Ex Parte Vortman et alDownload PDFPatent Trial and Appeal BoardFeb 16, 201813226060 (P.T.A.B. Feb. 16, 2018) Copy Citation 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. 13/226,060 09/06/2011 Kobi Vortman INS-065/7301962001 2876 23517 7590 02/21/2018 MORGAN, LEWIS & BOCKIUS LLP (BO) 1111 PENNSYLVANIA AVENUE, N.W. WASHINGTON, DC 20004 EXAMINER GUPTA, VANI ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 02/21/2018 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): kcatalano@morganlewis.com patents @ morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KOBI VORTMAN and YOAV LEVY Appeal 2017-003076 Application 13/226,0601 Technology Center 3700 Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and TIMOTHY G. MAJORS, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims directed to methods of continuously monitoring movement of an internal volume of tissue during treatment and system for implementing it. The Examiner rejected the claims as unpatentable under 35 U.S.C. § 101 and 35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 6(b). The rejections are reversed. STATEMENT OF THE CASE Claims 1,2, 4—10, and 12—14 stand rejected by the Examiner as follows: 1 The Appeal Brief (“Appeal Br.”) 2 lists Insightec Ltd., as the real-party-in interest. Appeal 2017-003076 Application 13/226,060 Claims 1, 2, 4—10, and 12—14 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of Thomson et al. (US Pat. No. 8,874,187 B2, issued Oct. 28, 2014) (“Thomson”), Schweikard et al. (US Pat. Appl. Publ. No. 2003/0125622 Al, publ. July 3, 2003) (“Schweikard”), Salo (US Pat. Appl. Publ. No. 2007/0167739 Al, publ. July 19, 2007) (“Salo”), Karmann (US Pat. No. 5,365,603, Nov. 15, 1994) (“Karmann”), Lachaine et al. (US Pat. Appl. Publ. No. 2006/0036156 Al, publ. Feb. 16, 2006) (“Lachaine”), and Xu et al. (US Pat. Appl. Publ. No. 2007/0092110 Al, publ. Apr. 26, 2007) (“Xu”). Ans. 5. Claims 1, 2, and 4—6 under 35 U.S.C. § 101 because the claimed invention is not directed to patent eligible subject matter. Ans. 2. There are two independent claims on appeal, claim 1 (a method) and claim 7 (a system for implementing the method). Claim 1, which is representative of the rejected claims, is reproduced below (indentations added for clarity): 1. A method of continuously monitoring movement of an internal volume of tissue during treatment thereof, the method comprising the steps of: using a physical model of anticipated movement of an internal target volume to predict a target volume location as a function of time; continuously and directly tracking the internal target volume during treatment thereof using two tracking modalities, wherein the first tracking modality provides initial estimated target volume locations based directly on first image contents of the internal target volume obtained at a first information update rate, and the second tracking modality identifies subsequent estimated target locations of the internal target volume based directly on second image contents of the internal 2 Appeal 2017-003076 Application 13/226,060 target volume obtained at a second information update rate lower than the first information update rate wherein the subsequent estimated target locations are more accurate than the initial estimated target volume locations; comparing the initial estimated target locations to the predicted target volume locations to determine a tracking error; if the tracking error exceeds a safety threshold, suspending treatment; and adjusting one or more parameters of the physical model based on the subsequent estimated target locations of the target volume. CLAIM INTERPRETATION Claim 1 requires “directly tracking the internal target volume during treatment thereof using two tracking modalities.” The term “directly” is not defined in the Specification. We therefore adopt the ordinary definition of the term “direct” to mean without intervening agents or intermediaries.2 The Specification distinguishes between direct and indirect measurements of the internal tissue volume. Spec. 113. Thus, we agree with Appellants that the term “directly” excludes the use of fiducials (an object used as a point of reference) to track the internal target volume because they are utilized indirectly to determine the position of the internal tissue volume when placed appropriately. Appeal Br. 12. The claim also requires “continuously monitoring movement of an internal volume of tissue during treatment” and “continuously and directly tracking the internal target volume during treatment.” The term “continuous” is not defined in the Specification. However, we understand it to mean that the claimed method steps that are used to monitor and track the 2 https://www.thefreedictionary.com/direct 3 Appeal 2017-003076 Application 13/226,060 tissue volume are performed more than once in which the prediction phase of the claim using the physical model is followed by the update phase (“adjusting one or more parameters of the physical model based on the subsequent estimated target locations of the target volume”) and repeating in order to continuously monitor movement of the internal tissue volume. See Spec. 123. Thus, the steps of the claim are carried out, the physical model is then adjusted in the last step of the claim, and then the steps of the claim are repeated at least once so that the process is continuously repeated. The claim requires (1) that the first tracking modality is used to determine the tracking error and (2) that the second tracking modality is used to adjust the physical model for determining the predicted target volume. The tracking error is determined based on the first tracking modality and the predicted target volume. The claim also requires that the second tracking modality is carried out at an information update rate that is slower and more accurate than the first tracking modality. The Specification explains that the slower rate imaging is used to obtain a more accurate and dependable location of the volume. Spec. 120. The Specification discloses that ultrasound can be used for the first, faster, modality and MRI for the second, slower, modality. Id. at 119. OBVIOUSNESS REJECTION The Examiner found that Thomson describes tracking tissue volume using a predicted physical model using two image tracking modalities as claimed. Ans. 6. The Examiner found that Thomson does not describe using two tracking modalities “in that a first tracking modality tracks periodically and a second tracking modality tracks continuously.” Id. 4 Appeal 2017-003076 Application 13/226,060 However, the Examiner found that Schweikard “teaches continuously tracking the target volume during treatment thereof using two tracking modalities, in that a first tracking modality tracks periodically and a second tracking modality tracks continuously.” Id. The Examiner identified the first tracking modality as x-ray and the second as ultrasound. Id. at 7. The Examiner stated: It would be obvious to one of ordinary skill in the art that continuous updates would be more accurate than periodic updates because of the completeness or thoroughness one could obtain from continuous updates. Thus, Schweikard teaches that subsequent estimated target locations, via the second imaging modality [continuous], are more accurate than the initial estimated target volume locations, via the first imaging modality [periodic]. Id. To begin, the claims do not use the terms periodic or continuous to characterize the information update rates. Apparently, the Examiner is using “periodic” to mean a slower rate of information update and “continuous” to mean a faster rate of update. The Examiner asserts that the faster and continuous update rate using the second modality is more accurate than the slower rare. Id. However, as discussed by Appellants, the second modality is required by the claim to update at slower rate than the first modality (“second information update rate lower than the first information update rate wherein the subsequent estimated target locations are more accurate than the initial estimated target volume locations”). Thus, the Examiner confused the two tracking modalities. The Examiner repeated this error in the Answer in the response to Appellants’ arguments, characterizing the second modality as using ultrasound (Ans. 19) — which is the imaging disclosed in the Specification for the first and faster tracking modality. Spec. 119. 5 Appeal 2017-003076 Application 13/226,060 Inconsistently, but correctly, the Examiner later stated in the Answer that the cited Thomson, Schweikard, and Salo differ from claim 1 “in that that [sic] the images obtained by the second modality is at a second information update rate lower than the first information update rate obtained by the first modality” (Ans. 9). Yet, the Examiner’s discussion of the Karmann publication, which follows this statement, does not explain why it would have been obvious to have modified the method of Thomson, Schweikard, and Salo by using a subsequent second tracking modality at a lower information update rate than the first. The second slower update rate modality is used in the claim to adjust the predicted model. The issue is whether the Examiner provided a reason to use the claimed slower and more accurate second modality to adjust the physical model. For the “adjusting” step of the claim, the Examiner cited Xu for its teaching “determining whether a threshold value is exceeded and pausing process, and adjusting one or more parameters of the physical model based on the subsequent estimated target locations of the tracked region of interest.” Ans. 12. The Examiner did not provide a sufficient reason to have used a tracking modality having the slower information update rate to adjust the predicted model using Xu’s process. We find this to be an error, particularly when the Examiner appeared to have confused the information update rates of the two modalities. Consistent with Appellants’ argument about why Schweikard is deficient, Schweikard teaches that x-ray is too slow to follow breathing motion with high precision (Schweikard 147). Reply Br. 12. Thus, one of ordinary skill in the art would, on this record, not have had reason to adjust the physical model with the slower less accurate tracking modality — 6 Appeal 2017-003076 Application 13/226,060 contrary to the claim which requires the second modality to be more accurate. For the foregoing reason, we conclude that the Examiner did not meet the burden in establishing that all elements of the claim would have been obvious to one of ordinary skill in the art based on Thomson, Schweikard, Salo, Karmann, Lachaine, and Xu.3 The rejection of claim 1 as obvious is reversed. The rejection of independent claim 7 is reversed for the same reasons. The rejection of dependent claims 2, 4—6, 8—10, and 12—14 is also reversed. 101 REJECTION The Examiner rejected the claims as unpatentable as being directed to patent ineligible subject matter. The Examiner stated that claim 1 is directed to a law of nature and an abstract idea, making it ineligible for a patent as being drawn to a judicial exception to 35 U.S.C § 101. Ans. 3^4. To determine whether a claim is eligible for patent under 35 U.S.C. § 101, a two-step analysis is necessary. As set forth in Alice Corp. Pty. Ltd. v. CLSBankInt 7, 134 S. Ct. 2347, 2355 (2014): First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts [e.g., a law of nature, natural phenomenon, or abstract idea]. If so, we then ask, what else is there in the claims before us? . . . We have described step 3 In reaching this conclusion, however, we do not agree with Appellants that Schweikard does not teach direct measurement of internal tissue volume as argued by Appellants. Appeal Br. 11; Reply Br. 13. While it is correct that Schweikard describes the use of fiducials to indirectly track tissue, there is also express disclosure in Schweikard that fiducials do not have to be used and that direct measurement can be used. Schweikard Tflf 7, 9, 49, 50, 54. 7 Appeal 2017-003076 Application 13/226,060 two of this analysis as a 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. (alterations, citations, and quotation marks omitted). In this case, even if the claim invokes a law of nature because of its measurement of internal tissue volume or an abstract idea because of the application of algorithms to determine the monitor position of the internal tissue volume, we agree with Appellants that the claim as a whole is significantly more than the ineligible concepts. Appeal Br. 10. Claim 1 is directed to monitoring the movement of an internal volume of tissue during a treatment. The movement is monitored utilizing two tracking modalities which produce images of the internal tissue. The information from the tracking modalities is used to determine a tracking error for deciding if treatment should be suspended and to adjust a predicted model of target volume movement. We are persuaded that the claimed method, while using generic and known tracking modalities (such as ultrasound and MRI), improves the internal tissue monitoring by using the slower rate modality to adjust parameters of the physical model to predict target volume location, which, in turn, is used to determine a tracking error for deciding when to turn off treatment. We find that the rejected claims in this case are similar to those in Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01 (Fed. Cir. 2016), where the claims were found to be patent eligible under 35 U.S.C. § 101 because “the claim’s enhancing limitation necessarily requires that these generic components [network devices, etc.] operate in an unconventional manner to achieve an improvement in computer 8 Appeal 2017-003076 Application 13/226,060 functionality.” Likewise, here, although the tracking modalities are generic, they operate in an unconventional manner to improve the functionality of the tracking modalities in determining the movement of the internal tissue volume for treatment purposes. The holding in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) also supports the patent eligibility of the claims. In Enfish, the court found that “the claims at issue ... are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.” Id. at 1336. In this case, the claims improve the way the tracking modalities operate in determining the movement of tissue volume to determine when to suspend treatment. Thus, the claimed subject matter is not merely an algorithm or natural phenomenon, but constitutes an improvement to how tracking systems operate, such as ultrasound and MRI, that improves their ability to monitor tissue movement during treatment. Thus, unlike the claims in In re TLI Commc ’ns LLC Patent Litig., 823 F.3d 607, 610 (Fed. Cir. 2016), the claims include a sufficient inventive concept to satisfy § 101. For the foregoing reasons, the rejection under § 101 of claims 1, 2, and 4-6 is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation