Ex Parte Yamada

Patent Trial and Appeal Board

Feb 15, 2018

12690591 (P.T.A.B. Feb. 15, 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.
12/690,591 01/20/2010 Kazuhiro YAMADA Q115822 8113
23373 7590 02/20/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
PATEL, NEHA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUHIRO YAMADA
Appeal 2016-008450
Application 12/690,591
Technology Center 3600
Before ERIC B. CHEN, AMBER L. HAGY, and MICHAEL M. BARRY,
Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 7—11, 13—15, 17—21, and 23—32, which are all
of the pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Sysmex Corporation as the real party in interest.
(App. Br. 2.)
2 Claim 6 was canceled in an Amendment dated March 26, 2013. Claims 5,
16, and 22 were canceled in an Amendment dated June 23, 2015. Claim 12
was canceled in an Amendment dated December 30, 2015. (See also Final
Act. 2.)
Appeal 2016-008450
Application 12/690,591
STATEMENT OF THE CASE
Introduction
According to Appellant, “[t]he present invention relates to a cell
image processing apparatus, a cell image processing method, and a computer
program product, for processing a cell image obtained by imaging a
specimen smeared on a slide glass.” (Spec. 11.) In particular, Appellant’s
Specification describes obtaining imaging data, calculating certain
characteristics of those images, and graphing those characteristics over time,
from which abnormalities in, for example, specimen staining and lamp light
intensity maybe ascertained. (E.g., id. Tflf 34, 120, 121, Figs. 24A, 24B.)
Appellant’s Specification further describes how a user may determine from
trends in that historical data whether to replace a lamp bulb in the apparatus
or readjust the setting relating to staining a smear slide to maintain the
accuracy of the cell image processing apparatus. (Id.)
Exemplary Claim
Claims 1,18, and 20 are independent. Claim 1, reproduced below, is
exemplary of the claimed subject matter:
1. A cell image processing apparatus comprising:
a smearing unit comprising an automatic dispenser
configured to drop each of the plurality of specimens onto a
slide glass, and a robotic hand configured to smear each of the
plurality of specimens onto the slide glass and an automatic
staining unit configured to stain each of the plurality of smeared
specimens on the slide glass by using a staining solution,
an imaging unit comprising a robotic arm
configured to hold the slide glass on which the specimen has
been smeared, at least one lens configured to magnify a cell
included in the stained smeared specimen held by the robotic
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arm and a camera configured to capture a cell image of the
magnified cell;
a display; and
a processor configured to perform operations
comprising:
calculating a first characteristic value based
on processing and analyzing images of cell portions in a
plurality of cell images obtained by the imaging unit and a
second characteristic value based on images other than cell
portions in the plurality of cell images obtained by the imaging
unit;
storing the calculated first and second
characteristic values in a memory; and
controlling the display so as to display a
screen including a first graph showing a temporal fluctuation in
the first characteristic values read out from the memory and a
second graph showing a temporal fluctuation in the second
characteristic values read out from the memory,
wherein the first graph has a time value on an x-
axis and the first characteristic value, which is a characteristic
value related to whether the staining unit is functioning
abnormally, on a y-axis, and the second graph has a time value
on an x-axis and the second characteristic value which is a
characteristic value related to whether the imaging unit is
functioning abnormally, on a y-axis.
Rejection
Claims 1—4, 7—11, 13—15, 17—21, and 23—32 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter.
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ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s determination that the claims are directed to patent-ineligible
subject matter.
Patent eligibility is a question of law. Dealertrack, Inc. v. Huber, 674
F.3d 1315, 1333 (Fed. Cir. 2012). The Supreme Court has set forth an
analytical “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 Int’l, 134 S. Ct.
2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 71—73 (2012)). In the first step of the analysis, we
determine whether the claims at issue are “directed to” a judicial exception,
such as an abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends.
Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims
are determined to be directed to an abstract idea, then we consider under step
two whether the claims contain an “inventive concept” sufficient to
“‘transform the nature of the claim’ into a patent-eligible application.”
Alice, 134 S. Ct. at 2355 (quotations and citation omitted).
Noting that the two stages involve “overlapping scrutiny of the
content of the claims,” the Federal Circuit has described “the first-stage
inquiry” as “looking at the ‘focus’ of the claims, their ‘character as a
whole,”’ and “the second-stage inquiry (where reached)” as “looking more
precisely at what the claim elements add—specifically, whether, in the
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Supreme Court’s terms, they identify an ‘inventive concept’ in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed.” Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court 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. See
Enfish, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner finds that the claims are directed to the abstract idea of
organizing, storing, and transmitting information—specifically, information
in the form of “a first and second characteristic value from cell images.”
(Final Act. 2—3.)
Appellant presents several arguments against the Examiner’s
characterization of the claims as directed to an abstract idea, none of which
we find persuasive of error. Appellant first argues an “abstract idea” is an
“idea of itself,” which Appellant emphasizes is described in the “July 2015
Updated Interim Eligibility Guidance” as “a mental process than can be
performed in the human mind or by a human using a pen and paper.” (App.
Br. 16.) Appellant argues the claimed invention is not an abstract idea
because it cannot be done by a human—that is, the claims recite various
non-human elements including a “robotic arm, staining unit, and a
microscope.” {Id. at 17.)
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We disagree that the category of “abstract ideas” is, as Appellant
suggests, limited to mental processes that can be performed entirely by
humans mentally or with the aid of pen and paper. We note, in particular,
that our reviewing court has repeatedly confirmed since Alice that the
category of “abstract ideas” includes routine data gathering, manipulation,
and output. See, e.g., Electric Power Grp., 830 F.3d at 1354 (holding that
claims directed to a process of gathering and analyzing information of a
specific content are directed to an abstract idea); Content Extraction and
Transmission LLC. v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (holding that the claims were “drawn to the abstract idea of
1) collecting data, 2) recognizing certain data within the collected data set,
and 3) storing that recognized data in a memory”).
Here, we agree with the Examiner that Appellant’s claims are directed
to data gathering, processing, and output. (Final Act. 2—5; Ans. 2—5.) In
particular, representative claim 1 recites controlling an imaging unit to
capture a cell image (gathering data), determining first and second
characteristic values of the image (processing data), and graphically
displaying the processed data plotted over time (outputting data). (App. Br.
32—33 (Claims App’x).) Thus, the claims are directed to the abstract
concept of gathering data, analyzing the data, comparing the data, and using
the data to create an output.
We further agree that the claims are directed to an abstract idea even
if the claims also recite tools to gather and manipulate that data. In that
regard, the Federal Circuit’s decision in Electric Power Grp., 830 F.3d at
1354, is instructive. In that case, the claims recited steps of receiving
measurements, recording data pertaining to those measurements, and
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manipulating and displaying that data. Id. at 1351—52. The Federal Circuit
agreed that the claims were directed to an abstract idea of “collecting
information, analyzing it, and displaying certain results of the collection and
analysis,” even though the claims required use of various devices to take the
measurements, to manipulate the data, and to display it. Id. at 1353—54. The
court reasoned:
[T]he claims are clearly focused on the combination of
those abstract-idea processes. The advance they purport to
make is a process of gathering and analyzing information of a
specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those
functions. They are therefore directed to an abstract idea.
Id. at 1354. Similarly, here, Appellant’s claiming the use of a generic cell
image processing apparatus for its ordinary purpose and in a conventional
manner to obtain data (cell images) does not render Appellant’s claimed
invention less abstract.
We also note that the Examiner analogizes the claims at issue here to
those at issue in Cyberfone, reasoning that, here, the claims use categories
(first and second characteristic values) to organize (graph temporal
fluctuations in these values), store (storing the characteristic values in
memory), and transmit (to a display screen) information. (Ans. 3 (citing
Cyberfone Sys., LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988,
993 (Fed. Cir. 2014) (noting that the mere collection and organization of
data is insufficient to qualify as patent-eligible subject matter)).) We agree
with the Examiner’s analysis, and we find unpersuasive Appellant’s
argument that the claims are not “directed to” an abstract idea because they
“do not recite ‘organizing of information into categories’” (Reply Br. 5—6)
or that they do not recite “mentally abstract” concepts (see id. at 7—9).
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Appellant also argues the claimed invention is unique and not
conventional. (App. Br. 19-20.) In particular, Appellant argues the claimed
invention improves the functioning of the apparatus because it results in
outputting information to a screen that “alert[s] the operator about the
malfunction of a particular part in a timely manner, which results in an
increased accuracy of the smear slide processing and prevents malfunction
of the device.” (App. Br. 21 (emphasis omitted).)
We are not persuaded by Appellant’s argument, because Appellant is
not arguing any improvement in the way that any of the apparatus operates;
rather, Appellant’s arguments are premised on the benefits of an operator
using the data collected and analyzed as claimed to determine whether to
perform maintenance on the underlying apparatus. Thus, in that regard,
Appellant overstates the claimed invention in characterizing it as an
apparatus that “generates and processes a specimen e.g., a blood cell and
detects abnormalities within the device (and its components).” (Reply Br. 7
(underlined emphasis omitted; italicized emphasis added).) Appellant
presents a similar argument in asserting that independent claim 20 addresses
whether component parts of the system (“the staining unit” and the “imaging
unit”) are “functioning abnormally.” (App. Br. 22.) We disagree; the claims
do not recite detecting abnormalities. Nor does Appellant assert that the
claims require an arguably inventive device or technique for gathering and
displaying that data. Rather, Appellant’s claims merely recite gathering and
outputting data from which an operator may make decisions for further
action. Thus, this case is unlike DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014), in which an inventive concept was
found in modification of conventional mechanics behind website display to
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produce dual-source integrated hybrid display. Appellant also does not
argue the invention is a software-based invention that improves the
performance of the computer system itself. Thus, this case is also unlike
Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016), in which an inventive concept was found in the
ordered combination of limitations providing for “the installation of a
filtering tool at a specific location, remote from the end users, with
customizable filtering features specific to each end user.”
Appellant further argues the Examiner “is not considering the claim as
a whole” and has failed to analyze the claim “as a combination.” (App. Br.
17—18 (emphasis omitted).) We disagree with Appellant’s characterization;
the Examiner expressly considers the combination of elements. (Final Act.
3; see also Ans. 4.) In arguing the combination of elements, Appellant
appears to be arguing that application of the abstract idea in the context of
cell image processing removes the claims from the realm of being directed
to an abstract idea. We disagree. As the Supreme Court has said, “if a claim
is directed essentially to a method of calculating, using a mathematical
formula, even if the solution is for a specific purpose, the claimed method is
nonstatutory.” Parker v. Flook, 437 U.S. 584, 595 (1978) (quoting In re
Richman, 563 F.2d 1026, 1030 (CCPA 1977)). In addition, the Supreme
Court and the Federal Circuit have repeatedly made clear that “merely
limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.”
Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016).
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Appellant also argues that “streamlined analysis should apply”
because “claim 1 is directed to a particular machine.” (App. Br. 21.)
Although Appellant does not specify what “streamlined analysis” is
suggested, we assume Appellant refers to guidance provided to by the Office
to Patent Examiners. We note, however, that Decisions of the Board are
based upon relevant case law as set forth by the Federal Circuit and the
Supreme Court, and do not rely upon examination guidelines provided by
the Office to assist Patent Examiners in determining subject matter
eligibility during prosecution of patent applications. Thus, even if the
Examiner’s analysis is not consistent with guidance provided to Examiners
(which we do not address), such inconsistency in itself would not be
dispositive of Examiner error.
Appellant presents additional arguments as to dependent claims 29—
32. (App. Br. 22—25.) These arguments do not persuade us of error in the
Examiner’s determination that these claims are directed to the same abstract
idea as independent claims 1,18, and 20, for the reasons noted above. (See
Ans. 5—6.) We further address Appellant’s arguments regarding the
additional limitations of these claims below in connection with Step Two of
the Alice analysis.
Thus, at step one of the analysis, we are not persuaded that the
Examiner erred in determining that the claims are directed to a patent-
ineligible subject matter—that is, to an abstract idea.
Step Two: Whether Additional Elements Transform The Idea Into
Patent-Eligible Subject Matter
Having found that the claims are directed to an abstract idea, the
Examiner also finds that the additional elements or combinations of
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elements beyond the abstract idea do not amount to “significantly more”
than the abstract idea itself:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of
elements in the claims, other than the abstract idea per se,
amount to no more than a recitation of A) generic computer
structure that serves to perform generic computer functions that
serve to merely link the abstract idea to a particular
technological environment (i.e. computer processor, a
dispenser, a robotic hand, and a staining unit, an imaging unit
with lens and a robotic arm, a camera to capture the magnified
cell).
(Final Act. 3—4.) The Examiner also finds the claims use “well known
technology to automate the abstract idea[] identified as above.” (Id. at 5; see
also Ans. 2—6.)
Appellant challenges these findings by arguing, as noted above, that
the claimed invention “improves processing/analyzing of the slides by
detecting malfunctions in the structural elements of the cell processing
apparatus.” (App. Br. 26.) We disagree with Appellant’s characterization of
the claims. As we note above, Appellant’s claims do not recite “detecting
malfunctions[;]” rather, Appellant’s claims recite gathering data and
manipulating (graphing) the data, from which a malfunction may be inferred
by a user. Further, as the Examiner finds, and we agree, “nowhere in the
specification is it described that abnormalities are detected and addressed
automatically” by Appellant’s claimed invention. (Ans. 5.) Rather, as
explained in Appellant’s Specification, “the user can [know] that it is time”
to exchange a lamp bulb or readjust smear slide preparing apparatus based
on inferences derived from fluctuations in the gathered characteristic data
over time. (See Specification || 120-121; see also Ans. 5 (“Processing of
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data as claimed and described in specification only display[s] in form of
graph and allow[s] user to take decision based on display of values[,]” citing
Specification 1182).)
Thus, Appellant’s claims recite use of known measurement apparatus
and conventional computer technology to gather and manipulate data. The
fact that a user may rely upon this data to decide whether to take additional
actions that may improve the operation of the underlying apparatus does not
render the claimed invention less abstract. As noted above, the use of
measurement tools in a conventional way for their ordinary purpose to
gather data does not render patent-eligible a claim that is directed to an
abstract idea. See, e.g., Electric Power Grp., 830 F.3d at 1353—56. The
Federal Circuit’s analysis of the second step of the Alice framework in
Electric Power Group is also instructive here. There, the court noted:
The claims in this case do not even require a new source
or type of information, or new techniques for analyzing it. . . .
As a result, they do not require an arguably inventive set of
components or methods, such as measurement devices or
techniques, that would generate new data. They do not invoke
any assertedly inventive programming. Merely requiring the
selection and manipulation of information ... by itself does not
transform the otherwise-abstract processes of information
collection and analysis.
Electric Power Grp., 830 F.3d at 1355. The court also noted, in terms of
“how the desired result is achieved,” that the claims also “do not require any
nonconventional computer, network, or display components, or even a ‘non-
con ventional and non-generic arrangement of known, conventional pieces, ’
but merely call for performance of the claimed information collection,
analysis, and display functions ‘on a set of generic computer components’
and display devices.” Id.
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Similar analysis supports the Examiner’s rejection here. As in
Electric Power Group, Appellant’s claims specify what information it is
desirable to gather, analyze, and manipulate, but they do not include any
requirement for performing the claimed functions of gathering, analyzing,
and manipulating that information by use of anything but entirely
conventional, generic technology. (See also Ans. 3—5.) The claims,
therefore, merely link the use of the abstract idea to a particular
technological environment, which does not amount to “significantly more.”
Moreover, in terms of processing the data, the claims merely recite a
processor to calculate values and to plot them graphically over time. We
note that these are steps that could be performed manually with the aid of
pen and paper. Merely using a computer to perform more efficiently what
could otherwise be accomplished manually does not confer patent-eligibility.
Appellant also argues that “[t]he fact that the claims are patentable
over the art of record is further evidence that the operations are new and
unique.” (App. Br. 27.) This argument is not persuasive of error. Although
the novelty of the claims is not before us, even if novel and nonobvious, a
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90. Thus, an abstract idea does not transform into an
inventive concept just because the Examiner has not cited prior art that
discloses or suggests it. Indeed, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188—
189 (1981).
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For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claims 1, 18, and 20 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter, or in rejecting on the same basis claims
2-4, 7—11, 13—15, 17, 19, 21, and 23—28, which Appellant does not argue
separately. (App. Br. 30.)
As noted above, Appellant presents additional arguments as to
dependent claims 29—32, which recite that the processor is further
configured take certain actions in response to user instructions, such as
displaying a shutdown continue option before shutting down the system.
(App. Br. 43 44 (Claims App’x).) Appellant contends these claims recite a
“new and unique” shutdown process of the apparatus, which “prevents faulty
operations of the abnormalities.” (App. Br. 23—25, 30-31.) Regardless of
whether the subject matter of claims 29—32 is novel (which is not before us),
Appellant does not point to anything in those claims that is outside of the
abstract idea of a processor performing actions (displaying information /
shutting down apparatus) in response to user input. The Examiner finds, and
we agree, that these dependent claims do not add anything to the base claim
beyond “well-understood, routine and conventional activity.” (Ans. 6.)
Therefore, we also sustain the Examiner’s rejection of dependent
claims 29—32 under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1—4, 7—11,
13—15, 17—21, and 23—32 under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter is 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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