Ex Parte Walker et al

Patent Trial and Appeal Board

Aug 30, 2017

13266576 (P.T.A.B. Aug. 30, 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.
13/266,576 10/27/2011 Matthew J. Walker 2009P00450WOUS 5145
24737 7590 09/01/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue HUNTER, SEAN KRISTOPHER
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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 MATTHEW WALKER and MARK E. OLSZEWSKI
Appeal 2016-004977
Application 13/266,576
Technology Center 3600
Before THU A. DANG, SCOTT E. BAIN, and JASON M. REPKO,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—8, 10, 12—27, 29, and 31—45, which constitute all
claims pending in the application. Claims 9, 11, 28, and 30 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-004977
Application 13/266,576
STATEMENT OF THE CASE
The Claimed Invention
According to Appellants, the claimed invention relates “generally to
the medical imaging arts” and more specifically to “the detection of personal
medical devices” and “conducting medical imaging procedures on patients
with a personal medical device.” Spec. 1,11. 4—6. Claims 1, 20, and 39 are
independent. Claim 1, illustrative of the invention and the subject matter of
the appeal, reads as follows:
1. A method for detecting a presence of a personal
medical device within a subject prepared to undergo a medical
procedure, comprising the step of:
analyzing image data of the subject to determine the
presence of the personal medical device within the subject;
classifying the personal medical device as a type of
personal medical device from the analyzed image data in
response to determining the presence the presence of the
personal medical device and includes obtaining a first set of
patient data for the subject with the medical device module by
polling a first database with the medical device module and the
first set of patient data includes at least one of the type of
personal medical device, the manufacturer of the personal
medical device, and the model of the personal medical device;
polling a second database, based on the first set of patient
data, to obtain a second set patient data, wherein the second set
of patient data includes attenuation properties of the personal
medical device; and
altering the medical procedure by the medical device
module in response to the first set of patient data and second set
of patient data;
wherein the steps are performed by at least one
configured data processor.
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Appeal 2016-004977
Application 13/266,576
The Rejections on Appeal
1. Claims 1—8, 10, 12—27, 29, and 31—45 stand rejected under
35U.S.C. § 101 as directed to ineligible subject matter.
2. Claims 1—8, 10, 12—27, 29, and 31—45 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Boemert et al., (US
2010/0189328 Al; published July 29, 2010) and Joao, (US 2002/0032583
Al; published Mar. 14, 2002).
ISSUES
The principal issues before us are whether the Examiner erred in
finding that:
1. The claimed method comprising the steps of “analyzing image data”
and “classifying the personal medical device,” wherein “the steps are
performed by at least one configured data processor” (claim 1) is directed to
patent ineligible subject matter.
2. Boemert in view of Joao teaches or suggest “analyzing image data of
the subject to determine the presence of the personal medical device,”
“classifying the personal medical device as a type of personal medical
device,” and “polling a second database, ..., to obtain a second set of patient
data, wherein the second set of patient data includes attenuation properties of
the personal medical device” (id.).
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
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Appeal 2016-004977
Application 13/266,576
Appellants ’ Invention
1. Appellants’ invention relates generally to the medical imaging arts,
including magnetic resonance (MR) imaging, and recognizes that imaging
radiation may interfere with the operation of a personal medical device.
Spec. 1,11. 4—22. Thus, the invention provides a method and system for
detecting the presence of a personal medical device and for gathering
information regarding the device. Spec. 1,11. 30—32. In particular, a method
and system are provided for determining the location and type of personal
medical device as well as other characteristics of the device within a patient.
Spec. 2,11. 7-12.
Boernert
2. Boernert recognizes that all kinds of metal materials (such as
implants, pacemakers, parts of patients’ clothes, piercings, etc.) could be
placed inside or around a patient during an MR examination which can
substantially degrade the image quality or the ferromagnetic parts could
harm the patient. 122. For example, RF energy can lead to strong heating
of the metal objects, resulting in serious bums to the patient with the
implants, where the exact size, position and material composition of the
implants may be unknown. Id. Thus, Boernert recognizes that it is
beneficial if the operator is informed about position and size of metal objects
in the body region under examination, wherein the information about the
amount and location of metal can also be used to make the preparation
measurements more robust and reliable. 124. Depending on the size and
position of the material, different actions are proposed. 127.
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Appeal 2016-004977
Application 13/266,576
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made, but did not make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are unpersuaded
the Examiner has erred. We adopt as our own the findings and reasons set
forth in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
Rejection Under 35 U.S.C. §101
Appellants argue the Examiner erred in concluding the claims are
directed to an abstract idea and, therefore, constitute patent ineligible subject
matter. App. Br. 5—8.1 Specifically, Appellants contend “[t]he image data,
subject, and personal medical device are not abstract ideas.” Id. at 6.
According to Appellants, “[t]he current industry practice is to ask the patient
whether they have a personal medical device” whereas “[t]he claims include
individual steps that are new, e.g., classifying a personal medical device
from image data.” Id. at 7. Appellants argue “the software replaces a
previous process in which an operator relied upon external information with
a process, which receives information obtained internally that could not be
observed reliably externally.” Id.
Based on the record before us, we are not persuaded of Examiner
error.
1 Appellants argue all claims as a group for purposes of the ineligible subject
matter rejection, and we choose claim 1 as representative of the group.
37 C.F.R. §41.37(c)(l)(iv).
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Under 35 U.S.C. § 101, the Supreme Court has long interpreted § 101
to include an implicit exception: “[l]aws 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). The Supreme Court, in Alice,
reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289,
1300 (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 is
to “determine whether the claims at issue are directed to one of those patent-
ineligible concepts,” such as an abstract idea, as the Examiner concludes in
this case. If the claims are not directed to 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.” Alice, 134 S. Ct. at 2355
(quoting Mayo, 132 S. Ct. at 1297).
Here, the Examiner concludes the claims are directed to “a basic
concept of providing healthcare” which is an “abstract idea.” Final Act. 2.
According to the Examiner, “[t]he claims do not amount to significantly
more than the abstract idea itself’ wherein “the computer related claims
require no more than a generic computer to perform generic computer
functions.” Id. The Examiner notes “the claims as currently submitted by
Appellant are directed to the abstract idea of comparing new and stored
information and using rules to identity options.” Ans. 22. We agree.
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The claims merely recites the steps of “analyzing” information and
then “classifying” the device based on the analyzed information (claim 1).
According to Appellants, the claims are directed to “software” which
“replaces a previous process in which an operator relied upon external
information with a process, which receives information obtained internally
that could not be observed reliably externally.” (App. Br. 7). That is, the
claims are directed to collecting and analyzing imaging information. Claims
involving data collection, analysis, and display are directed to an abstract
idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(holding that “collecting information, analyzing it, and displaying certain
results of the collection and analysis” are “a familiar class of claims
‘directed to’ a patent ineligible concept”); see also In re TLI Comma ’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLCv.
Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016). As such, claim 1
is directed to the abstract idea of receiving, analyzing, and transmitting data.
On this record, we are agree with the Examiner that claim 1 is directed to an
abstract idea under step one of Alice.
As to Alice step two, Appellants argue the “[t]he claims include
individual steps that are new, e.g., classifying a personal medical device
from image data,” wherein “the software replaces a previous process in
which an operator relied upon external information with a process, which
receives information obtained internally that could not be observed reliably
externally.” App. Br. 7. However, “the relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea ... on a generic computer.” Alice, 134 S.Ct. at 2359.
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Here, the Examiner finds, and we agree, “the ‘medical device module’
as recited and described by the Appellant throughout the specification would
include a general purpose computer.” Ans. 23. As the Examiner explains,
“the computer(s), as recited, is a generic computer component that perform
functions (i.e., the analyzing image data..., classifying the personal medical
device ....)” wherein “[tjhese are all generic computer functions (i.e., the
analyzing, classifying, polling and altering) that are well-understood,
routine, and conventional activities previous known to the industry.” Id. at
24. Although the claims “also recite[] a personal medical device as well as a
first and second database,” we agree with the Examiner that these
components “do NOT add meaningful limitation to the idea of comparing
new and stored information and using rules to identify options beyond
generally linking the method to a particular technological environment.” Id.
That is, contrary to Appellants’ contention, providing “software” that
“replaces a previous process in which an operator relied upon external
information with a process, which receives information obtained internally
that could not be observed reliably externally” (App. Br. 7) is not sufficient
to transform the claims into a patent-eligible application.
Thus, on this record, we sustain the ineligible subject matter rejection
of claim 1 and claims 2—8, 10, 12—27, 29 and 31—45.
Rejection Under Pre-AIA 35 U.S.C. § 103(a)
Appellants contend “Boemert does not disclose, suggest, or imply
classifying a personal medical device.” App. Br. 9. According to
Appellants, “[determining the presence of metal on a surface or inside a
patient is not a classification of a type of a personal device.” Id. Appellants
concede that “Boemert classifies the metal part as inside or on the surface of
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Application 13/266,576
a patient” but contend that it “does not classify the metal part as a type of
personal medical device.” Id. Appellants then contend “Joao does not
disclose, suggest, or imply retrieving attenuation properties of a personal
medical device.” Id. at 10.
We have considered all of Appellants’ arguments and evidence
presented. However, we disagree with Appellants’ contentions regarding the
Examiner’s rejections of the claims.
Boemert recognizes that various types of metal objects (medical
devices) such as implants and pacemakers could be placed inside a patient
during an MR examination which can substantially degrade the MR image
quality or harm the patient, and thus finds it beneficial if the operator is
informed about position and size thereof in the body region under
examination, wherein the information about the amount and location of
metal can also be used to make the preparation measurements, such that,
depending on the size and position of the material, different actions are
proposed. (FF 2). That is, Boemert discloses recognizing imaging radiation
interference and proposes detecting the presence of a personal medical
device and for gathering information regarding the device, similar to the
claimed invention (FF 1).
Appellants concede that “Boemert classifies the metal part as inside or
on the surface of a patient” (App. Br. 9). Here, Boemert identifies the
various types of medical devices inside a patient such as implants and
pacemakers which could substantially degrade the MR image or harm the
patient, by determining the size and position of the medical device (FF 2).
Thus, we agree with the Examiner that Boemert at least suggests “analyzing
image data of the subject to determine the presence of the personal medical
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Application 13/266,576
device,” and “classifying the personal medical device as a type of personal
medical device,” as recited in claim 1.
Further, as Appellants point out, “Joao is directed to processing
requests to access information contained in a patient’s healthcare record or
file, determining authorization, and generating a notification report
regarding the access” (App. Br. 9). We agree with the Examiner’s reliance
on Joao for teaching and suggesting “obtaining a first set of patient data . .
by polling a first database” and “polling a second database, based on the first
set of patient data” (Final Act. 5).
As the Examiner explains, “the ‘various databases’ as mentioned refer
to a plethora of data contained in multiple databases, as disclosed by Joao”
such that “ . . .[a]ny and/or all processing described herein can be performed
in conjunction with a patient’s medical history, ... and/or any other
information deemed important and/or essential in the individual’s healthcare
diagnoses and/or treatments” (Ans. 28, citing Joao at 35, emphasis omitted).
Accordingly, the Examiner finds “providing data and/or information
regarding the patient that includes the respective patient’s medical history,
.. .would include that the patient has a ‘personal medical device’ implanted
and/or attached to their anatomy as well as the features, characteristics, etc.
of said ‘personal medical device’, i.e. ‘attenuation properties.’” (Id. at 29).
Accordingly, the Examiner finds, and we agree, the combination of
Boemert and Joao teaches and suggests “polling a second database, ..., to
obtain a second set of patient data, wherein the second set of patient data
includes attenuation properties of the personal medical device” (claim 1).
We find that the skilled artisan, upon reading Joao’s teaching of and
obtaining patient data from a plurality of databases, would have found it
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Application 13/266,576
obvious to modify Boemert’s teachings of providing medical procedure on
patients comprising detection of a personal medical device in the patients
(FF 2) to include “polling a second database, ..., to obtain a second set of
patient data,” wherein the patient data includes “attenuation properties of the
personal medical device” (claim 1). We conclude the combination of
Boemert’s known teaching of detecting a personal medical device (FF 2)
with Joao’s known teachings of polling databases to obtain information
about the patient, including the personal medical device of the patient, would
have yielded predictable results to one of ordinary skill in the art at the time
of the invention. That is, we find the combination is no more than a simple
arrangement of known elements, with each performing the same function it
had been known to perform, yielding no more than one would expect from
such an arrangement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Appellants have provided no evidence that such combination was
“uniquely challenging or difficult for one of ordinary skill in the art”
(Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007)). Rather, the skilled artisan would “be able to fit the teachings of
multiple patents together like pieces of a puzzle” since the skilled artisan is
“a person of ordinary creativity, not an automaton.” See KSR, 550 U.S. at
420-21.
On this record, we find no error in the Examiner’s rejection under
§ 103 of independent claim 1 over Boemert and Joao.
Although Appellants raise additional arguments urging for the
patentability of claims 2, 4, 16, 20, 39, 43, and 44 rejected on the same basis
as claim 1 (App. Br. 10—15), we find that the Examiner has rebutted each of
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those arguments in the Answer by a preponderance of the evidence. (Ans.
29-40). Therefore, we adopt the Examiner’s findings and underlying
reasoning, which we incorporate herein by reference. Consequently, we also
find no reversible error in the Examiner’s rejections of claims 2, 4, 16, 20,
39, 43, and 44, and the dependent claims not separately argued.
DECISION
We affirm the Examiner’s rejections of claims 1—8, 10, 12—27, 29, and
31—45.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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