Jochen Peters et al.

Patent Trials and Appeals Board

Mar 30, 2020

14651705 - (D) (P.T.A.B. Mar. 30, 2020)

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.
14/651,705 06/12/2015 Jochen PETERS 2012P01578WOUS 5930
24737 7590 03/30/2020
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
03/30/2020 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 JOCHEN PETERS,
JUERGEN WEESE, and HOLGER SCHMITT
__________

Appeal 2019-002661
Application 14/651,705
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, 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 and 4–20. 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 states that the real party in interest is Koninklijke
Philips N.V., Eindhoven, NL. Appeal Br. 2.
Appeal 2019-002661
Application 14/651,705

2
STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 1 and 4–20, under 35 U.S.C. § 101, as being directed to
subject matter not eligible for patenting (Ans. 3–9);
(2) Claims 1, 4–7, 9–13, and 15–20, under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Suresh2 (Ans. 9–12);
(3) Claim 8, under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Suresh and Paul3 (Ans. 13–16); and
(4) Claim 14, under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Suresh and Zhu4 (Ans. 16–18).
Appellant’s claim 5 is representative and reads as follows:
5. A computer implemented method of simulating blood
flow through a cardiovascular structure close to the heart of a
patient, said method comprising:
estimating a cardiac ejection output per heart stroke
based on a volume of at least one heart chamber of said patient
in different filling states at two or more points in time;
deriving at least one patient-specific boundary condition
for the flow through said cardiovascular structure from the
cardiac ejection output per heart stroke;
simulating a blood flow through a volumetric mesh of
said cardiovascular structure under consideration of said
patient-specific boundary conditions, to visualize said blood

2 US 2007/0014452 A1 (published Jan. 18, 2007)
3 Asit K. Paul, MBBS, PhD & Hani A. Nabi, MD, PhD, Gated Myocardial
Perfusion SPECT: Basic Principles, Technical Aspects, and Clinical
Applications, 32 J. NUCL. MED. TECHNOL. 179–187 (2004).
4 Yanong Zhu et al., A Virtual Ultrasound Imaging System for the
Simulation of Ultrasound-Guided Needle Insertion Procedures,
PROCEEDINGS MEDICAL IMAGE UNDERSTANDING AND ANALYSIS 61–65
(2006).
Appeal 2019-002661
Application 14/651,705

3
flow or to derive at least one physiological parameter of said
patient, wherein said volumetric mesh of said cardiovascular
structure is based on a digital image, wherein the digital image
is a computed tomography image, a magnetic resonance image,
or an ultrasonic image of said cardiovascular structure.
Appeal Br. 9–10.
35 U.S.C. § 101—
ELIGIBILITY FOR PATENTING
The Examiner’s Rejection
The Examiner determined that, when viewed in light of the
Specification, each of the steps of the process recited in representative
claim 5 “are mathematical calculations . . . [and] are also interpreted to be
steps of organizing information through mathematical manipulations.” Ans.
4 (citing Spec. 5).
The Examiner also determined that the steps in claim 5 were similar to
those found to be patent-ineligible judicial exceptions in Digitech Image
Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed Cir 2014),
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016),
and in TLI Communications LLC v. A.V. Automotive, LLC, 823 F.3d 607
(Fed. Cir. 2016). Ans. 5–7.
The Examiner determined that representative claim 5 did not include
additional elements sufficient to amount to significantly more than the
judicial exceptions because the CT or MRI images recited in the claim
merely specified a particular type of image data, and because claim 5’s steps
“that are intended ‘to visualize said blood flow’ are merely steps of
‘applying’ the judicial exception without imparting a meaningful
application.” Ans. 9. Therefore, the Examiner concluded, “the claims are
non-statutory.” Id.
Appeal 2019-002661
Application 14/651,705

4
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories., Inc., 566 U.S. 66
(2012) and Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski v. Kappos, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
Appeal 2019-002661
Application 14/651,705

5
Early in 2019, the PTO published revised guidance on the application
of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) (“Memorandum” or “2019 Office
Guidance” or “Office Guidance”).5 In light of comments received in
response to the Office Guidance, the PTO subsequently issued the October
2019 Patent Eligibility Guidance Update (“October 2019 Update”).6
Following the Office Guidance and the October 2019 Update, under
Revised Step 2A, we first look to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look, under Step 2B of the
Office Guidance, to whether the claim:
(3) adds specific limitations beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.

5 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf.
6 https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf.
Appeal 2019-002661
Application 14/651,705

6
Analysis
Office Guidance—Revised Step 2A, Prong 1
Appellant’s claim 5 is representative of the claims subject to this
rejection. Applying Revised Step 2A, Prong 1, of the 2019 Office Guidance,
we agree with the Examiner that claim 5 recites judicial exceptions, in the
form of mathematical concepts, which are abstract ideas. See Office
Guidance (84 Fed. Reg. at 52 (abstract ideas include “(a) Mathematical
concepts—mathematical relationships, mathematical formulas or equations,
mathematical calculations”)).
Claim 5 recites “[a] computer implemented method of simulating
blood flow through a cardiovascular structure close to the heart of a patient.”
Appeal Br. 9.
The first step in claim 5’s process is “estimating a cardiac ejection
output per heart stroke based on a volume of at least one heart chamber of
said patient in different filling states at two or more points in time.” Id. at
10 (emphasis added). As explained in the Specification, estimating cardiac
ejection output “can be calculated from (at least) two images of the LV [left
ventricle] in maximum and minimum filling state (e.g., end of diastole, end
of systole).” Spec. 4.
Accordingly, giving claim 5 its broadest reasonable interpretation in
light of the Specification, the step of estimating cardiac ejection output
“based on the volume” (Appeal Br. 10) of a heart chamber in different filling
states at two or more points in time necessarily involves determining the
chamber’s volume amounts at least at two different times, and calculating
the difference between those volume amounts. We agree with the Examiner
that claim 5’s estimating step, therefore, recites a mathematical calculation,
Appeal 2019-002661
Application 14/651,705

7
which is an abstract idea. See Office Guidance (84 Fed. Reg. at 52
(mathematical concepts include mathematical relationships and
mathematical calculations)).
The second step in representative claim 5’s process is “deriving at
least one patient-specific boundary condition for the flow through said
cardiovascular structure from the cardiac ejection output per heart stroke.”
Appeal Br. 10. Relevant to claim 5’s deriving step, the Specification
discloses as follows:
[T]he at least one patient-specific boundary condition may be
derived by estimating a flow profile across the ventricular
outflow tract and its temporal behavior. Hence, (flow)
boundary conditions (e.g. to estimate the pressure drop across
the target cardiovascular structure via (CFD [computational
fluid dynamics] or FSI [fluid-solid interaction]) simulation) can
be determined based on the ventricular ejection fraction by
image analysis.
Spec. 3.
Thus, giving claim 5 its broadest reasonable interpretation in light of
the Specification, the step of deriving at least one patient-specific boundary
condition for the flow through a cardiovascular structure “from the cardiac
ejection output per heart stroke” (Appeal Br. 10) involves using the
calculated ejection fraction in computations, i.e., calculations, performed in
accordance with computational fluid dynamics or fluid-solid interaction
simulation. We agree with the Examiner that claim 5’s deriving step,
therefore, recites a mathematical calculation, which is an abstract idea. See
Office Guidance (84 Fed. Reg. at 52 (mathematical concepts include
mathematical relationships and mathematical calculations)).
The third and final step in representative claim 5’s process is
“simulating a blood flow through a volumetric mesh of said cardiovascular
Appeal 2019-002661
Application 14/651,705

8
structure under consideration of said patient-specific boundary conditions.”
Appeal Br. 10. Claim 5 requires the volumetric mesh of the cardiovascular
structure to be “based on a digital image, wherein the digital image is a
computed tomography image, a magnetic resonance image, or an ultrasonic
image of said cardiovascular structure.” Id.
Similar to claim 5’s deriving step, the Specification explains that
calculations, performed in accordance with computational fluid dynamics or
fluid-solid interaction simulation, are used to perform claim 5’s step of
simulating blood flow through a volumetric mesh. See Spec. 5 (disclosing
use of CT images to generate volumetric mesh “for computational fluid
dynamics (CFD) or fluid-solid interaction (FSI) or other types of
simulations”). Accordingly, we agree with the Examiner that, when given
its broadest reasonable interpretation in light of the Specification, claim 5’s
simulating step recites a mathematical calculation, which is an abstract idea.
See Office Guidance (84 Fed. Reg. at 52 (mathematical concepts include
mathematical relationships and mathematical calculations)).
In sum, for the reasons discussed above, Appellant does not persuade
us that, when claim 5 is read in context with the Specification, claim 5 fails
to recite mathematical concepts. See Reply Br. 3. To the contrary, for the
reasons discussed, we agree with the Examiner that when claim 5 is read in
light of the Specification, each of the steps in the process of claim 5 recites a
judicial exception in the form of a mathematical concept, which is an
abstract idea.
Office Guidance—Revised Step 2A, Prong 2
Having determined under Revised Step 2A, Prong 1, of the 2019
Office Guidance that Appellant’s claim 5 recites judicial exceptions in the
Appeal 2019-002661
Application 14/651,705

9
form of mathematical concepts, we turn to Revised Step 2A, Prong 2, of the
Office Guidance to determine whether claim 1 recites additional elements
that integrate the judicial exceptions into a practical application. See Office
Guidance (84 Fed. Reg. at 54–55).
We find that Appellant’s claim 5 does not recite additional elements
sufficient to integrate the judicial exceptions into a practical application.
Although the preamble of claim 5 states that the claimed process is
implemented by a computer, the body of the claim does not recite any
specific computer elements. See Appeal Br. 9–10. Accordingly, we are not
persuaded that claim 5’s preamble recitation of computer implementation is
sufficient to integrate the claimed process into a practical application. See
Office Guidance (84 Fed. Reg. at 55 (example in which a judicial exception
is not integrated into a practical application includes situation in which claim
“merely includes instructions to implement an abstract idea on a computer,
or merely uses a computer as a tool to perform an abstract idea”).
We acknowledge claim 5’s recitation that the blood flow simulating
step is “to visualize said blood flow or to derive at least one physiological
parameter of said patient.” Appeal Br. 10. Although this recitation may
invoke a result or purpose of performing the claimed process, this recitation
does not require performance of any active steps, beyond the expressly
recited steps discussed above. We are not persuaded, therefore, that claim
5’s recitation that the process steps are “to visualize said blood flow or to
derive at least one physiological parameter of said patient” (Appeal Br. 10)
is sufficient to integrate the process into a practical application. See Office
Guidance (84 Fed. Reg. at 55 (example in which a judicial exception is not
integrated into a practical application includes situation in which “an
Appeal 2019-002661
Application 14/651,705

10
additional element does no more than generally link the use of a judicial
exception to a particular technological environment or field of use”).
We acknowledge claim 5’s recitation that the volumetric mesh of the
cardiovascular structure is “based on a digital image, wherein the digital
image is a computed tomography image, a magnetic resonance image, or an
ultrasonic image of said cardiovascular structure.” Appeal Br. 10. Claim 5,
however, does not recite any active step of acquiring the digital image, nor
does the claim recite any specific elements of any of the image-generating
devices. Thus, claim 5’s requirement for basing the volumetric mesh on a
digital image is not sufficient to integrate the claimed process into a practical
application. See Office Guidance (84 Fed. Reg. at 55 (judicial exception is
not integrated into a practical application where “an additional element does
no more than generally link the use of a judicial exception to a particular
technological environment or field of use”); see also id. n.31 (additional
element that merely adds insignificant extra-solution activity to a judicial
exception includes “mere data gathering such as a step of obtaining
information about credit card transactions so that the information can be
analyzed in order to detect whether the transactions were fraudulent”)).
We are not persuaded by Appellant’s contention that claim 5’s process
is an improvement to the technical field of blood flow analysis. See Appeal
Br. 3–4; Reply Br. 4–5. As noted above, the few elements recited in claim 5
beyond the abstract mathematical steps are merely generic computer features
or data gathering steps. We are not persuaded, therefore, that the few
non-abstract elements in recited claim 5 are sufficient to establish an
improvement a specific technical field. Indeed, the fact that Appellant’s
abstract mathematical process for analyzing blood flow might be
Appeal 2019-002661
Application 14/651,705

11
significantly better than other abstract mathematical processes in the art does
not demonstrate eligibility for patenting. See SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (“a claimed
improvement in a mathematical technique” held ineligible for patenting); In
re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litigation,
774 F.3d 755, 759 (Fed. Cir. 2014) (Even if Appellant “made a
‘[g]roundbreaking, innovative, or even brilliant discovery,’ . . . that is not
enough” to establish patent eligibility.) (citing Association for Molecular
Pathology v. Myriad, 569 U.S. 576, 591 (2013)).
Office Guidance—Step 2B
For the reasons discussed above, we are persuaded that Appellant’s
representative claim 5 recites judicial exceptions (abstract ideas in the form
of mathematical concepts) under Revised Step 2A, Prong 1, of the 2019
Office Guidance, and does not integrate those judicial exceptions into a
practical application under Revised Step 2A, Prong 2. Accordingly, we turn
to Step 2B of the Office Guidance to determine whether (a) claim 5 recites
specific limitations beyond the judicial exceptions that are not well-
understood, routine, or conventional in the field, or (b) whether claim 5
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See Office Guidance (84 Fed. Reg. at 56).
In the present case, as seen above, when the steps of representative
claim 5 are viewed as an ordered combination, the overall claimed process,
as a whole, is directed to an abstract mathematical process of analyzing
blood flow. As discussed above, moreover, the few elements recited in
claim 5 beyond the abstract mathematical steps are merely generic computer
Appeal 2019-002661
Application 14/651,705

12
features or image data gathering steps. We are not persuaded, therefore, that
when claim 5 is viewed as a whole, claim 5 includes specific limitations
beyond the judicial exception that are not well-understood, routine, or
conventional in the field. As explained in the 2019 Office Guidance, it is the
“additional elements recited in the claims” beyond the judicial exceptions in
the claim that must provide significantly more than the recited judicial
exception. See Office Guidance (84 Fed. Reg. at 56) (emphasis added).
Viewing the steps of claim 5’s process individually, we come to the
same conclusion. As noted above, when viewed in light of the Specification,
each of the steps employed in claim 5 for analyzing blood flow involves
mathematical processing of numbers or data. Beyond those abstract ideas,
the only specific tangible elements used in claim 5’s process are the
generically recited computer that implements the process and the digital
image. See Appeal Br. 9–10. We are not persuaded, therefore, that beyond
the recited judicial exceptions, claim 5 adds specific limitations that amount
to significantly more than the recited judicial exceptions.
We are not persuaded by Appellant’s contention that “the Office has
not cited to an express statement in the specification that demonstrates a
processor configured to perform all of the claimed steps in combination is
well-understood, routine, conventional nature of the additional element(s).”
Appeal Br. 5. Again, as explained in the 2019 Office Guidance, it is the
“additional elements recited in the claims” beyond the judicial exceptions in
the claim that must provide significantly more than the recited judicial
exception. See Office Guidance (84 Fed. Reg. at 56) (emphasis added).
Thus, the fact that a computer programmed to perform the abstract
mathematical processes recited in claim 5 might not have been known in the
Appeal 2019-002661
Application 14/651,705

13
art does not demonstrate that the Examiner erred in determining that the
elements in claim 5 beyond the abstract mathematical processes (a generic
computer and digital image) were well-understood, routine, and
conventional.
We are not persuaded by Appellant’s contention that claim 5 is similar
to the process in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1229 (Fed. Cir. 2016), which the court held to be eligible for patenting. See
Appeal Br. 4–5.
As the court explained in McRO, “[t]he 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.” McRO, 837 F.3d at 1315 (emphasis
added). In contrast, in the present case, representative claim 5 merely recites
a series of abstract computational steps to produce an abstract mathematical
model of blood flow through a particular cardiovascular structure, but does
not include any steps that apply that information in a practical way. See
Appeal Br. 9–10. And, as discussed above, the non-abstract elements in
claim 5 involve only a generic computer for performing the abstract
computational steps and a digital image. See id.
In sum, for the reasons discussed, viewing Appellant’s claim 5 as a
whole, as an ordered combination, and considering the claimed steps and
elements individually, we find that the preponderance of the evidence
supports the Examiner’s determination that claim 5 simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exceptions
recited in the claim.
Appeal 2019-002661
Application 14/651,705

14
Eligibility for Patenting—Conclusion
As discussed above, we are persuaded that Appellant’s representative
claim 5 recites judicial exceptions under Revised Step 2A, Prong 1, of the
2019 Office Guidance, and does not integrate those judicial exceptions into a
practical application under Revised Step 2A, Prong 2. As also discussed
above, we are persuaded that, to the extent claim 5 recites additional
elements beyond the judicial exceptions recited in the claim, claim 5 simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exceptions.
Accordingly, applying the principles set forth in the 2019 Office
Guidance, we find that the preponderance of the evidence supports the
Examiner’s determination that Appellant’s claim 5 is directed to subject
matter that is ineligible for patenting. We, therefore, affirm the Examiner’s
rejection of claim 5 on that ground. Claims 1, 4, and 6–20 fall with claim 5.
See 37 C.F.R. § 41.37(c)(1)(iv).
ANTICIPATION AND OBVIOUSNESS
The Examiner’s Anticipation Rejection
The Examiner rejected claims 1, 4–7, 9–13, and 15–20 as anticipated
by Suresh. Ans. 9–12. As to the disputed limitations, the Examiner cited
paragraph 21 of Suresh as describing estimation of cardiac ejection output as
recited in the claims, and paragraphs 27, 238, and 239 of Suresh as teaching
the derivation of a patient-specific boundary condition for the flow through
the analyzed cardiovascular structure. Id. at 10.
Appeal 2019-002661
Application 14/651,705

15
Analysis
We agree with Appellant that the Examiner has not shown sufficiently
that Suresh describes the step of deriving “at least one patient-specific
boundary condition for the flow through said cardiovascular structure from
the cardiac ejection output per heart stroke” recited in claims 1, 5, and 15,
the independent claims on appeal. Appeal Br. 9, 10, 11 (emphasis added).
Suresh discloses a process of generating “a computerized interactive
model of a diseased heart based on the patient data. The computerized
interactive model may include at least one feature that simulates at least one
proposed cardiac intervention treatment.” Suresh ¶ 14.
As the Examiner found, and as required by Appellant’s claims 1, 5,
and 15, Suresh describes estimating cardiac ejection output based on a heart
chamber’s volume, assessed at two different times. See id. ¶ 21.
As the Examiner found, and as required by claims 1, 5, and 15, Suresh
describes evaluating flow through a particular portion of the heart, i.e.,
through a particular “cardiovascular structure” as recited in the claims:
In an embodiment, a method of assessing blood flow in a
human heart may include providing at least two images of heart
tissue from the heart, a velocity of fluid through a portion of a
human heart and a time frame over which the images were
collected to the computer system. Fluid flow through a portion
of a human heart may be assessed by using the computer
system to assess areas on the images. One or more at least
three-dimensional images of the assessed blood flow may be
created by a computer system.
Id. ¶ 27.
As seen in paragraph 27, Suresh describes assessing blood flow from
the “velocity of fluid” through the portion of the heart being analyzed, based
an evaluation of two or more images. Id. In contrast, Appellant’s claims 1,
Appeal 2019-002661
Application 14/651,705

16
5, and 15 require the flow/boundary condition to be derived “from the
cardiac ejection output per heart stroke.” Appeal Br. 9, 10, 11. Because
Suresh describes assessing blood flow through a cardiovascular structure
from the velocity of fluid, rather than from the cardiac ejection output as
recited in Appellant’s claims, we are not persuaded that Suresh describes a
process having all of the features required by Appellant’s claims.
We have reviewed the other portions of Suresh cited by the Examiner
as describing the deriving step of Appellant’s claims. Paragraphs 237 and
238 of Suresh relate to techniques for creating a computer model of a heart
from image data, but do not mention deriving a boundary condition for flow
from cardiac ejection output recited in Appellant’s claims. See Suresh ¶¶
237–238.
We acknowledge, as the Examiner contends (Ans. 25–27), that among
the many factors used to prepare its computerized heart model, Suresh
discloses “[a]ssessing fluid flow (e.g., blood) across a portion of the heart
(e.g., the aorta) using at least some data from existing imaging and
measuring protocols (e.g., CMR)” (Suresh ¶ 191), as well as “[a]n ejection
fraction [which] may be assessed by a computer system” (id. ¶ 198).
However, the fact that Suresh’s model takes into account both flow
and cardiac ejection output does not equate to an express, or inherent,
description of a process in which a specific parameter (a patient-specific
boundary condition for the flow through an analyzed cardiovascular
structure) is derived from another specific parameter (the cardiac ejection
output per heart stroke).
It is well settled that a reference can only anticipate a claim if it
discloses all the claimed limitations “arranged or combined in the same way
Appeal 2019-002661
Application 14/651,705

17
as in the claim.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683
F.3d 1356, 1361 (Fed. Cir. 2012) (quoting Net MoneyIN, Inc. v. VeriSign,
Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008)).
In the present case, for the reasons discussed, we are not persuaded
that the Examiner has shown sufficiently that Suresh describes deriving at
least one patient-specific boundary condition for the flow through a
cardiovascular structure, from the cardiac ejection output per heart stroke, in
the same way as recited in claims 1, 5, and 15. We therefore reverse the
Examiner’s anticipation rejection of claims 1, 5, and 15, as well as their
dependent claims 4, 6, 7, 9–13, and 16–20, over Suresh.
Claims 8 and 14 both depend from claim 5, discussed above. Appeal
Br. 10, 11. In rejecting claims 8 and 14 for obviousness, the Examiner cited
Suresh as describing the limitations in claim 5, and cited Paul and Zhu as
evidence that the additional features recited in dependent claims 8 and 14
would have been obvious features of the process described in Suresh. See
Ans. 13–18. Because Paul and Zhu therefore do not remedy the
deficiencies, discussed above, in Suresh as to claim 5, we also reverse the
Examiner’s obviousness rejections of claims 8 and 14.
Appeal 2019-002661
Application 14/651,705

18
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 4–20 101 Ineligibility 1, 4–20
1, 4–7, 9–13,
15–20
102(b) Suresh 1, 4–7, 9–13,
15–20
8 103(a) Suresh, Paul 8
14 103(a) Suresh, Zhu 14
Overall
Outcome
1, 4–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED