Ex Parte Mostafavi et al

Patent Trial and Appeal Board

Jun 22, 2016

12205512 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/205,512 09/05/2008
55499 7590 06/24/2016
Vista IP Law Group, LLP (Varian)
2160 Lundy Avenue
Suite 230
San Jose, CA 95131
FIRST NAMED INVENTOR
Hassan Mostafavi
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.
VM 08-030-US 7002
EXAMINER
SALMON, KATHERINE D
ART UNIT PAPER NUMBER
1634
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
docketing@viplawgroup.com
ev@viplawgroup.com
ipdocket@varian.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HASSAN MOSTAFAVI and SERGEY POVZNER1
Appeal2013-010074
Application 12/205,512
Technology Center 1600
Before ERIC B. GRIMES, JACQUELINE T. HARLOW, and RICHARD J.
SMITH, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of monitoring a patient, which have been rejected as directed to patent-
ineligible subject matter, anticipated, and obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm the rejection under 35 U.S.C. § 101.
1 Appellants identify the Real Party in Interest as Varian Medical Systems,
Inc. (Appeal Br. 2.)
Appeal2013-010074
Application 12/205,512
STATEMENT OF THE CASE
The Specification states that "monitoring of an infant's breathing
activity for breathing irregularities could help prevent or detect the
possibility of SIDS." (Spec. ,-r 5.)
Claims 1-57 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A method of monitoring a patient, comprising:
obtaining a first image of an object;
obtaining a second image of the object;
determining a level of similarity between the first and second images
usmg a processor;
obtaining a third image of the object;
determining a level of similarity between the first and third images;
analyzing a time series of values that includes the determined level of
similarity between the first and second images and the determined level of
similarity between the first and third images; and
determining a state of the patient based at least on a result of the act of
analyzing.
The claims stand rejected as follows:
Claims 1-15 and 17-28 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter (Ans. 2);
Claims 1-15, 17-21, 27--43, 45--49, and 55-57 under 35 U.S.C.
§ 102(b) as anticipated by Jeung2 (Ans. 3);
Claims 16 and 44 under 35 U.S.C. § 103(a) as obvious based on Jeung
and Cosman3 (Ans. 9); and
2 Jeung et al., US 2004/0071337 Al, issued Apr. 15, 2004.
3 Cosman, US 6,405,072 B 1, issued June 11, 2002.
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Application 12/205,512
Claims 22-26 and 50-54 under 35 U.S.C. § 103(a) as obvious in view
of Jeung and Jeung B4 (Ans. 11).
I
The Examiner has rejected claims 1-15 and 17-28 as being directed
to non-statutory subject matter. The Examiner finds that the claims "do not
meet the machine or physical transformation required by the CAFC court in
In re Bilski . ... The claims as written encompass mere mental steps i.e.
obtaining images and determining levels of similarity. The determining and
obtaining steps could be directed merely to looking at a database file on a
computer." (Ans. 2-3.)
Appellants contend that "the recitation of 'a processor' in fact does tie
the subject matter of claim 1 to a statutory class .... [T]he processor of
claim 1 in fact is a particular machine because it is specifically configured to
determine a level of similarity between first and second images, and
therefore it is not just any machine." (Appeal Br. 5.)
In response, the Examiner reasoned that "the recitation 'using a
processor' fails to provide any meaningful limits on the claim's scope. The
recitation is nothing more than a general purpose computer that has been
programmed in an unspecified manner to implement the functional steps
recited in the claims. As such, the recitation does not limit the process steps
to any specific machine." (Ans. 13.)
4 Jeung et al., US 2004/0005088, published Jan. 8, 2004 (hereinafter "Jeung
B").
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Application 12/205,512
We agree with the Examiner's reasoning. While the machine-or-
transformation test is not the exclusive test for a patent-eligible process, it
does provide "a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes under§ 101."
Bilski v. Kappas, 130 S.Ct 3218, 3226 (2010). More recently, the Court held
that "the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." Alice Corp. Pty.
Ltd. v. CLS Bank Int'!, 134 S.Ct 2347, 2358 (2014).
In this case, we agree with the Examiner that claim 1 is directed to
non-statutory subject matter. Claim 1 recites the abstract idea of comparing
images of a patient to determine their similarity and determining a state of
the patient based on the similarity of images over time. While claim 1
requires "using a processor" to determine the similarity of first and second
images, that generic limitation does not convert the otherwise unpatentable
abstract idea into a patent-eligible method. See id.:
Stating an abstract idea "while adding the words 'apply it"' is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on ... a computer," that addition cannot impart patent eligibility.
(Citations omitted.)
Appellants argue, however, that "just because a claimed feature may
be implemented by programming a general purpose computer, that does not
necessarily mean that the claimed subject matter fails to satisfy § 101. In
fact, it is well known that a general purpose computer may be converted to a
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Application 12/205,512
specific machine by programming it to perform certain specific features."
(Reply Br. 2.)
This argument is unpersuasive because it is contrary to the holding of
Alice Corp., where the Court held that a step of implementing on a computer
does not make patent-eligible an otherwise ineligible abstract idea. We
therefore affirm the rejection of claims 1-15 and 17-28 under 35 U.S.C.
§ 101.
II
The Examiner has rejected claims 1-15, 17-21, 27--43, 45--49, and
55-57 as anticipated by Jeung. The Examiner finds that Jeung teaches a
method meeting all of the limitations of claim 1, including "obtaining a first
and second image, and multiple images (e.g. a third image) of an object and
pattern matching these images to the first image (e.g. the model image) to
determine similarity (paragraph 69 and 70)." (Ans. 3.)
Appellants argue that "paragraphs 69-70 of Jeung actually describes
determining similarity between motion data, and not between two images."
(Appeal Br. 6.) Appellants argue that in the claimed method, "each image
by itself does not have any 'motion data' .... Rather, as taught in Jeung, a
motion data can only be obtained by processing at least two images so that it
can be determined how much an object has moved between the two images."
(Id.)
We agree with Appellants that the Examiner has not pointed to
evidence that supports a finding that Jeung's method includes determining
the similarity between first and second images, or between first and third
images. Appellants' Specification describes an image frame that includes an
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Application 12/205,512
image; an image template is defined in the image in an area that moves as a
patient breathes. (Spec. 10:11-16.) The Specification states that "[v]arious
techniques may be used to measure the level of similarity between the image
template 308 and the portion of the input image 400." (Id. at 11:23 to 12:1.)
The Specification states that "after the level of similarity is determined, the
determined level of similarity is then used as a part of a time series (step
208) .... In particular, the processor 14 obtains additional image frames
(step 204), and measures levels of similarities for respective additional
image frames (step 206)." (Id. at 12:18-22.)
Thus, the Specification describes a process that involves comparing
images to each other and measuring the level of similarity of the images
themselves. Jeung, by contrast, uses a camera to monitor passive markers on
an infant to detect breathing movement. (Jeung i-fi-134, 36.) Jeung states that
"[t]he images recorded by camera 108 are sent to computer 110 for
processing." (Id. at i134.)
Jeung states that "[t]he video image signals sent from camera 108 to
computer 110 are used to generate and track motion signals representative of
the movement of marker 114 and/ or landmark structures on the infant's
body." (Id. at i1 40.) Jeung states that "another alternate embodiment
performs a pattern matching based upon a model of the breathing activity
being measured .... The latest set of data samples is matched against the
model to estimate parameters of the repetitive process." (Id. at i169.) Jeung
also states that "[p ]attern matching using the measured breathing signal
(504) provides information regarding the degree of match, as well as a
location of best match for the repetitive process .... A threshold range value
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is defined to provide indication of the degree of match between the two sets
of data samples." (Id. at i-f 70.)
J eung' s description of its process does not support the Examiner's
finding that it discloses a comparison of images themselves. Rather, Jeung
states that the image signals are used by a computer to "generate and track
motion signals" (id. at i-f 40) and that pattern matching can be carried out
"between the two sets of data samples" (id. at i-f 70). These descriptions
indicate that the image signals are processed by the computer to generate
motion data that indicates movement during breathing, but they do not
describe directly comparing images to determine breathing movement. We
therefore reverse the rejection of claims 1-15, 17-21, 27--43, 45--49, and 55-
57 as anticipated by Jeung.
III
The Examiner has rejected claims 16, 22-26, 44, and 50-54 as
obvious based on Jeung, combined with either Cosman or Jeung B. With
respect to both rejections, however, the Examiner relied on her fact-finding
that J eung discloses a method that meets all of the limitations of claim 1.
(Ans. 9-10, 11.) For the reasons discussed above, the evidence does not
support that finding. We therefore reverse the rejections under 35 U.S.C.
§ 103(a).
SUMMARY
We affirm the rejection of claims 1-15 and 17-28 under 35 U.S.C.
§ 101.
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Application 12/205,512
We reverse the rejection of claims 1-15, 17-21, 27--43, 45--49, and
55-57 under 35 U.S.C. § 102(b).
We reverse the rejection of claims 16 and 44 under 35 U.S.C. § 103(a)
based on J eung and Cosman.
We reverse the rejection of claims 22-26 and 50-54 under 35 U.S.C.
§ 103(a) based on Jeung and Jeung B.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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