Ex Parte Suehling et al

Patent Trial and Appeal Board

Feb 14, 2018

12828335 (P.T.A.B. Feb. 14, 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.
12/828,335 07/01/2010 Michael Suehling 2009P11357US01 6651
28524 7590 02/16/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
REYES, REGINALD R
Orlando, EL 32817 ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/16/2018 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SUEHLING, DAVID LIU, and GRZEGORZ SOZA
Appeal 2016-004906
Application 12/828,335
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—28, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this Decision, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Sept. 8, 2015), Reply Brief (“Reply Br.,” filed Apr. 8,
2016), and Specification (“Spec.,” filed July 1, 2010), and to the Examiner’s
Answer (“Ans.,” mailed Feb. 9, 2016), and Final Office Action (“Final
Act.,” mailed Feb. 26, 2015).
2 According to the Appellants, the real party in interest is Siemens
Aktiengesellschaft. Appeal Br. 1.
Appeal 2016-004906
Application 12/828,335
STATEMENT OF THE CASE
The Appellants’ invention relates generally to “medical imaging of a
patient, and more particularly, to automatic classification of a contrast phase
in computed tomography (CT) and magnetic resonance (MR) images.”
Spec. 12.
Claims 1,13, and 21 are the independent claims on appeal. Claim 1 is
exemplary of the subject matter on appeal and is reproduced below (with
bracketing added for sake of reference).
1. A method for automatic contrast phase classification
in at least one 3D medical image, comprising:
[(a)] detecting, by a processor, a plurality of anatomic
landmarks in the at least one 3D medical image;
[(b)] estimating, by a processor, a local volume of
interest (VOI) surrounding each of the detected plurality of
anatomic landmarks in the 3D medical image;
[(c)] extracting, by a processor, one or more features
from each local VOI; and
[(d)] determining, by a processor, a contrast phase of the
at least one 3D medical image by classifying the at least one 3D
medical image using a trained contrast phase classifier based on
the extracted features.
Appeal Br. 22 (Claims App.).
REJECTIONS
Claims 1—28 stand rejected under 35U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 8.
Claims 1—8 and 10—28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Huang (US 2007/0081712 Al, pub. Apr. 12, 2007)
and Charbel (US 2008/0208037 Al, pub. Aug. 28, 2008). Final Act. 9.
2
Appeal 2016-004906
Application 12/828,335
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Huang, Charbel, and Thom (US 2007/0238960 Al, pub.
Oct. 11,2007). Final Act. 14.
ANALYSIS
35 U.S.C. § 101 —Non-statutory Subject Matter
The Appellants argue claims 1—28 as a group. See Appeal Br. 3, 6—7.
We select claim 1 as representative of the group with claims 2—28 standing
or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 588—89
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78—79 (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, 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. (citing
Mayo, 566 U.S. at 79) (emphasis added). If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
3
Appeal 2016-004906
Application 12/828,335
combination”’ to determine whether the additional elements ‘“transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78).
In other words, the second step is to “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 concept] itself.’” Id. (alteration in original) (quoting
Mayo, 566 U.S. at 72—73). 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. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery, i.e., “whether the focus of the claims is on [a] specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—36
(Fed. Cir. 2016).
Under the first step of the Alice framework, the Examiner determines
that the claim is directed to a mathematical relationship or formula for
estimating a local volume of interest (“VOI”) and/or to the “abstract idea of
using categories to organize, store and transmit information.” Ans. 2; Final
Act. 8. Conversely, the Appellants contend that the claims are directed to “a
method for automatic contrast phase classification in at least one 3D medical
image, which is not an abstract idea.” Appeal Br. 4; see also id. at 5, Reply
Br. 2-3.
4
Appeal 2016-004906
Application 12/828,335
Before determining whether the claims at issue are directed to an
abstract idea, we must first determine what the claims are directed to.
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S. Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”) 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., [818 F.3d
1369, 1375] (Fed. Cir. 2016) (inquiring into “the focus of the
claimed advance over the prior art”).
Enfish, 822 F.3d at 1335.
The step-one analysis requires us to consider the claims “in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter.” Internet Patents Corp., 790 F.3d at 1346. 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).
In this case, the preamble of claim 1 provides for a “method for
automatic contrast phase classification in at least one 3D medical image.”
Appeal Br. 22 (Claims App.). Claim 1 recites the limitations of a processor
detecting data of landmarks, estimating a volume of interest surrounding
each detected landmark, extracting data of a feature from each volume, and
5
Appeal 2016-004906
Application 12/828,335
determining data of a contrast phase by classifying the image based on the
features. See id. The Specification states that the invention relates
particularly to “automatic classification of a contrast phase in computed
tomography (CT) and magnetic resonance (MR) images.” Spec. 2, 5, 16.
The Specification discusses that previously, contrast phase information was
determined and added manually by a technician. Id. 14. As such, the
invention purports to automate a previously manual process. See id. The
Specification states that the detecting can be performed “using an automatic
landmark and organ detection method” as described in Seifert
(US 2010/0080434 Al, pub. Apr. 1, 2010), such as by using a processor to
detect predetermined slices and “using trained landmark and organ center
detectors” connected in a network. Id. 119; see also Seifert 117. The
Specification does not disclose how the volume estimation is performed (see
Spec. 123), but appears to rely on calculating a volume using mathematical
formula(s). The extracting of a feature is “based on intensity information
within each local VOI estimated from each detected landmark.” Id. 124.
The determination of a contrast phase can be performed using “a multi-class
machine-learning based classification algorithm” based on the features
extracted. Id. 125.
In that context, the claim is directed to determining a contrast phase
using algorithms and mathematical formulas.3 The claim automates a
manual process that can be performed mentally and is similar to claims
3 We note that “an abstract idea can generally be described at different levels
of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed.
Cir. 2016). The Board’s “slight revision of its abstract idea analysis does not
impact the patentability analysis.” Id. at 1241.
6
Appeal 2016-004906
Application 12/828,335
found to be abstract ideas by our reviewing courts in Parker v. Flook,
437 U.S. 584, 592—93 (1978) (a mathematical formula for computer alarm
limits in a catalytic conversion process was a patent-ineligible abstract idea),
Gottschalkv. Benson, 409 U.S. 63, 71—72 (1972) (claims involving an
algorithm for converting binary-coded decimal numerals into pure binary
form were unpatentable for being a patent on the algorithm itself), Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(process of gathering and analyzing information of a specified content and
displaying the result was an abstract idea), and Digitech Image Techs., LLC
v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (process of
organizing information through mathematical correlations and not tied to a
specific structure or machine was abstract idea). Here, the claim involves
nothing more than detecting, estimating, extracting, and determining data
from an image without any particular inventive technology — an abstract
idea. See Electric Power, 830 F.3d at 1354.
Under the second step of the Alice framework, we agree with and find
supported the Examiner’s determination that the elements of the claims,
individually or as an ordered combination, do not amount to significantly
more than that abstract idea. See Final Act. 8—9; Ans. 2—3. We are not
persuaded of Examiner error by the Appellants’ arguments that assert the
opposite. See Appeal Br. 5—6; Reply Br. 3—7.
The Appellants recite the limitations of the claim and simply state that
“claim 1 includes meaningful limitations beyond instructions to implement
the alleged abstract idea of estimating of local volume of interest on a
computer.” Appeal Br. 6; see also Reply Br. 3, 5, 6. The Appellants do not
provide further support or reasoning as to why or how the limitations are not
7
Appeal 2016-004906
Application 12/828,335
well-understood, routine, and conventional functions of a generic computer.
Cf Reply Br. 6—7. As the Appellants acknowledge {id.), the Specification
states that the method is to be “performed within a computer system using
data stored within the computer system” (Spec. 116) and “may be
implemented on a computer using well-known computer processors,
memory units, storage devices, computer software, and other components”
{id. 135 (Fig. 8)) such as a generic image acquisition device, network
interfaces, and input/output devices (id. ). There is no indication in the
Specification that any technologically novel or inventive hardware is
required. See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016); see also Enfish, 822 F.3d. at 1336 (focusing on
whether the claim is “an improvement to [the] computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity”). Detecting, estimating, extracting, and determining data are all
routine, well-understood, and routine functions of a generic computer and
merely require generic computer implementation. See Content Extraction
and Transmission LLC v. Wells Fargo Bank, Natl Assn., 776 F.3d 1343,
1348-49 (Fed. Cir. 2014).
We do not agree that the claim “improve[s] the technological
processes of digital image processing and determining a contrast phase of a
3D medical image.” Appeal Br. 6. Processing image data, estimating a
volume of interest, and determining data using a generic computer are not
technical or technological improvements to a processor itself. Rather, the
claim utilizes a generic processor in its normal capacity to simply implement
the abstract idea. See Alice, 134 S. Ct. at 2359.
8
Appeal 2016-004906
Application 12/828,335
We are not persuaded of Examiner error by the Appellants’ argument
that the claim is not directed to an abstract idea and recites an inventive
concept because it “does not preempt all uses of the alleged abstract idea.”
Appeal Br. 6. Although the Supreme Court has described “the concern that
drives this exclusionary principle [i.e., the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption” {see Alice, 134 S. Ct.
at 2354), characterizing pre-emption as a driving concern for patent
eligibility is not the same as characterizing pre-emption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). Although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id. The
aforementioned concept is not sufficiently limiting so as to fall clearly on the
side of patent-eligibility.
Further, we do not agree with the Appellants’ contention that the
claim covers patent-eligible subject matter because it passes the machine-or
transformation test in that “[t]he image data in independent claim 1 clearly
represents a physical object and is clearly being transformed.” Reply Br. 4;
see also id. at 5. The claim does not pass the machine-or-transformation test
because it is “not tied to any particular novel machine or apparatus, only [to]
a general purpose computer.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 716—17 (Fed. Cir. 2014). Nor does the claim transform a 3D image into
a different article or thing. The image remains in its same state. The data
9
Appeal 2016-004906
Application 12/828,335
remain data. The claim simply detects, analyzes, and determines data from
the image using a generic computer.
Thus, we are not persuaded of Examiner error in rejecting claim 1
under 35 U.S.C. § 101, and we sustain the Examiner’s rejection of claim 1
and of claims 2—28, which fall with claim 1.
35 U.S.C. § 103 - Obviousness
The Appellants contend that the Examiner’s rejection of independent
claims 1,13, and 21 is in error because the prior art does not teach limitation
(d) of claim 1 and similarly recited in claims 13 and 21 of determining a
contrast phase of the 3D image by classifying the image using a trained
contrast phase classifier based on extracted features. See Appeal Br. 8—10;
Reply Br. 8—9. We agree.
The Examiner acknowledges that Huang does not teach this limitation
and relies on Charbel to cure that deficiency. Final Act. 10. The Examiner
directs attention to paragraph 10 of Charbel and finds that the performance
of the phase contrast MR scan and generation of a phase image meets the
element of determining a contrast phase of the 3D image. Ans. 4. And, the
Examiner finds that classifying the patient for therapy based on the image
data meets the element of classifying the image using a contrast phase
classifier. Id.
As the Appellants point out, the Specification defines a “contrast
phase” as “an indication of when the image was acquired relative to a
contrast injection.” Spec. 116; Appeal Br. 9; Reply Br. 9. Charbel
discloses obtaining a 3D surface rendering and generating a perpendicular
10
Appeal 2016-004906
Application 12/828,335
cut to the axis of a desired, picked vessel. Charbel 110. A phase contrast
MR scan is then performed and may be employed to evaluate patients. Id.
We agree with the Appellants that this portion of Charbel does not
disclose determining an indication of when an image was acquired relative
to a contrast injection by classifying the image and using the extracted
feature. See Reply Br. 9; Appeal Br. 10. In other words, we do not see
where or how Charbel teaches that the performance of the phase contrast
scan determines an indication of when the image was acquired relative to a
contrast injection by the patient’s classification based on Charbel’s
generated image of the desired vessel or Huang’s extracted features from
PET and CT volumes (see Final Act. 9—10). To the extent the Examiner
relies on inherency in finding that the performance of the phase contrast and
generation of phase image determine a contrast phase, we note that
‘“[ijnherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.’” In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (citation omitted).
Based on the foregoing reason, we do not sustain the Examiner’s
rejection of independent claims 1,13, and 21. We also do not sustain the
rejections of dependent claims 2—12, 14—20, and 22—28, which rely on the
same inadequately supported findings.
DECISION
The Examiner’s rejection of claims 1—28 under 35 U.S.C. § 101 is
AFFIRMED.
11
Appeal 2016-004906
Application 12/828,335
The Examiner’s rejections of claims 1—28 under 35 U.S.C. § 103(a)
are REVERSED.
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
12