Ex Parte Radulescu et al

Patent Trial and Appeal Board

Jun 16, 2017

13515519 (P.T.A.B. Jun. 16, 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.
13/515,519 06/13/2012 Emil G. Radulescu 2009P01595WOUS 5981
24737 7590 06/20/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue PONTIUS, KEVIN LANE
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
06/20/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMIL G. RADULESCU,
GOSTA JAKOB EHNHOLM, RAMON Q. ERKAMP,
I. A. JULIUS KOSKELA, SHUNMUGAVELU D. SOKKA,
ERKKI T. VAHALA, and MAX OSKAR KOHLER
Appeal 2015-008298
Application 13/515,519
Technology Center 3700
Before: JEFFREY A. STEPHENS, ERIC C. JESCHKE, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—12, 14—16, and 18—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-008298
Application 13/515,519
CLAIMED SUBJECT MATTER
The claims are directed to high intensity focused ultrasound (HIFU)
transducer optimization. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A therapy planning tool that facilitates magnetic resonance
(MR) guided high intensity focused ultrasonic (HIFU) ablation
planning, including:
a processor that executes computer-executable
instructions for optimizing HIFU transducer element
transmission, the instructions comprising:
evaluating transducer data including transducer
element position, geometry, and acoustic parameter
information;
evaluating 3D MR data including ROI data
describing a size, shape, and position of a region of interest
(ROI) to be ablated, and obstruction data describing a size,
shape, and position of an obstruction between one or more
of a plurality of HIFU transducer elements and the ROI;
executing an optimizer that determines an optimal
waveform that maximizes HIFU waveform delivery to the
ROI while minimizing HIFU waveform delivery to the
obstruction and surrounding tissue, wherein the optimal
waveform is determined such that the optimal waveform
is continuously applied to the HIFU transducer elements
during an ablation procedure; and
a memory that stores the computer-executable
instructions, the transducer data, MR data, and a plurality of
optimized HIFU parameters.
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Appeal 2015-008298
Application 13/515,519
REJECTIONS1
Claims 1—12, 14—16, and 20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1—12, 14—16, and 18—20 are rejected under 35 U.S.C. § 101,
for being directed to an abstract idea.
OPINION
35 U.S.C. §112
The Examiner finds that “the language ‘waveform is continuously
applied by the HIFU transducer elements during an ablation procedure’” in
claims 1 and 10 “was not described in the specification in such a way as to”
comply with the written description requirement. Final Act. 3.
Appellants argue that:
the originally filed specification discloses “that there is no direct
element shutoff but rather optimal amplitudes and phases applied
to all transducer elements.” .... [T]he therapy planning tool
determines optimal amplitudes and phases so that there is no
need for the tool to be turned off.
Appeal Br. 4 (citing Spec. p. 6,11. 1—5, p. 9,11. 6—8). Thus, “[tjhose skilled
in the art would surely understand that if there is no element shutoff, then the
‘optimal waveform is continuously applied,’ as recited in claim 1. That is, if
the elements are not shutoff, the waveform is being continuously applied.”
Id. at 5.
Appellants also highlight the contrast in the Specification “between
embodiments where elements are shutoff and do not receive any applied
1 The rejections under 35 U.S.C. § 102 and 103 were withdrawn in the
Advisory Action. Adv. Act. 2.
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Appeal 2015-008298
Application 13/515,519
waveform and the embodiments where elements are not shutoff.” Id. at 6.
In particular, Appellants point to the embodiment of Figures 6—8, where
transducer elements are shut off if they don’t have “an unimpeded line of
sight to the ROI” (region of interest). Id. (citing Spec. 7,11. 17—19). It is
argued that “[t]his contrast further illustrates that the original specification
conveys ‘with reasonable clarity’ to those skilled in the art that the
Appellants were in possession of ‘the optimal waveform is continuously
applied to the HIFU transducer elements during an ablation procedure.’” Id.
The Examiner responds that “lack of a direct element shutoff does not
foreclose the likelihood that for one or more elements of the HIFU
transducer the optimal amplitude would simply be zero, which is effectively
a shutoff of the element.” Ans. 5; see also id. at 5—7.
Appellants reply “that claim 1 recites that the optimal waveform is
applied continuously, without requiring a particular amplitude or phase
value for the waveform.” Reply Br. 3. Appellants continue “one of ordinary
skill in the art would reasonably conclude that the optimal waveform is
applied continuously when the transducer elements are not shut off, without
requiring a particular amplitude or phase value for the optimal waveform.”
Id. at 4.
Appellants’ response does not directly address whether one of skill in
the art would understand that an optimized waveform for one of the
transducer elements with a zero value would be continuously applied or if
the element would be shut off. As such, Appellants have not shown error in
the Examiner’s finding that “the language ‘waveform is continuously
applied by the HIFU transducer elements during an ablation procedure’” in
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Appeal 2015-008298
Application 13/515,519
claims 1 and 10 was “not described in the specification in such a way as to”
comply with the written description requirement. Final Act. 3.
35 U.S.C. §101
The Examiner determines that the claims “are directed to a
mathematical algorithm, which is an abstract idea,” i.e., non-statutory
subject matter. Ans. 3.
The Supreme Court has set forth “a framework 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. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). Under that framework, we first “determine whether the claims at
issue are directed to one of those patent-ineligible concepts”—i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. (citing Mayo, 132
S. Ct. at 1296—97). If so, we must secondly “consider the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).
Under the first step of the Alice framework, the Examiner finds that: “These
limitations read on a mathematical algorithm because they are understood in
light of the specification to involve a ‘stochastic simulation algorithm’. . . ,
an ‘approximation algorithm’. . . , an ‘estimation algorithm’ . . . , ‘geometric
[]segmentation’. . . , and operation of an ‘optimization module or function.’”
Ans. 3 (citations to the Spec, omitted).
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Application 13/515,519
Under the first step, our reviewing courts “have found it sufficient to
compare claims at issue to those claims already found to be directed to an
abstract idea.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed.
Cir. 2016). The claims at issue here are directed to manipulating existing
information—using algorithms—to generate additional information, which
are similar to other claims the courts have found to be ineligible under § 101.
See Parker v. Flook, 437 U.S. 584, 585, 594—96 (1978) (rejecting as
ineligible claims directed to (1) measuring the current value for a variable in
a catalytic conversion process, (2) using an algorithm to calculate an updated
“alarm-limit value” for that variable, and (3) updating the limit with the new
value); Gottschalkv. Benson, 409 U.S. 63, 71—72 (1972) (rejecting as
ineligible claims directed to an algorithm for converting binary-coded
decimal numerals into pure binary form); Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (discussing how “collecting
information” and “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more” are abstract ideas);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (“Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible.”); see also Intellectual Ventures
ILLCv. Capital One Fin. Corp., 850 F.3d 1332, 1339-40 (Fed. Cir. 2017)
(determining that a claim reciting “an apparatus for manipulating XML
documents” was directed to an abstract idea).
Appellants argue that independent claim 1 is more than an algorithm
because “[t]he claim addresses issues of continuous application of optimized
HIFU transducer element properties by exploiting intercostal space in the
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Application 13/515,519
patient as an ablation path, specific to MR-guided HIFU procedure
planners.” Reply. Br. 8. Though this shows what Appellants are attempting
to do with their process, Appellants’ argument does not show that the claims
are directed to anything more than “a process that qualifies as an ‘abstract
idea’ for which computers are invoked merely as a tool.” Enfish, 822 F.3d at
1336.
Under the second step, the Examiner finds that “[t]he independent
claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception.” Ans. 3. The Examiner
reasons that:
1. “the recited processor . . . and the recited memory ... are
standard data processing structures that are entirely
conventional in the art,”
2. “the recited field of use limitations ... do not provide for
concrete application of optimized results of the algorithm that
are simply bare numbers,”
3. “the recited presenting and receiving steps . . . serve simply to
gather and provide data as input variables of the mathematical
algorithm, and”
4. “the recited storage steps ... do not provide for concrete
application of algorithm results.” Ans. 3^4.
Appellants argue that “the claims at issue do not merely recite an
abstract idea and add the words ‘apply if” because “independent claim 1
recites more than a generic computer.” Reply Br. 10. In support of this
argument, Appellants repeat the entire language of claim 1. Id.
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Merely repeating the language of the claim 1 does not show how the
claim is directed to “significantly more than the judicial exception.” Nor
does it address any of the specific findings of the Examiner. In particular,
Appellants do not address the Examiner’s finding that “the recited processor
. . . and the recited memory ... are standard data processing structures that
are entirely conventional in the art, as is evident from Liu (patent publication
US 20080200806) (see 120, 114 in FIG. 1, step 420 in FIG. 4, H 0050,
0053, 0059, 0060).” Ans. 3^4. Thus, we are not informed of error in the
Examiner’s rejection.
Next, Appellants argue “that the claims amount to ‘significantly more’
than the alleged abstract ideas of a known ‘mathematical algorithm’
[, bjecause the claims solve a technological problem in conventional
industry practice and recite improvements to the functioning of a computer
via improved processor performance for” optimizing a waveform. Reply Br.
10. However, Appellants do not identify any actual “improvements to the
functioning of a computer.” Rather, Appellants’ method of optimizing a
waveform is done by executing an optimizer after evaluating certain data
sets (i.e., the evaluated data is run through an algorithm using a generic
processor).
Appellants further argue that “the features recited in claim 1 provide
improvements in the fields of MR-guided HIFU therapy planning systems,
HIFU waveform calculation methods, and computation methods for MR-
guided ablation systems.” Id. at 12. In support, Appellants again merely
repeat the text of the claim. Id. Thus, Appellants’ argument does not inform
us of error in the Examiner’s rejection.
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Application 13/515,519
For these reasons, we sustain the Examiner’s decision rejecting claims
1—12, 14—16, and 18—20 as being directed to non-statutory subject matter.
DECISION
The Examiner’s rejections of claims 1—12, 14—16, and 18—20 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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