Ex Parte Mollus et al

Patent Trial and Appeal Board

Feb 22, 2016

12920327 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/920,327 08/31/2010 Sabine Mollus
24737 7590 02/24/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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.
2008P00122WOUS 2695
EXAMINER
ALMAN!, MOHSEN
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
02/24/2016 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):
debbie.henn@philips.com
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SABINE MOLL US and JUERGEN WEESE
Appeal2014-002680
Application 12/920,327
Technology Center 2100
Before ALLEN R. MacDONALD, BRUCE R. WINSOR, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-002680
Application 12/920,327
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE INVENTION
The application is directed to selectively and interactively processing
data sets. (Abstract.) Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An apparatus for selectively and interactively processing
data sets and configured for:
gathering a first data set;
gathering a second data set;
determining a first feature in the first data set on the basis of
an interactive selection; and
identifying a second feature in the second data set such that
the first feature in the first data set selectively corresponds to
the second feature in the second data set,
said apparatus further configured such that at least one of:
a) said determining operates on an angiography data set rather
than a tissue characterizing data set; and b) said identifying,
based on the determined feature, operates on an angiography
data set rather than a tissue characterizing data set.
1 Appellants identify Koninklijke Philips Electronics N.V. as the real party
in interest. (App. Br. 3.)
2
Appeal2014-002680
Application 12/920,327
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Philippe St-Jean, et al., Automated Atlas Integration and
Interactive Three-Dimensional Visualization Tools for Planning
and Guidance in Functional Neurosurgery, IEEE Transactions
on Medical Imaging, Vol. 17, No. 5, pp. 672-80 (Oct. 1998)
Cemil Kirbas and Francis Quek, A Review of Vessel Extraction
Techniques and Algorithms, ACM Computing Surveys, Vol.
36, No. 2, pp. 81-121(June2004)
THE REJECTIONS2
1. Claims 1-5, 8, 12-14, and 19 each stand rejected under
35 U.S.C. § 101 on the grounds that the claimed invention is directed to non-
statutory subject matter.
2. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over St-Jean and Kirbas. 3
APPELLANTS' CONTENTIONS
Appellants' arguments can be summarized as follows:
1. Claims 1-5, 8, 12-14, and 19 are directed to patent eligible
subject matter because they are drafted in accordance with "conventional
U.S. patent practice," claims have issued to others in similar forms, and an
"apparatus" is not purely software. (App. Br. 6-10.)
2 See Final Act. 3--4.
3 Claim 20 is also objected to as being of improper dependent form for
failing to further limit the parent claim. (See Final Act. 3.) The objection is
petitionable matter and, therefore, not before us. See MPEP § 1201.
3
Appeal2014-002680
Application 12/920,327
2. The cited art does not teach or suggest "the first feature" or "the
second feature." (App. Br. 10-13.)
3. For claim 5, the prior art does not teach or suggest "a point of
interest on the vessel tree." (App. Br. 17-18.)
4. For claim 7, the prior art does not teach or suggest that
"processing the angiography data set generates a correlation between vessel
segments and territories fed by the respective vessel segments" and that "the
generation of the correlation ... is based on a local flow fraction measured
within the vessel segments." (App. Br. 13-15; Reply Br. 12-13.)
5. For claim 13, the prior art does not teach or suggest
"determining a first feature in the first data set." (App. Br. 18-19.)
6. For claim 15, the prior art does not teach or suggest "said
identifying following said determining automatically and without need for
user intervention." (App. Br. 16-17.)
ANALYSIS
We address Appellants' arguments below, organized by the claims to
which they apply.
Claims 1, 3-5, 8, 12-14, 19
Appellants argue that the rejection of these claims was improper
because the Examiner imposed an "imaginary criterion" in requiring the
recitation of a hardware component in the claim and because the claims
recite "an apparatus rather than a computer program." (App. Br. 6, 9.) We
disagree. 4
4 Claim 2, in which the apparatus of claim 1 is "configured for visualizing,"
was also rejected under Section 101. (See Final Act. 4.) Because we sustain
4
Appeal2014-002680
Application 12/920,327
These claims do not use the well-defined terms of the statute, i.e.,
"machine" and "manufacture." Instead, they use the broader term
"apparatus," the definitions of which include not only "machinery," but also
"any system or systematic organization of activities, functions, processes,
etc., directed towards a specific goal: the apparatus of government;
espionage apparatus." The Random House Dictionary of the English
Language, p. 100 (1987).
Accordingly, the Examiner has reasonably construed these claims as
being directed to software only, without any hardware and, as such, these
claims "are not directed to any tangible embodiment of this information (i.e.,
in physical memory or other medium) or claim any tangible part of the
digital processing system" but "are instead directed to information in its non-
tangible form." Digitech Image Tech., LLC v. Elec.for Imaging, Inc., 758
F.3d 1344, 1349 (Fed. Cir. 2014); see Microsoft Corp. v. AT&T Corp., 550
U.S. 437, 449 (2007) (explaining that "[a]bstract software code is an idea
without physical embodiment"). We conclude that, as in Digitech, the scope
of these claims impermissibly extends beyond that of patent eligible subject
matter.
Citing a string of unrelated U.S. Patents, Appellants argue that the
"imaginary criterion of the Advisory Action conflicts with conventional U.S.
Patent practice." (App. Br. 7.) We do not accept that the four patents
identified are representative of "conventional U.S. Patent practice" and, in
any event, this argument is unpersuasive because "[i]t is immaterial in ex
the prior art rejection of this claim below, we do not decide whether
"configured for visualizing" would be sufficient to confer patent eligibility.
5
Appeal2014-002680
Application 12/920,327
parte prosecution whether the same or similar claims have been allowed to
others." In re Wertheim, 541F.2d257, 264 (CCPA 1976).
Appellants also argue that the Field of Invention, which states "the
present invention relates to an apparatus adapted to perform such a method
[and] a computer program adapted to perform such a method when executed
on a computer," shows that the claimed apparatus is more than software.
(See App. Br. 8.) We disagree because this language does not require
mutual exclusivity (i.e., the "computer program" could be a subset of
"apparatus"), meaning that the "apparatus" may still include within its scope
unpatentable subject matter.
For these reasons, we sustain the rejections of claims 1, 3-5, 8, 12-14,
and 19 under Section 101 and, as a result, we do not reach the prior art
rejections of claims 3-5, 8, 12-14, and 19. See In re Comiskey, 554 F.3d at
967, 973 (Fed. Cir. 2009) (declining to reach the obviousness rejections after
finding claims nonstatutory).
Claims 1, 2, 6, 9-11, 16--18, and 20
For these claims, Appellants argue that the prior art does not teach or
suggest "the first feature" or "the second feature." (See App. Br. 12.) The
Examiner explains that "one set of data in St-Jean is patient data, the other
set of data is atlas or standard data for comparison, [the] selected feature in
one set of data is the injured region or defined potential lesions in patient
data and the second feature is the corresponding region in the atlas data."
(Ans. 6, emphasis added.) In the Reply, Appellants characterize the
Examiner's explanation as follows: "according to the Examiner's Answer,
'the first feature' is presumably the lesion in St-Jean Fig. 10 and 'the second
feature' is presumably the right Gpm in Fig. 10." (Reply Br. 10.)
6
Appeal2014-002680
Application 12/920,327
Appellants then go on to explain in detail why the Examiner's explanation,
as re-formulated by Appellants, cannot be correct. (See id. at 10-12.)
Appellants' argument is unpersuasive because it fails to squarely
address the Examiner's analysis. The Examiner found "the first feature" to
be "the injured region or defined potential lesions in patient data" and "the
second feature" to be "the corresponding region in the atlas data." (Ans. 6.)
Appellants offer only what amounts to a straw man argument.
With respect to claim 1, we agree with the Examiner's findings that
St-Jean teaches gathering a first data set (e.g., the patient data); gathering a
second data set (e.g., the atlas or standard data); determining a first feature in
the first data set on the basis of an interactive selection (e.g., the injured
region or potential lesions in the patient data); and identifying a second
feature in the second data set such that the first feature in the first data set
selectively corresponds to the second feature in the second data set (e.g., the
corresponding region in the atlas or standard data). (See Ans. 5 (discussing
St-Jean's "interactive visualization platform").) We further agree that the
references teach "at least one of' the determining or identifying operating on
an angiography data set, as St-Jean teaches future inclusion of "vascular
information in the form of 3-D MR angiograms" and Kirbas teaches
extraction of vessel models. (See Ans. 7.) We also agree with the Examiner
that, in light of the express teaching in St-Jean of incorporating vascular
data, it would have obvious to use such data obtained by the methods
described in Kirbas in St-Jean's visualization platform, to obtain a system
that would advantageously work on both types of data sets. (See Final Act.
2-3.)
7
Appeal2014-002680
Application 12/920,327
The "feature" claim terms would encompasses anything of interest in
a first data set (e.g., a structure of the brain of interest) and anything in the
second data set corresponding to the first feature (e.g., the region of the brain
containing the structure of interest), and "determining" and "identifying" are
sufficiently nebulous that the claims would cover essentially any use of
corresponding data sets where one is angiography data.
For these reasons, we sustain the rejection of claim 1 and, as no other
arguments are offered for claims 2, 6, 9-11, 16-18, and 20, we affirm the
rejection of those claims as well, for the same reasons.
Claim 7
Claim 7 requires that "processing the angiography data set generates a
correlation between vessel segments and territories fed by the respective
vessel segments" and that "the generation of the correlation ... is based on a
local flow fraction measured within the vessel segments." For this claim
language, the Examiner cites Kirbas, noting that it "explicitly discloses flow
measurements for relating two vessel segments throughout the disclosure."
(Ans. 8.) Appellants respond that this does not correspond to the claim
language. (See Reply Br. 14.) We agree with Appellants. The claim
requires correlation between vessel segments and territories they feed. As
the Examiner does not purport to find a correlation with territories fed in the
references, we do not sustain the rejection of claim 7.
Claim 15
Claim 15 requires that "said identifying follow[ s] said determining
automatically and without need for user intervention." The Examiner points
to St-Jean's Abstract, which states "[t]he volumetric atlas can be
automatically deformed to an individual patient's MRI." (Ans. 10.) That
8
Appeal2014-002680
Application 12/920,327
passage refers to operation of the "ANIMAL" algorithm, which "computes
nonlinear transformation to register one MRI (the patient image) to a second
prelabeled target MRI that serves as a canonical atlas." (St-Jean 675.)
Appellants argue that the Examiner's analysis is incorrect because "the
automatic deforming initializes and therefore inherently precedes the user
interaction described in St-Jean." (Reply Br. 12.)
We agree with the Examiner. The reference explains that ANIMAL is
used to automatically map the atlas MRI to the patient MRI without human
intervention. (See St-John§ II.D.) The visualization platform is then used
to display 2-D or 3-D superimposed images, including the MRI and the
mapped atlas MRI. (See St-John§ II.D.) When a user makes an interactive
selection of a feature in the first data set (e.g., the patient MRI image), the
system is configured, as a result of the automatic ANIMAL mapping, to
automatic display the corresponding second feature of the second data set
(e.g., the atlas). We thus sustain the rejection of claim 15.
DECISION
For the reasons set out above, we affirm the Examiner's decision to
reject claims 1---6 and 8-20, and reverse the Examiner's decision to reject
claim 7.
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).
AFFIRMED-IN-PART
9