Gerd Binnig et al.

Patent Trials and Appeals Board

Sep 30, 2019

12799709 - (D) (P.T.A.B. Sep. 30, 2019)

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.
12/799,709 04/29/2010 Gerd Binnig DEF-017 4412
47713 7590 09/30/2019
IMPERIUM PATENT WORKS
P.O. BOX 607
Pleasanton, CA 94566
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
09/30/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GERD BINNIG, GUENTER SCHMIDT,
and MARKUS RINECKER
____________

Appeal 2018-004044
Application 12/799,709
Technology Center 3600
____________

Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JOHN A. EVANS, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–24. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Definiens
AG, which is owned by AstraZeneca. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention relates to “generating image-based patient
profiles with a list of measured values and indications for abnormalities of
those values that are outside of a given norm.” Spec. ¶ 1. Exemplary claim
1 under appeal reads as follows:
1. A method comprising:
analyzing a digital image;
detecting a group of objects in the image, wherein the
group of objects includes normal anatomical objects and
abnormal anatomical objects;
measuring a value related to the group of objects in the
image;
displaying the measured value in a patient-profile list;
indicating that the measured value falls outside a normal
range;
identifying the abnormal anatomical objects as
potentially diseased based on the measured value falling outside
the normal range;
navigating a user to a section of the digital image
containing the abnormal anatomical objects from the group of
objects when the user selects an area on a graphical user
interface that is associated with the measured value that falls
outside the normal range; and
displaying the abnormal anatomical objects on the
graphical user interface.
Appeal Br. 38 (Claims App.).
REFERENCES and REJECTIONS
Claims 1–24 stand rejected under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter. See Final Act. 2–5.
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Claims 1–5, 7–9, 11–17, and 19–24 stand rejected 35 U.S.C. § 103(a)
as being unpatentable over Collins (US 2006/0274928 A1; pub. Dec. 7,
2006), Prokoski (US 2010/0191541 A1; pub. July 29, 2010), and Patriarche
(US 2010/0195883 A1; Aug. 5, 2010). See Final Act. 5–25.
Claims 6 and 18 stand rejected 35 U.S.C. § 103(a) as being
unpatentable over Collins, Prokoski, Patriarche, and Smith (US
2008/0260218 A1; pub. Oct. 23, 2008). See Final Act. 25–26.
Claim 10 stands rejected 35 U.S.C. § 103(a) as being unpatentable
over Collins, Prokoski, Patriarche, and Gholap (US 2005/0136509 A1; pub.
June 23, 2005). See Final Act. 26.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner errs. We are persuaded the Examiner erred in
rejecting the claims under 35 U.S.C. § 101 for being directed to patent-
ineligible subject matter. We are also persuaded the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a) as obvious in view of the cited
references.
REJECTION OF CLAIMS UNDER § 101
Principles of Law
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
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Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “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.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “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.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
In January 2019, the USPTO published revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.
Arguments
The Examiner finds the claims recite method steps include analyzing a
data image related to a group of anatomical objects by measuring certain
values related to the objects and displaying the objects that are identified to
be abnormal. Non-Final Act. 2–3. The Examiner relies on the Court
decision in SmartGene2 and Cyberfone3 and concludes the claimed steps are
directed to an “abstract idea of using categories to organize, store and
transmit information.” Non-Final Act. 3. Additionally, the Examiner finds:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements amount to no more
than generic computer components that serve to merely link the
abstract idea to a particular technological environment (i.e.
databases, data analysis servers & graphical user interface)
performing routine and conventional activities that are well-
understood in the industry (i.e. selecting data, presenting data,
comparing data, analyzing data, etc.). Applicant’s specification
describes conventional hardware for implementing the above
described functions including databases, data analysis servers &
graphical user interface. ([35-44]) The claims do not amount

2 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed.
Cir. 2014).
3 Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App’x 988
(Fed. Cir. 2014).
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to significantly more than the underlying abstract idea of
collecting and comparing known information.
Non-Final Act. 4.
Appellant contends the Examiner erred because, given the specific
limitations in the claims relating to “identifying diseased tissue (such as
cancerous anatomical objects) and navigating a user to the section of a
digital image that contains the diseased tissue,” the claims “are not simply
directed to manipulating information on a computer without performing
more than well-understood, routine, conventional activity previously
engaged in by researchers in the field.” Appeal Br. 9–10 (citing Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)). Appellant further argues:
The recited diagnostic method is significantly more than simply
using a computer to perform a series of mental steps that
physicians have regularly performed in their heads. It is not
possible in a mental step for a physician to measure values
related to groups of anatomical objects in an image and then to
identify those objects whose measured values fall outside a
defined range. [A] pathologist can manually inspect an image
of a tissue sample at low resolution and then examine only
those areas at high resolution that look interesting at the lower
resolution. This manual inspection necessarily overlooks
important data and leads to errors in diagnosis. If a pathologist
were to search an entire tissue sample manually at high
resolution, it would take too long, would result in inconsistent
recording of the manual observations, complex statistical
patterns would not be recognized, and any resulting diagnosis
would be less accurate. (See Specification, ¶[0053]).
Appeal Br. 10.
Finally, Appellant argues the Examiner erred in describing the
additional element in the claim as “generic computer functions” because
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“[t]he claims recite steps that are linked to the particular scientific
environment of diagnosing diseased and cancerous anatomical objects in an
image of a patient’s tissue by measuring those objects in the image and then
locating those diseased objects in the image for the user, such as a
physician.” See Appeal Br. 12.
Step 2A, Prong One – Recited Judicial Exception
Step 2A of the Revised Guidance is a two-prong inquiry. In Prong
One we evaluate whether the claim recites a judicial exception. For abstract
ideas, Prong One represents a change as compared to prior guidance because
we here determine whether the claim recites mathematical concepts, certain
methods of organizing human activity, or mental processes (concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).
We conclude at least the following limitation of claim 1 recites a
mental process that practically could be performed via pen and paper or in a
person’s mind:
analyzing a digital image;

detecting a group of objects in the image, . . .;

measuring a value related to the group of objects in the image;

indicating that the measured value falls outside a normal range;

identifying the abnormal anatomical objects as potentially
diseased based on the measured value falling outside the normal
range;
Appeal Br. 38 (Claims App.). Other than reciting “navigating the user to a
section of the digital image . . . ; and displaying the abnormal anatomical
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objects on the graphical user interface,” the claim involves “an observation,
evaluation, judgment, opinion” and includes nothing that could not be
performed manually and in the human mind. Similar limitations are recited
in claims 20 and 24 (reciting steps similar to those in claim 1) and claim 14
(reciting a system for generating the images, a database for storing the
images, a data analysis server and a graphical user interface in addition for
performing the functionalities addressed above in claim 1).
Because we conclude the independent claims recite an abstract idea,
the claims require further analysis for a practical application of the judicial
exception.
Step 2A, Prong Two –Practical Application
If a claim recites a judicial exception, in Prong Two we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
In addition to the abstract steps recited in the limitations listed above,
claim 1 further recites:
navigating a user to a section of the digital image containing the
abnormal anatomical objects from the group of objects when
the user selects an area on a graphical user interface that is
associated with the measured value that falls outside the normal
range; and
displaying the abnormal anatomical objects on the graphical
user interface.
Appeal Br. 38 (Claims App.). Although we agree with the Examiner that the
claims relate to a diagnosis process in the medical field, which relies on
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determining whether the measured values are within a specific/normal range
or fall outside that range (Ans. 7), Appellant’s Specification describes the
steps taken by the computer-aided pathology (CAP) system for creating
tissue-based patient profiles (TPPs), which are “organized hierarchically and
divided into classified regions.” Spec. ¶¶ 44–45. The disclosed process
responds to the need for comprehensively collecting the sizes of objects,
wherein “the comprehensive measurement of objects in a CT scan or in a
scan of a tissue sample cannot be performed manually.” Spec. ¶ 40.
Additionally, Appellant’s disclosure describes the benefits of the CAP as
follows:
Computer-aided pathology provides at least three benefits.
First, the TPPs quantify the analyzed parameters, and the
quantification allows an objectification of the evaluation.
Second, the problem of finding the “needle in the haystack” is
solved or at least drastically reduced. Third, complex tissue
profiles allow for a better diagnosis than tissue classifications or
evaluations with mostly only one (a grading value) or in some
cases only a few values being presented.
Spec. ¶ 46.
Considering claim 1 as a whole, the above-mentioned limitations and
the final steps of “identifying the abnormal anatomical objects as potentially
diseased based on the measured value falling outside the normal range” and
“navigating a user to a section of the digital image containing the abnormal
anatomical objects from the group of objects when the user selects an area
on a graphical user interface . . .,” the recited identifying and displaying
steps do “integrate[] a judicial exception into a practical application [in that
they] apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit[ation] on the judicial exception, such that the claim is more
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than a drafting effort designed to monopolize the judicial exception.”
Revised Guidance at 53. Specifically, the additional elements recite a
specific manner in which doctors can identify the abnormal anatomical
objects as potentially diseased based on the measured values that fall outside
the normal range, or the “(fingerprint) associated with a particular disease.”
See Reply Br. 6; see also MPEP 2106.05(c), (e). In fact, the recited
“identifying” and “navigating” steps are the types of functions more typical
of computer operations, as opposed to human activity. The human analogy
equivalent would be an individual performing all the measurements,
indicating and identifying the measurements that fall outside the normal
range, and navigating the user to a section of the image containing the
abnormal anatomical objects, which is plausible, but far-fetched given the
technical nature of the measurements and presenting the data required in the
claimed steps in light of the Specification.
In summary, the above-discussed limitations result in identifying
particular anatomical objects that fit a pattern of measured values associated
with a particular disease, and amount to more than the mere manipulation of
data. See MPEP 2106.05(c), (e). (“Particular Transformation” and “Other
Meaningful Limitations”). Thus, we conclude that claim 1 recites additional
elements that integrate the abstract idea into a practical application. Claims
14, 20, and 24 similarly integrate the abstract idea into a practical
application. Because claims 1, 14, 20, and 24 integrate the recited judicial
exception into a practical application, they are not “directed to” a judicial
exception and, therefore, our inquiry ends. For these reasons, under the
Revised Guidance, we reverse the Examiner’s § 101 rejection of
independent claims 1, 14, 20, and 24, as well as the Examiner’s rejection of
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dependent claims 2–13, 15–19, and 21–23, which stand with the independent
claims from which they depend.
REJECTION OF CLAIMS UNDER § 103
First, Appellant contends Collins does not disclose identifying
abnormal anatomical objects based on a measured value outside a normal
range, and instead “determines texture patterns of lesions in breast cancer
based on the BI-RADS lexicon (breast imaging reporting and data system).”
Appeal Br. 14. According to Appellant, “Collins does not distinguish
‘normal’ lesions from abnormal lesions based on a measured value for the
abnormal lesions falling outside a ‘normal’ range. All lesions are abnormal
and potentially diseased.” Appeal Br. 14–15 (citing Collins, ¶ 55). Second,
Appellant contends Patriarche also fails to detect anatomical objects and
merely identifies “types of tissues.” Appeal Br. 15 (citing Patriarche ¶¶ 16,
25, 26, 78). Lastly, Appellant contends Patriarche fails to teach the
navigating step that identifies abnormal anatomical objects when the user
selects measured values outside the normal range. Appeal Br. 17.
The Examiner responds that, based on the broadest reasonable
interpretation of the claims, Patriarche teaches the recited anatomical objects
as the target tissue. Ans. 10 (citing Patriarche ¶¶ 24, 135). Additionally, the
Examiner explains:
The Examiner points out Applicants’ statements in support of
this argument are erred because “anatomical” is defined as “the
structure of organisms” & the definition of “lesion” is “Any of
various pathological or traumatic changes in a bodily organ or
tissue, including tumors, ulcers, sores and wounds” (see:
Merriam-Webster Dictionary & American Heritage Dictionary).
Therefore by definition lesions & tissue are anatomical objects.
In addition, Applicant’s erred statement continues saying
“lesions are not anatomical objects with a measured value that
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has a normal range”, however Examiner points out that said
“Patriarche” reference specifically discloses steps “. . . to
separate disease related changes from non-disease related
changes” utilizing “Significant Region Detection/Identification”
means (see: Patriarche [135-137]). Therefore separating
identified tissue as “disease” or “non-disease” is a specific cited
example teaching “abnormal” “anatomical object”.
Ans. 10–11.
We do not agree with the Examiner’s claim interpretation and
conclusion. As argued by Appellant (Reply Br. 12), Patriarche does not
identify normal and abnormal anatomical objects and instead, is concerned
with changes in the target tissue in a diseased organ, such as a lesion, and
identifying the disease-related boundaries and changes. See Patriarche Abs.,
¶¶ 24, 135. In other words, as stated by Appellant, “Patriarche does not
detect and identify normal anatomical objects and abnormal anatomical
objects but rather only normal tissue types and abnormal tissue types.
Lesions are identified in Patriarche as various abnormal tissue types.” Reply
Br. 12.
Therefore, we agree with Appellant that identifying the target tissue in
Patriarche is not related to the recited “detecting normal anatomical objects
and abnormal anatomical objects.” See Reply Br. 12–14. Therefore, we do
not sustain the rejection of claim 1, independent claims 14, 20, and 24,
which recite similar features, or the remaining claims dependent therefrom.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–24 under
35 U.S.C. § 101.
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We reverse the Examiner’s decision rejecting claims 1–24 under
35 U.S.C. § 103(a).
In summary:
Claims
Rejected
Basis  Affirmed Reversed
1–24 § 101   1–24
1–24 § 103 1–24
Overall Outcome 1–24

REVERSED