Ex Parte Opfer et al

Patent Trial and Appeal Board

Jan 23, 2018

13260533 (P.T.A.B. Jan. 23, 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.
13/260,533 12/09/2011 Roland Opfer 2009P00061WOUS 7666
38107 7590 01/25/2018
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue DURANT, JONATHAN W
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
01/25/2018 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):
patti.demichele@philips.com
marianne. fox @ philips, com
katelyn.mulroy @philips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLAND OPFER, LILLA BOROCZKY,
INGWER CURT CARLSEN, PRADYUMNA DUTTA,
STEFFEN RENISCH, JOERG SABCZYNSKI,
and PAOLA KARINA TULIPANO
Appeal 2016-0046251
Application 13/260,5332
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
September 16, 2015) and Reply Brief (“Reply Br.,” filed March 30, 2016),
and the Examiner’s Answer (“Ans.,” mailed February 10, 2016) and Final
Office Action (“Final Act.,” mailed April 24, 2015).
2 Appellants identify Koninklijke Philips Electronics NV as the real party
interest. App. Br. 1.
Appeal 2016-004625
Application 13/260,533
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—9, 11—13, 15, 16, 19, and 21—25. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellants’ claimed invention “relates to the medical arts, clinical
arts, medical imaging arts, and related arts” (Spec. 1,11. 2—3).
Claims 1,11, and 24 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A non-transitory storage medium storing
instructions executable by at least one computer having a display
to define an oncology monitoring system including:
an imaging controller configured to operate an imaging
system to acquire medical images of a subject;
an oncology monitoring module configured to perform
oncological monitoring operations that operate on medical
images of a subject to quantitatively analyze a cancerous tumor;
and
a clinical guideline support module configured to:
(i) display, on the display of the computer, a
graphical flow diagram of a chemotherapy, brachytherapy,
or radiation therapy protocol comprising a plurality of
successive chemotherapy, brachytherapy, or radiation
therapy sessions, and interface a user to navigate the
displayed graphical flow diagram, wherein the graphical
flow diagram comprises blocks including imaging
assessment blocks representing oncological monitoring
operations performed on medical images of the subject by
the oncology monitoring module and therapeutic
operation blocks representing therapeutic chemotherapy,
brachytherapy, or radiation therapy operations in which
chemotherapy, brachytherapy, or radiation therapy
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Application 13/260,533
treatment is delivered to the subject, the therapeutic
operation blocks not being performed by the oncology-
monitoring: module., and
(ii) annotate the graphical flow diagram with
subject-specific information, including annotating scan
parameters used in acquiring a medical image of the
subject to an imaging assessment block representing an
oncological monitoring operation medical image of the
subject by the oncology monitoring module and
annotating an imaging assessment block with a
quantitative result of the oncological monitoring operation
represented by the imaging assessment block and
annotating a therapeutic operation block with subject-
specific information pertaining to administration to the
subject of the therapeutic operation represented by the
therapeutic operation block;
wherein the oncology monitoring system is configured to
monitor a chemotherapy, brachytherapy, or radiation therapy
protocol performed on a subject having a cancerous tumor by
operations including:
annotating a graphical flow diagram of the
chemotherapy, brachytherapy, or radiation therapy
protocol performed on the subject having the cancerous
tumor with subject-specific information;
using the clinical guideline support module,
interfacing a user to navigate the graphical flow diagram
with the annotated subject-specific information to identify
the next imaging assessment block to be performed on the
subject and annotating the identified imaging assessment
block with scan parameters;
using the imaging controller, acquiring one or more
medical images of the subject using the imaging controller
with the scan parameters annotated to the selected
assessment block;
using the oncology monitoring module and the
acquired medical images, performing the oncological
monitoring operation represented by the identified
imaging assessment block to generate a quantitative
analysis of the cancerous tumor; and
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Application 13/260,533
using the clinical guideline support module,
annotating the identified imaging assessment block with
the quantitative analysis of the cancerous tumor.
REJECTIONS
Claims 1—9, 11—13, 15, 16, 19, and 21—25 are rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.
Claims 1—8, 11—13, 15, 16, 21, and 23—25 are rejected under
35 U.S.C. § 103(a) as unpatentable over Sano et al. (US 2004/0254465 Al,
pub. Dec. 16, 2004) (hereinafter “Sano”), Meissner et al.
(US 2009/0287066 Al, pub. Nov. 19, 2009) (hereinafter “Meissner”), and
Reiner (US 2007/0106633 Al, pub. May 10, 2007).
Claims 9 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sano, Meissner, Reiner, and Beckett et al. (US 2007/0127793 Al,
pub. June 7, 2007) (hereinafter “Beckett”).
Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sano, Meissner, Reiner, and Becker et al. (US 6,904,161 Bl, iss. June 7,
2005).
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, 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: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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.” Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, 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 application.” Id.
(quoting Mayo, 566 U.S. at 78).
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 Federal Circuit has
instructed that claims are to be considered 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) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, independent claim 1 is directed to “[a] non-transitory storage
medium storing instructions executable by at least one computer ... to
define an oncology monitoring system,” and recites that the system includes,
inter alia, an oncology monitoring module configured to monitor a therapy
protocol performed on a subject having a cancerous tumor by operations
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Application 13/260,533
including “acquiring one or more medical images of the subject using the
imaging controller with the scan parameters annotated to the selected
assessment block” and “using the oncology monitoring module and the
acquired medical images, performing the oncological monitoring operation
... to generate a quantitative analysis of the cancerous tumor.” Claim 11 is
similarly directed to an oncology monitoring system, and recites that the
system comprises a computer configured to “perform oncological
monitoring operations on images of a subject to analyze a cancerous tumor
of the subject.” Independent claim 24 is directed to a method for monitoring
a chemotherapy, brachytherapy, or radiation therapy protocol performed on
a subject having a cancerous tumor, and recites that the method comprises,
inter alia, “performing an oncological monitoring operation ... on medical
images acquired using the scan parameters annotated to the identified
imaging assessment block to generate a quantitative analysis of the
cancerous tumor.”
In rejecting the pending claims under § 101, the Examiner finds that
the claims are directed to the abstract idea of planning treatment and
monitoring a tumor, i.e., “displaying a graphical flow diagram, annotating a
graphic flow diagram, navigating the graphical flow diagram, acquiring
images of a tumor, performing oncological monitoring, and annotating
quantitative analysis of the tumor”; and that 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: mere
instructions to implement the idea on a computer, and recitation of generic
computer structure that serves to perform generic computer functions that
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are well-understood, routine, and conventional activities previously known
to the pertinent industry” (Final Act. 2—3).
We find that the Examiner’s characterization of the claims as directed
to the abstract idea of planning treatment and monitoring a tumor does not
properly account for the step of “using the imaging controller, acquiring one
or more medical images of the subject using the imaging controller with the
scan parameters annotated to the selected assessment block,” as recited in
independent claim 1, and similarly recited in independent claims 11 and 24,
and therefore, does not reflect the character of the claims as a whole.
Therefore, we do not sustain the rejection of claims 1—9, 11—13, 15,
16, 19, and 21-25 under 35 U.S.C. § 101.
Obviousness
Independent Claim 1 and Dependent Claims 2—9
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner cites
Sano as disclosing substantially all of the claim limitations (Final Act. 4—
10). But the Examiner acknowledges that Sano does not explicitly teach a
“graphical flow diagram of a chemotherapy, brachytherapy, or radiation
therapy protocol comprising a plurality of successive chemotherapy,
brachytherapy, or radiation therapy sessions,” as recited in claim 1 {id. at 6).
And the Examiner cites Meissner to cure the deficiency of Sano {id.). More
particularly, the Examiner cites Figure 2 of Meissner as disclosing the
claimed graphical flow diagram and blocks 48, 50, 52, 54, and 60 in
Figure 2 as disclosing a plurality of successive therapy sessions {id.) The
Examiner explains that the term “session” is interpreted “consistent with a
definition provided in The American Heritage Dictionary of the English
Language" to mean “‘a period of time devoted to a specific activity’” (id.
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at 33), and that each of blocks 48, 50, 52, 54, and 60, as disclosed in
Meissner, “would independently meet the requirements of a period of time
devoted to a therapy, consistent with the definition of ‘session’” (id.)
Meissner is directed to a method for minimally invasive medical
intervention, and discloses a workflow process, with reference to Figure 2,
for performing a minimally invasive intervention on the patient to treat,
remove, or otherwise address a detected tumor (Meissner || 18—21). As
shown in Figure 2, the intervention includes a plurality of steps, as shown,
for example, in blocks 48, 50, 52, 54, and 60, and Meissner discloses that
execution of the intervention steps and confirmation of the effectiveness of
the intervention are performed without moving the patient from the
intervention suite and possibly without moving the patient from his/her
position on the examination and treatment table (id. 122).
Appellants argue that the Examiner construed the term “session”
overly broadly, and, thus, erred in characterizing Figure 2 of Meissner, and
in particular, blocks 48, 50, 52, 54, and 60, as disclosing “a plurality of
successive chemotherapy, brachytherapy, or radiation therapy sessions,” as
called for in claim 1 (App. Br. 15—18). Appellants maintain that Meissner’s
Figure 2 depicts a single intervention procedure workflow, i.e., a single
therapy protocol, and that, rather than constituting a plurality of successive
therapy sessions, blocks 48, 50, 52, 54, and 60, are the steps of a single
therapy session.
Appellants point to page 1, lines 12—14 of the Specification as
defining a “chemotherapy, brachytherapy, or radiation therapy session” to
mean “a chemotherapy, brachytherapy, or radiation therapy treatment
followed by a recovery period of typically a few days to a few weeks” (id.
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at 16).3 Yet, we find nothing in the cited portion of the Specification that
defines a chemotherapy, brachytherapy, or radiation therapy session to
include a recovery period. Instead, we agree with the Examiner that a
person of ordinary skill in the art would reasonably understand from the
Specification, including, in particular, the language at page 1, lines 8—14,
that the recovery period is a separate period of time rather than a part of the
treatment session (Ans. 36). As such, we agree with the Examiner that
blocks 48, 50, 52, 54, and 60 in Figure 2 of blocks 48, 50, 52, 54, and 60 in
Figure 2 Meissner constitute “a plurality of successive therapy sessions,” as
called for in claim 1 under a broad, but reasonable, interpretation.
Appellants note that the Examiner cites Reiner as disclosing an
electronic workflow method that includes recording information specific to a
particular tumor (App. Br. 19). And Appellants argue that although “this
may be a quantitative result of an oncological monitoring operation
performed by imaging assessment, . . . there is no mention [in Reiner] of
annotating this result to any block of any graphical flow diagram” (id.).
The difficulty with that argument is that claim 1 is rejected as obvious
over the combination of Sano, Meissner, and Reiner, not over Reiner alone.
Although it may be appropriate in circumstances where a single reference is
cited as disclosing a particular claim limitation, to present arguments aimed
3 The Specification, at page 1, lines 8—14, reads:
A series of therapies are then performed, which may include chemotherapy,
brachytherapy, radiation therapy, or the like. Typically, these therapies are
performed over an extended period of time and take the form of
chemotherapy, brachytherapy, or radiation therapy sessions. At each session,
the patient enters the hospital on an in-patient or out-patient basis, and
undergoes a therapy treatment session. A recovery period follows typically
between a few days and a few weeks.
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at rebutting the presence of the claimed feature in that single reference, such
arguments are not persuasive where the claim limitation is found in the
teachings of a combination of references. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.”).
We are not persuaded on the present record that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a). Therefore, we
sustain the Examiner’s rejection. We also sustain the Examiner’s rejection
of dependent claims 2—9, which are not argued separately.
Independent Claims 11 and 24 and Dependent Claims 12, 13, 15, 16, 19,
21—23, and 25
Appellants’ arguments with respect to independent claims 11 and 24
(App. Br. 21—27) are substantially identical to Appellants’ arguments with
respect to claim 1, and are similarly unpersuasive. Therefore, we sustain the
Examiner’s rejection of claims 11 and 24 under 35 U.S.C. § 103(a). We also
sustain the Examiner’s rejection of dependent claims 12, 13, 15, 16, 19, 21—
23, and 25, which are not argued separately.
Dependent Claims 9, 19, and 22
Claim 9 depends from independent claim 1, and claims 19 and 22
depend from independent claim 11. Appellants do not present any
arguments to support the patentability of these dependent claims except to
assert that the additional cited references do not cure the alleged deficiencies
in the combination of Sano, Meissner, and Reiner with respect to claims 1
and 11 (App. Br. 27—28).
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We are not persuaded, for the reasons set forth above, that the
Examiner erred in rejecting independent claims 1 and 11 under 35 U.S.C.
§ 103(a). Therefore, we also sustain the Examiner’s rejections of dependent
claims 9, 19, and 22.
DECISION
The Examiner’s rejection of claims 1, 2, 5—9, 12—16, and 19-21 under
35 U.S.C. § 101 is reversed.
The Examiner’s rejections of claims 1, 2, 5—9, 12—16, and 19—21
under 35 U.S.C. § 103(a) are affirmed.
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
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