Holger Schmitt et al.

Patent Trials and Appeals Board

Nov 19, 2019

14396407 - (D) (P.T.A.B. Nov. 19, 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.
14/396,407 10/23/2014 Holger Schmitt 2012P00316WOUS 1627
24737 7590 11/19/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
CLOW, LORI A
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
11/19/2019 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):
katelyn.mulroy@philips.com
marianne.fox@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 HOLGER SCHMITT, PETER FORTHMANN,
and MICHAEL GRASS

Appeal 2019-000338
Application 14/396,407
Technology Center 1600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
DAVID COTTA, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as reciting
patent ineligible subject matter. Pursuant to 35 U.S.C. § 134(a), Appellant1
appeals from the Examiner’s decision to reject the claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 Koninklijke
Philips N.V., Eindhoven, NL. Appeal Br. 2.
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STATEMENT OF THE CASE
Claims 1–26 stand finally rejected under 35 U.S.C. § 101 as directed
to a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more. Final Act. 3; Ans. 8.2
Independent claim 1 is representative and reproduced below (for
reference, bracketed numbers have been added):
1. A method, comprising:
[1] determining at least one characteristic about a
stenosis in a vessel of a patient from image data of the stenosis,
wherein the image data is generated by at least one imaging
system selected from a group consisting of a computed
tomography (CT) imaging system, a three dimensional (3D)
rotational X-ray system and a magnetic resonance imaging
(MRI) system;
[2] mapping the at least one characteristic to [2a] a pre-
defined stenosis characteristic to fractional flow reserve value
look up table;
[3] identifying the fractional flow reserve value in the
look up table corresponding to the at least one characteristic,
wherein [3a] the at least one characteristic about a stenosis in a
vessel of a patient comprises at least one selected from a group
consisting of: a length of the stenosis, a diameter of the
stenosis, a vessel curvature, a distance of the stenosis to a
branching point, and a vessel type;
[4] visually presenting the image data and the identified
fractional flow reserve value on an output device; and
[5] wherein each step of the method is performed by a
configured processor.

2 Rejections under §§ 112, 102, and 103 were withdrawn in the Examiner’s
Answer. Ans. 8.
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PRINCIPLES OF LAW
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs, Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If it is determined that the claims are directed to an ineligible concept, then
the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. The Court explained that
this step involves
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.’
Alice, 573 U.S. at 217–18 (citing from Mayo, 566 U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
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The PTO has published revised guidance on the application of 35
U.S.C. § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
(“2019 Eligibility Guidance”). This guidance provides additional direction
on how to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Guidelines, looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
2019 Guidelines instructs us to determine whether there is a claimed
inventive concept to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. 84 Fed. Reg. 56. In
making this determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” 84 Fed. Reg. 56
(footnote omitted).
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With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101. As explained in more detail below, we
conclude that the claims are directed to patent-eligible subject matter.

Step 2A, Prong One
In Step 2A, Prong One, of the 2019 Guidelines, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
Step [1] of claim 1 recites “determining at least one characteristic
about a stenosis in a vessel of a patient from image data of the stenosis.”
The recited step of “determining” a characteristic about stenosis falls into the
mental process grouping because, as defined in the 2019 Guidelines, it is an
“observation, evaluation, judgement, opinion” that can be “performed in the
human mind.” 84 Fed. Reg. 52.
Step [2] of “mapping” the characteristic to [2a] “a pre-defined stenosis
characteristic to fractional flow reserve value look up table” is also a mental
process for the same reason as step [1], namely, it can be performed in the
human mind, where a human looks for the characteristic in the image data
and then refers to the “look up table” to find it from the “pre-defined” list.
In step [3], the “fractional flow reserve value” that corresponds to the
characteristic is identified in the look up table. This step is also a mental
process because a human can refer to the table and search it visually to find
the “fractional flow reserve value” and thus this is a step that can be
“performed in the human mind.” 84 Fed. Reg. 52.
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The “fractional flow reserve value” (“FFR”) is defined in the
Specification as “a measurement of a pressure difference value across vessel
stenosis, and the FFR value has been used to determine the likelihood that
the stenosis impedes oxygen delivery to the heart muscle. Generally, an
FFR value expresses the maximal flow down a vessel in the presence of a
stenosis compared to the maximal flow in the hypothetical absence of the
stenosis.” Spec. 1:8–12. FFR represents a natural property of a blood vessel
and the identification of this value, and its correlation with [3a] a
characteristic of stenosis is therefore a law of nature or natural phenomena
and a judicial exception to patent eligibility.
The claim further requires [4] “visually presenting the image data and
the identified fractional flow reserve value on an output device.” This step
does not appear to fall into any of the groupings identified in the 2019
Guidelines as an abstract idea: it is not (a) a mathematical concept because
it does not recite an equation or formula; it does not (b) organize human
activity; and it is not (c) a mental process because the visual presentation of
the image data is presented to a output device, and therefore cannot be
performed wholly in the human mind.
All the steps are performed by a “configured processor,” which we
understand to be a computer because the Specification describes it as
executing computer readable instructions stored in a computer readable
memory (Spec. 4:16–16–18; 8:6–8). However, while the steps are
performed on a computer, steps [1]–[3] still constitute abstract ideas,
namely, mental processes performed in the human mind. BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir.
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2016) (“An abstract idea on ‘an Internet computer network’ or on a generic
computer is still an abstract idea”).
In sum, we find that claims recite judicial exceptions to patent
eligibility, and we therefore proceed to Step 2A, Prong 2 of the analysis to
determine whether the abstract ideas are integrated into a practical
application.
Step 2A, Prong Two
Under Prong Two of Step 2A, when determining whether the
exception is integrated into a practical application, as per the Mayo/Alice
framework, we must look at the claim elements individually and “as an
ordered combination” to determine whether the additional elements integrate
the recited abstract idea into a practical application.
Appellant argues that the claimed method is an improvement in
computer-related technology, one of the categories of practical applications
specifically listed in the 2019 Guidelines. 84 Fed. Reg. 55.
Appellant cites to McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1313 (Fed. Cir. 2016) in support of its argument that the claimed
subject matter is not directed to a judicial exception.
In McRO, the claims were directed to a method for automating 3-D
animator tasks “to produce accurate and realistic lip synchronization and
facial expressions in animated characters” that previously could only be
produced by human animators. McRO, 837 F.3d at 1307. The steps of the
claims comprised performing manipulations on “output morph weights” . . .
to produce lip synchronization and facial expression control of said animated
characters.” Id. at 1308. While the claims involved the manipulation of
data, e.g., generating morph weight sets to animate lip and facial expressions
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of three dimensional characters, the court found that “the automation goes
beyond merely ‘organizing [existing] information into a new form’ [as in
Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758
F.3d 1344, 1348 (2014)], or carrying out a fundamental economic practice.”
McRO, 837 F.3d at 1315. Instead, the court found that the “claimed process
uses a combined order of specific rules that renders information into a
specific format that is then used and applied to create desired results: a
sequence of synchronized, animated characters.” Id. The court found that
the claims did not “simply use a computer as a tool to automate conventional
activity,” but instead were an improvement to computer animation. Id.
The rejected claims in this case are different from those in McRO.
The only requirement of claim 1 is that FFR value obtained from the look up
table in step [3] is presented on an output device. The information is not
rendered into a format that enabled an improvement to a technology as in the
McRO claims, but rather only requires that information from the look up
table is displayed on an output device, without acting on the information by
specific rules. We reach this conclusion even if the claim required the FFR
value to be displayed on the “image data” recited in [4] because displaying
information on an image is generic and does not constitute a specific
improvement to a technology.
Our conclusion is consistent with Enfish, LLC v. Microsoft
Corporation, 822 F.3d 1327 (Fed. Cir. 2016). In Enfish, the claims
addressed by the court were directed to a data storage and retrieval system
for a computer system that comprised a logical table including logical rows
and logical columns for indexing data in the table. Enfish, 822 F.3d at 1336.
The court referred to the logical table as a “self-referential table” and found
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that the table functioned differently from a conventional database and
provided “a specific type of data structure designed to improve the way a
computer stores and retrieves data in memory.” Id. at 1336, 1339.
In this case, while the claims involve a “look up” table (step [3]), this
table does not improve the way that a computer functions as it did in Enfish,
but rather it allows the FFR value to be determined non-invasively (Spec.
1:26–28.), for example, “using a synthetic software artery model(s)” (Spec.
4:2–3) for subsequent output, rather than applying it to improve a
technology (e.g. to improve a computer’s function). Thus, the table in claim
1 embodies the natural relationship between a stenosis characteristic and an
FFR value, but does not apply that relationship to any practical application.
This cases is distinguishable from Diamond v. Diehr, 450 U.S. 175
(1981). In Diehr, the claims were directed to a method of operating a
rubber-molding press to mold a compound by curing it in a mold cavity.
Application of Diehr, 602 F.2d 982, 983–84 (CCPA 1979). The temperature
in the mold during the rubber-molding process was constantly determined
and provided to a digital computer. Id. The computer calculated the
Arrhenius equation for the reaction time during the cure to determine when
the compound was cured and to automatically open the press. Id. Although
the claim recited a mathematical algorithm, the Arrhenius equation, the
Court held that the claim was eligible for a patent.
[W]hen a claim containing a mathematical formula implements
or applies that formula in a structure or process which, when
considered as a whole, is performing a function which the
patent laws were designed to protect (e.g., transforming or
reducing an article to a different state or thing), then the claim
satisfies the requirements of § 101.
Diehr, 450 U.S. at 192–93.
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In this case, the look up table recited in [2] and [3] of the claim is not
used to control a process as the formula was in Diehr. A FFR value is
identified from the table and displayed, but the claims do not require that it
be used in any way to accomplish or affect how a process is carried out. The
display of the FFR value does not place a meaningful limit on the abstract
idea. 84 Fed. Reg. 54.
In Finjan, Inc. v. Blue Coat Sys., 879 F.3d 1299, 1305 (Fed. Cir.
2018), the court found claims to be patent-eligible because “the method of
claim 1 employs a new kind of file that enables a computer security system
to do things it could not do before.”
Rejected claim 1 does not employ computer functionality to achieve a
useful improvement as in Finjan and Enfish. None of steps [1]–[4] involve
improving the way a computer operates. Rather, the purpose of the abstract
ideas recited in the claims is to improve the approach for determining a FFR
value for a stenosis of a vessel (Spec. 2:7–8). The steps are performed on a
generic computer, using the computer as a computing device without
affecting its functionality. Likewise, Appellant’s argument that Core
Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir.
2018) “changed the landscape of the 101 analysis again and taught that an
improvement to the qualifying computer functionality” may be patent-
eligible (Appeal Br. 23) is inapplicable because an improvement to computer
functionality is not recited in claim 1.
Appellant further argues that the “claimed aspects provide an
improvement to the technical field of generating and/or utilizing finding
unique identifiers for medical findings, including providing the advantages
discussed above, via executing the series of process ‘rules’ or steps as
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defined by the claims.” Appeal Br. 7. Appellant contends that the claimed
steps “act in concert” and “integrate specifically-claimed rules described
above as ‘building blocks’ into ‘something more,’” which Appellant
describes as the “the structure of the limited rules of the inventions claimed”
into “a specific implementation.” Id. at 8. The “limited rules” of the claim,
as discussed in Step 2, are the abstract ideas of determining specific
characteristics of stenosis from image data and then in steps [2] and [3]
looking up the corresponding value in a lookup table. These are not the
same type of rules identified in McRO, 837 F.3d at 1308 which involved
specific manipulations (e.g., “generating an intermediate stream of output
morph weight sets and a plurality of transition parameters between two
adjacent morph weight sets by evaluating said plurality of sub-sequences
against said first set of rules”) to produce lip synchronization and facial
expressions. Rather, the clamed steps are recited in a wholly generic way,
namely, [1] determining characteristics about stenosis without explaining
how they are determined; [2] mapping characteristics without claiming a
specific process as to how the mapping is accomplished; [3] identifying a
FFR value from a look up table, where the claim does not recite how the
look up table is populated with the information or recite a specific process as
to how the identification is made; and [4] visually presenting the
information, but with no specific requirement of the visual form of the
information or how the results of the previous steps shape the format of the
presented information.
Appellant argues, citing Synopsys, Inc. v. Mentor Graphics
Corporation, 839 F.3d 1138 (2016), that because the claims require “the use
of processors, and/or computer readable storage medium having computer
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readable instructions encoded therewith . . . the claims must be construed as
requiring a computer and an imaging system with the recited modalities to
perform the recited steps, rather than as a series of ‘mental steps.’” Appeal
Br. 6–7. This argument is not persuasive. The Synopsys court expressly
stated “we need not decide whether a computer-implemented version of the
invention would not be “directed to” an abstract idea.” Synopsis, 839 F.3d at
1149. In contrast, in BASCOM Glob., 827 F.3d at1348, the court stated that
an abstract idea performed on a computer is still an abstract idea. The
rejected claim, as a whole, describes how to generally apply or execute the
concept as a “computer-implemented method.” In other words, the claim
merely links the recited abstract idea generally to a computer environment,
and thus does no more than represent a drafting effort to monopolize the
abstract idea in a computer implementation. Guidance at 55.
Appellant also states the claims should be eligible under In re Abele,
684 F.2d 902 (CCPA 1982). Appeal Br. 9. In that case, which was decided
well before Mayo and Alice, the court held that the recitation of a
mathematical algorithm in the claim did not make it ineligible for a patent
under 35 U.S.C. § 101 because it was integrated into an improved CAT scan
process. Abele, 684 F.2d at 909. Appellant has not identified in this case
how the look up table of steps [2] and [3] is integrated into the recited “at
least one imaging system,” recited in step [1]. The look up table does not
change the way the imaging is performed or the output of the imagining.
Appellant argues that the McRO “discusses the absence of preemption
in determining that the claimed invention was not ‘directed to’ a judicial
exception. Appeal Br. 8. As explained in McRO:
The preemption concern arises when the claims are not directed
to a specific invention and instead improperly monopolize “the
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basic tools of scientific and technological work.” Alice, 134
S.Ct. at 2354 (quoting Myriad, 133 S.Ct. at 2116). The abstract
idea exception has been applied to prevent patenting of claims
that abstractly cover results where “it matters not by what
process or machinery the result is accomplished.” Morse, 56
U.S. at 113; see also Mayo, 132 S.Ct. at 1301
McRO, 837 F.3d at 1314.
McRO also stated: “The concern underlying the exceptions to § 101 is
not tangibility, but preemption.” McRO, 837 F.3d at 1315.
McRO found that preemption did not apply to the automation rules
because:
The limitations in claim 1 prevent preemption of all processes
for achieving automated lip-synchronization of 3–D characters.
McRO has demonstrated that motion capture animation
provides an alternative process for automatically animating lip
synchronization and facial expressions.
Id.
However, in rejected claim 1, the three recited steps [1]–[3] of
determining the characteristics of stenosis from image data, and then
identifying the FFR value corresponding to the characteristic, could
essentially preempt all ways using the FFR – a natural phenomenon and law
of nature – “to determine the likelihood that the stenosis impedes oxygen
delivery to the heart muscle” and for “planning of percutaneous coronary
interventions, e.g.[,] stent placement.” Spec. 1:9–16. Moreover, even if the
claims do not tie up all ways of using the FFR to determine the likelihood of
impeded oxygen delivery, “the absence of complete preemption does
not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F3d 1371, 1379 (Fed. Cir. 2015).
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Appellant argues that the claims use specifically defined
characteristics for stenosis and specifically defined FFR value look up table.
Appeal Br. 6. However, we do not see how these specific characteristics and
values – which are natural properties of the vessels – make the process any
more specific. The steps remain the same regardless of what stenosis
characteristics are identified and what FFR values are determined to
correspond to these values. These steps result in the display of the natural
FFR property of the vessel that corresponds to certain stenosis
characteristics and thus is an expression of a natural law.
Visually presenting the information on an output device in step [4] is
the type of extra-solution activity identified in the 2019 Guidelines as
insufficient to integrate the judicial exceptions into a practical application.
55 Fed. Reg. 84. Appellant has not established that the display of the result
is an improvement to a technology.

Step 2B
As explained in the 2019 Guidelines, if the exception is not integrated
into a practical application, then Step 2B of the 2109 Guidelines, as in the
Mayo/Alice framework, asks whether there is an inventive concept. To
determine whether an unpatentable law of nature has been transformed “into
a patent-eligible application of such law,” the Court in Mayo held that the
claim as a whole must be examined to determine whether it “also contain[s]
other elements or a combination of elements, sometimes referred to as an
‘inventive concept,’ sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the natural law itself.” Mayo, 566
U.S. at 72–73.
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Appellant identified the determination of the “fractional flow reserve
value for a stenosis in a vessel based on image data” as significantly more
than the judicial exceptions recited in the claims. Appeal Br. 7. Appellant
also stated that “the claims describe a specific way to solve a problem with
determining an FFR index as the claims provide a way to identify a
fractional flow reserve index without having to perform a time consuming
computational fluid dynamic simulation.” Reply Br. 3. The additional
element of the claims cited by Appellant is the look up table which is used to
identify the FFR value and its correspondence to the characteristic about
stenosis. This step, as explained above, recites an abstract idea and a law of
natural and therefore, it is our understanding cannot serve as basis for an
inventive step. As held in Parker v. Flook, 437 U.S. 584, 591, “[t]he process
itself, not merely the mathematical algorithm, must be new and useful.”
Unlike in Rapid Litigation Management Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1049 (Fed. Cir. 2016), where the claims were “directed to a new and
useful method of preserving hepatocyte cells,” the claims here are “simply
an observation or detection.”

Summary
For the foregoing reasons, the rejection of claim 1 is affirmed. Claims
2–26 fall with claim 1 because separate arguments for their patentability
were not provided. 37 C.F.R. § 41.37(c)(1)(iv).

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–26 101 Eligibility 1–26

TIME PERIOD
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)(iv).

AFFIRMED