 1 (torso), Slice 2, T2-W
7. Station 1 (torso), Slice 3, P-W
8. Station 1 (torso), Slice 3, T1-W
9. Station 1 (torso), Slice 3, T2-W
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10. Station 2 (abdomen), Slice 1, P-W
11. Station 2 (abdomen), Slice 1, T1-W
12. Station 2 (abdomen), Slice 1, T2-W
13. Station 2 (abdomen), Slice 2, P-W
14. Station 2 (abdomen), Slice 2, T1-W
15. Station 2 (abdomen), Slice 2, T2-W
16. Station 2 (abdomen), Slice 3, P-W
17. Station 2 (abdomen), Slice 3, T1-W
18. Station 2 (abdomen), Slice 3, T2-W
19. Station 3 (legs), Slice 1, P-W
20. Station 3 (legs), Slice 1, T1-W
21. Station 3 (legs), Slice 1, T2-W
22. Station 3 (legs), Slice 2, P-W
23. Station 3 (legs), Slice 2, T1-W
24. Station 3 (legs), Slice 2, T2-W
25. Station 3 (legs), Slice 3, P-W
26. Station 3 (legs), Slice 3, T1-W
27. Station 3 (legs), Slice 3, T2-W

According to the Appellants, the 27 images can be displayed in the
following three arrangements:
A. "the obtained images are displayed on a display in order of obtained
time" (Req. 14–15):
1., 2., 3., 4., 5., 6., 7., 8., 9., 10., 11., 12., 13., 14., 15., 16., 17., 18.,
19., 20., 21., 22., 23., 24., 25., 26., 27.

B. "the images are displayed according to station position, then image
type, and then slice position" (Req. 14):
1., 4., 7., 2., 5., 8., 3., 6., 9., 10., 13., 16., 11., 14., 17., 12., 15., 18.,
19., 22., 25., 20., 23., 26., 21., 24., 27.
C. "the plural images are displayed in spatial order of station positions,
as opposed to time order, or another order other than spatial order"
(Req. 16):
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1., 2., 3., 10., 11., 12., 19., 20., 21., 4., 5., 6., 13., 14., 15., 22., 23., 24.,
7., 8., 9., 16., 17., 18., 25., 26., 27.
The first and second arrangements (A. and B.) are conventional. See
Req. 14 ("In conventional MRI technology, the images obtained by multi-
station MRI are typically displayed on a display in time order (i.e. according
to time each image was obtained) or another order."); see also Spec. para. 9.
By contrast, the Appellants argue that the third arrangement (C.) is an
example of "re-organized images which are displayed on the display by the
improved apparatus of the present application." Req. 15 (emphasis added).
Based on that arrangement (C.), the Appellants argue
the present claim 1 is directed to an improved approach in
multi-station MRI including classifying plural MRI images by
image types and station position, based on imaging condition
including imaging parameters, and displaying the plural
images by image types in spatial order of station positions,
based on the classification result. Since the displayed images
have already been reorganized in such improvement, the
operator can more efficiently analyze the plural displayed
images obtained in multi-station MRI without having to waste
time to manually re-organize the images on the display. Such
saved time presents a significant savings in cost of care in the
current healthcare environment.
Req. 17.
But we do not find the evidence the Appellants put forward in the
Request (Req. 14–16) - i.e., plural MRI images displayed in arrangement C.
in contrast to conventional arrangements A. or B. - sufficient to support the
argument that claim 1 is directed to an "improved apparatus" rather than, as
we have determined, image classification. Furthermore, the improvement
set forth by Appellants appears to be directed to an increase in operator
efficiency, as opposed to any type of improvement to the multi-station MRI
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itself. Here, "the plain focus of the claims is [not] on an improvement to
computer functionality itself, [but rather, directed to] economic or other
tasks for which a computer is used in its ordinary capacity." See Enfish,
LLC, 822 F.3d at 1336.
Instead of showing an improvement to a multi-station MRI, the
evidence reinforces our view that the focus of claim 1 is on classifying
images in a particular orientation. Rather that supporting the Appellants'
argument that claim 1 is directed to an "improved apparatus," the evidence
weighs in favor of the Board's determination, under Alice step 1, that the
claimed subject matter is directed to the "image classification" abstract idea.
Furthermore, said evidence is not commensurate in scope with what is
claimed. For example, claim 1 calls for "display[ing] the plurality of images
by image types in spatial order of station positions, based on [classifying the
plurality of images by image types and station position, based on imaging
condition including imaging parameters]." Arrangement (C.) is but one of
several arrangements the claim covers.
The Appellants argue that
a more typical circumstance may involve 160 images
corresponding to four stations, ten slices, four image types
(Proton, Tl, T2, diffusion-weighted). Manual reorganization by
the operator, especially in such circumstance, is a time-
consuming task and is susceptible to operator error. For
example, the typical operator who is sufficiently adept or
expert, such as at recognizing the image type from the contrast
of the image, would still take approximately five minutes or
more to perform the reorganization, with some risk of operator
error.
Req. 16. But claim 1 is not limited to improving any particular "typical
circumstance." It simply describes a resulting "image classification"
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orientation for images acquired via a conventional multi-station MRI. Also,
the asserted improvement (i.e., overcoming certain possible difficulties a
"typical operator" may experience in performing a "[m]anual
reorganization") is not one that is an improvement in, for example, computer
functionality. Cf. Visual Memory LLC v. NVIDIA Corp., 2017 WL 3481288,
at *5 (Fed. Cir. August 15, 2017).
The Appellants argue that
[s]ince the displayed images have already been reorganized in
such improvement, the operator can more efficiently analyze
the plural displayed images obtained in multi-station MRI
without having to waste time to manually re-organize the
images on the display. Such saved time presents a significant
savings in cost of care in the current healthcare environment.
Req. 17. This is an unpersuasive argument. It is not commensurate in scope
with what is claimed. Notwithstanding it is arguably an inconsequential
post-solution activity, analyzing plural displayed images is nevertheless not
a claim limitation. Moreover, providing for a "unit" (claim 1) to do what
was previously done manually does not add significantly more to the image
classification abstract idea. Cf. Bancorp Services L.L.C. v. Sun Life
Assurance Co. of Canada, 687 F.3d 1266, 1279 (Fed. Cir. 2012) ("the
computer simply performs more efficiently what could otherwise be
accomplished manually").
The Appellants also argue that like McRO, "the claimed apparatus
here automates a process, to increase efficiency and decrease the risks of
human error." Req. 17. Similarly, the Appellants argue that
the claims of the present application, like those in Trading
Technologies, No. 2016-1616, slip op. at 6, are directed to
improvements to enable the device operator or user to obtain
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the advantages of speed, accuracy and usability, and such
improvements have no "preelectronic ... analog." The
automated display control improvement resolves a specifically
identified problem in the prior state of the art and is not an idea
that has long existed (which is the threshold criterion of an
abstract idea and ineligible concept).
Req. 17. But claim 1 includes no automation limitation. There is no
requirement that the process be automated or that the "display control unit"
be an automated display control. These arguments are not commensurate in
scope with what is claimed and are thus unpersuasive as to error in our
determination, under Alice step one, that the claim 1 subject matter is
directed to "image classification," an abstract idea.
The claim 1 apparatus comprises units limited in functional terms that
correspond to a result rather than to an improvement in the mechanism for
achieving it. Cf. Elec. Power Grp., 830 F.3d at 1354 ("[M]erely presenting
the results of abstract processes of collecting and analyzing information,
without more (such as identifying a particular tool for presentation), is
abstract as an ancillary part of such collection and analysis.")
Having responded to all the arguments challenging our determination
under step one of the Alice framework and having found them unpersuasive,
we now turn to step two of the Alice framework.

Step two
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
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concept] itself.'" Alice Corp., 134 S. Ct. at 2355 (alteration in original)
(quoting Mayo, 132 S. Ct. at 1294).
We maintain our view set forth in the decision that "[w]e see nothing
in the subject matter claimed that transforms the abstract idea of [(image)]
classification into an inventive concept." Dec. 5.
The Appellants disagree, arguing that "the display control aspect of
present claim 1 is necessarily rooted in multi-station MRI display
technology, and overcomes a problem specifically arising in conventional
approaches for multi-station MRI display." Req. 18–19. But the Appellants
do not adequately explain what exactly in claim 1 roots any of the claimed
display control aspects in multi-station MRI display technology. All that
claim 1 calls for is "a display control unit configured to display the plurality
of images in a predetermined display format . . . [which] 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
aspects of the display control unit are (a) displaying a plurality of images in
a predetermined display format and (b) displaying them by image types in
spatial order of station positions, based on the classification result by the
classification processing unit. As we read the claim, these two aspects are
no more than results. What multi-station MRI display technology are these
aspects/results rooted in? Claim 1 does not say. Instead the claim phrase
"display control unit" is no more than a conduit for the abstract idea of
image classification in order to display a resulting classification. Cf. In re
TLI Communications LLC Patent Litigation, 823 F.3d at 612 (the telephone
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unit itself is merely a conduit for the abstract idea of classifying an image
and storing the image based on its classification).
The Appellants argue that "the classification portion is not an end in
itself, but rather facilitates display control to automate display of images in
an advantageous manner, e.g., to improve operator efficiency and reduce
risk of operator error, relative to conventional multi-station MRI workflow.
Such display control is necessarily rooted in multi-station MRI technology."
Req. 19. But claim 1 says nothing about the classification unit facilitating
display control, let alone to automate display of images.
The Appellants argue that "[f]or an operator, especially a beginner, []
a large number of total images [(e.g., 160)] is extremely difficult to manually
or mentally re-organize in a time-efficient manner and without making any
mistakes." Req. 19–20. But claim 1 does not require acquiring such a large
number of total images. Moreover, the fact that one could not necessarily
classify a large number of images by hand is not dispositive. See
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016) ("the inability for the human mind to perform each claim step does not
alone confer patentability. As we have explained, 'the fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.' Bancorp
Servs., 687 F.3d at 1278.")
Finally, the Appellants argue that
the claims of the present application do not broadly and
generically claim the use of all types of classification and image
display on a computer (so as to pre-empt all manners and ways
of classification on a computer), but rather are directed to
specific technical improvements as to display of images in a
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multi-station MRI apparatus to achieve a desired result (i.e. re-
organize images in a desirable, automated way, with much less
time and higher reliability than in the conventional art), while
avoiding the burden imposed on the operator in the
conventional art of manually re-organizing the images.
Req. 20. This argument is unpersuasive because again claim 1 does not call
for "re-organiz[ing] images in a desirable, automated way, with much less
time and higher reliability than in the conventional art." Id. All that claim 1
calls for is a unit to display the plurality of images in a predetermined
display format, a unit to classify the plurality of images by image types and
station position, based on imaging condition including imaging parameters,
and a unit to 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 units are described in terms of the results they achieve.
Otherwise no technical details are provided. Claim 1 includes no technical
details that indicate, for example, that the images are reorganized in an
"automated way," with "much less time and higher . . . reliability than in the
conventional art."
For the foregoing reasons, the Appellants do not persuade us that
claim 1 includes an element or combination of elements, viewed separately
or in the ordered combination as claimed, sufficient to ensure that the claim
in practice amounts to significantly more than to be upon the image
classification abstract idea itself.
We have considered all of the Appellants' remaining arguments and
have found them unpersuasive.
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Accordingly, we maintain that claims 1–11 and 13–15 are directed to
judicially-excepted subject matter and therefore subject to a rejection under
35 U.S.C. § 101 as patent-ineligible.

Our reasoning is more fully developed than what we presented in the
Decision. Therefore, although we maintain our decision, we grant the
Request to the extent that the Appellants are given another opportunity to
respond. To that end, the new ground of rejection of claims 1–11 and
13–15 under 35 U.S.C. § 101 entered in the Decision is hereby entered
anew.

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 ….
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....

GRANTED-IN-PART; 37 C.F.R. § 41.50(b)