Ryan Spilker et al.

Patent Trials and Appeals Board

Feb 10, 2021

2020002496 (P.T.A.B. Feb. 10, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/464,452 05/04/2012 Ryan Leonard Spilker 11541-0003-01000 7043
108449 7590 02/10/2021
Bookoff McAndrews, PLLC
2020 K Street NW
Suite 400
Washington, DC 20006
EXAMINER
BORIN, MICHAEL L
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
02/10/2021 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):
KRoss@bomcip.com
eofficeaction@appcoll.com
usptomail@bomcip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte RYAN LEONARD SPILKER and
CHARLES ANTHONY TAYLOR JR.
__________

Appeal 2020-002496
Application 13/464,452
Technology Center 1600
__________

Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
LILAN REN, 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 20–35, 39–41, 43–45, and 47–49. 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 Board of Trustees of the Leland
Stanford Junior University (“Stanford University”) as the real party in
interest. Appeal Br. 2.
Appeal 2020-002496
Application 13/464,452

2
STATEMENT OF THE CASE
The Specification discloses that Appellant’s invention relates to a
“computer-assisted human anatomic and physiologic modeling system used
to predict outcomes of medical intervention and further to predict changes in
physiologic function under various states, stresses, and environments and
still further to generate data for disease research or medical device design.”
Spec. 1.
The Specification discloses that Appellant’s invention “incorporates
tuning of reduced-order models of unsteady cardiovascular dynamics and, in
addition, reduced-order models that can be solved more quickly using
Fourier analysis.” Spec. 3. According to the Specification, “this novel use
of a limited set of features of the hemodynamic simulations as objectives can
give the user control over the most important aspects of the simulation and
may save computational energy.” Id.
The Specification discloses that, as compared to previous models of
cardiovascular dynamics, Appellant’s invention uses “less detailed models in
the process of tuning hemodynamic simulations . . . [which] makes this
invention most valuable when implemented in software for modeling blood
flow in three dimensions for the purposes of intervention planning.” Spec.
4.
In particular, the Specification discloses, “[p]revious work does not
describe time-varying hemodynamic models of various degrees of
complexity and their connection to one another. This aspect of this
invention, along with the automation of the tuning process, will save users
and computers significant time and effort.” Spec. 4.

Appeal 2020-002496
Application 13/464,452

3
Appellant’s claim 20 is illustrative and reads as follows:
20. A computer system for determining cardiovascular
information from patient-specific image data, to predict a
hemodynamic result of a medical intervention for a patient, the
computer system comprising:
a data storage device storing received patient-specific
image data and instructions for processing the received patient-
specific image data for determining cardiovascular information
including predictions of hemodynamic results for a patient;
and
a processing device configured to execute the stored
instructions for processing the received patient-specific image
data, the instructions executing a method comprising:
receiving patient-specific image data regarding a
geometry of an anatomical structure of the patient;
creating, based on the patient-specific image data,
a three-dimensional model representing at least a portion
of the anatomical structure of the patient, the three-
dimensional model including portions representing at
least one inlet and at least one outlet of blood flow;
determining one or more boundary condition
parameters for at least one of the at least one inlet or the
at least one outlet of the three-dimensional model;
executing, using the at least one computer system,
a three-dimensional simulation on the three-dimensional
model, based on the determined one or more boundary
condition parameters, to determine a blood flow
characteristic within the anatomical structure of the
patient;
creating, based on the executed three-dimensional
simulation, a reduced-order model that is
computationally faster than the three-dimensional model
and that represents at least part of the portion of the
anatomical structure of the patient represented by the
three-dimensional model;
Appeal 2020-002496
Application 13/464,452

4
determining a medical intervention to be simulated
using the reduced-order model; and
predicting a hemodynamic result of the medical
intervention for the patient by solving the reduced-order
model to determine an update to the blood flow
characteristic.
Appeal Br. 35–36.
The sole rejection before us for review is the Examiner’s rejection of
claims 20–35, 39–41, 43–45, and 47–49 under 35 U.S.C. § 101 as being
direct to subject matter ineligible for patenting. Final Act. 2–9 (entered
April 2, 2019).
DISCUSSION
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.”).
Appeal 2020-002496
Application 13/464,452

5
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).
Early in 2019, the USPTO published revised guidance on the
application of § 101. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (“2019 Office
Guidance” or “Office Guidance”). In light of comments received in
response to the Office Guidance, the USPTO subsequently issued the
October 2019 Patent Eligibility Guidance Update (“October 2019
Update”).2 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
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

2 https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf.
Appeal 2020-002496
Application 13/464,452

6
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 Office Guidance (84 Fed. Reg. at 56).
Analysis
Office Guidance—Revised Step 2A, Prong 1
Applying Revised Step 2A, Prong 1, of the 2019 Office Guidance, the
Examiner determined that Appellant’s claims recite judicial exceptions in
the form of mental processes as well as mathematical concepts. Final Act.
4–5. Specifically, the Examiner determined that the claims include the
following steps drawn to mental processes:
• Creating three-dimensional model and reduced-
order model (both are sets of equations)
• Executing simulation of the three-dimensional
model
• Determining parameters, such as boundary
condition parameter, blood flow parameter
• Choosing a medical condition to be simulated
• Solving reduced-order model and thereby
predicting hemodynamic result of intervention and
determining updated value of blood characteristic.
Appeal 2020-002496
Application 13/464,452

7
Final Act. 4.
Appellant contends that none of the claimed steps identified by the
Examiner can practically be performed in the human mind, as evidenced by
the fact that generating and solving models of the type recited in the claims
involve high computational costs for computers. Appeal Br. 24–27 (citing
Spec. 6);3 Reply Br. 3–4.4
The Examiner responds:
Other than reciting “processing device”, nothing in the claim
element precludes the steps from practically being performed in
the human mind. There are no specifics in the claims that the
claimed steps are clearly rooted in computer technology and are
not able to be performed in human mind. The mere nominal
recitation of a generic “processing device” does not take the
claim limitation out of the mental processes grouping. Thus,
the claims recite steps drawn to a mental process.
Ans. 3–4.
We find that Appellant has the better position. As Appellant
contends, “[i]f a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.” See Office Guidance (84 Fed.
Reg. at 52 n.14 (emphasis added)).

3 Appellant cites to ¶ 7 “of the originally filed specification.” Appeal Br. 26.
The originally filed Specification does not include paragraph numbering,
however. See generally Spec. The passages cited by Appellant appear at
page 6 of the originally filed Specification.
4 The Reply Brief does not include page numbers. We cite to the Reply
Brief as if the first page is page 1, and the remaining pages are numbered
consecutively.
Appeal 2020-002496
Application 13/464,452

8
We agree with the Examiner that, aside from the generically recited
processing device, the claims do not preclude performance in the human
mind of the steps identified by the Examiner as being mental processes.
However, the fact that the claims do not preclude performance in the human
mind does not explain, specifically, why, based on sound reasoning and/or
evidence, the claimed steps at issue could practically be performed in the
human mind. That is, the Examiner’s response fails to address Appellant’s
specific argument that claimed steps at issue cannot practically be performed
in the human mind.
Indeed, in the original statement of the rejection, the Examiner did not
include any explanation, based either on sound reasoning or evidence, as to
why the claimed steps at issue can practically be performed in the human
mind. See Final Act. 2–9. Nor do we see anything in the claims themselves,
or the supporting disclosure in the Specification, suggesting that it is self-
evident that a human mind can practically perform the claimed steps at issue.
Given the absence of any explanation as to why the claimed steps at issue
can practically be performed in the human mind, we agree with Appellant
that the Examiner has not shown sufficiently that the claimed steps at issue
are mental processes that constitute an abstract idea.
As to mathematical concepts recited in the claims, the Examiner
identified the claimed steps of “creating three-dimensional and reduced-
order models and executing simulations of said models. The specification
indicates that the three-dimensional model and reduced-order model are both
sets of equations.” Final Act. 4; see also Ans. 3 (citing Spec. 7, 8).
Appellant argues that, according to the 2019 Office Guidance and
supporting examples, even if a claim involves the use of mathematics, the
Appeal 2020-002496
Application 13/464,452

9
claim is not considered to recite a mathematical concept unless it expressly
recites an equation or formula. Appeal Br. 21–24; Reply Br. 5.
We again find that Appellant has the better position. The relevant
portion of the MPEP explains:
When determining whether a claim recites a
mathematical concept (i.e., mathematical relationships,
mathematical formulas or equations, and mathematical
calculations), examiners should consider whether the claim
recites a mathematical concept or merely limitations that are
based on or involve a mathematical concept. A claim does not
recite a mathematical concept (i.e., the claim limitations do not
fall within the mathematical concept grouping), if it is only
based on or involves a mathematical concept. . . . For
example, a limitation that is merely based on or involves a
mathematical concept described in the specification may not be
sufficient to fall into this grouping, provided the mathematical
concept itself is not recited in the claim.
MPEP § 2106.04(a)(2).
In the present case, we acknowledge that the three-dimensional and
reduced-order models recited in the claims involve mathematical
calculations. See Spec. 7 (disclosing that “Navier-Stokes equations are
solved in three-dimensions using a finite element method”); id. at 8 (“The
tuning of the boundary condition parameters is formulated as a system of six
nonlinear equations in six unknowns, seeking a root where the simulated and
measured hemodynamic conditions match.”).
The claims themselves, however, undisputedly do not recite any of the
equations in the Specification identified by the Examiner. Appellant
persuades us, therefore, that the Examiner has not shown sufficiently that the
claims recite mathematical concepts in a manner constituting a judicial
exception. See MPEP § 2106.04(a)(2) above.
Appeal 2020-002496
Application 13/464,452

10
Office Guidance—Revised Step 2A, Prong 2
For the reasons discussed above, Appellant persuades us that the
Examiner has not shown sufficiently that, under Revised Step 2A, Prong 1,
of the Office Guidance, the rejected claims recite judicial exceptions in the
form of either mental processes, or mathematical concepts. As explained in
the Office Guidance, if the claims are found to not recite a judicial exception
under Prong 1, “[t]his concludes the eligibility analysis” except in certain
“rare circumstances” not applicable here, and “the claim[s are] eligible at
Prong One of revised Step 2A.” 84 Fed. Reg. at 54.
In this instance, however, in interest of completeness, we find it
worthwhile to turn to Revised Step 2A, Prong 2, of the Office Guidance to
determine whether the rejected claims, when viewed as a whole, include
additional elements that integrate the judicial exceptions into a practical
application. See Office Guidance (84 Fed. Reg. at 54–55).
As Appellant argues, one consideration in determining whether
claimed judicial exceptions are integrated into a practical application is
whether the additional elements in the claim reflect an improvement to a
technical field. Office Guidance (84 Fed. Reg. at 55). When evaluating
claims for integration into a practical application, the claims must be
considered as whole:
It is critical that examiners consider the claim as a whole when
evaluating whether the judicial exception is meaningfully
limited by integration into a practical application of the
exception. Some elements may be enough on their own to
meaningfully limit an exception, but other times it is the
combination of elements that provide the practical application.
When evaluating whether an element (or combination of
elements) integrates an exception into a practical application,
Appeal 2020-002496
Application 13/464,452

11
examiners should give careful consideration to both the element
and how it is used or arranged in the claim as a whole.
Id.
In the present case, Appellant cites to the Taylor Declaration,5 and the
Spilker article6 cited therein, as evidence that when the claims are viewed as
a whole, the claimed processes reflect an improvement to the technical field
of cardiovascular modeling. Appeal Br. 30–31; Reply Br. 2–3. The Taylor
Declaration states that the Spilker article and the present application “share
much of their disclosures,” and notes that the Spilker article “has been cited
by at least 35 other published papers, evidencing its recognition and
contributed improvements in the field of computer modeling of coronary
flow.” Taylor Declaration ¶¶ 6, 7.
The Examiner, however, makes no mention of either the Taylor
Declaration or the Spilker article, in considering the issue of whether the
claimed processes as a whole reflect an improvement in a technical field,
and therefore integrate any alleged judicial exceptions into a practical
application. See Final Act. 5–6; Ans. 3–7.
Because the Examiner has not considered all of the evidence of record
in determining whether the claimed processes as a whole reflect an
improvement in a technical field, we agree with Appellant that the Examiner
has not shown sufficiently that the claimed processes do not integrate any of
the alleged judicial exceptions into a practical application. Accordingly, for

5 Declaration of Charles A. Taylor under 37 C.F.R. § 1.132 (signed January
11, 2016).
6 Ryan L Spilker & Charles A. Taylor, Tuning Multidomain Hemodynamic
Simulations to Match Physiological Measurements, 38 ANNALS OF BIOMED.
ENGINEER. 2635–2648 (2010).
Appeal 2020-002496
Application 13/464,452

12
this additional reason, Appellant persuades us that the Examiner has not
shown sufficiently that the processes recited in Appellant’s claims are
directed to subject matter ineligible for patenting.
Eligibility for Patenting—Conclusion
For the reasons discussed above, we agree with Appellant that the
Examiner has not shown sufficiently that Appellant’s claims recite judicial
exceptions under Revised Step 2A, Prong 1, of the 2019 Office Guidance.
For the reasons discussed above, we also agree with Appellant that the
Examiner has not shown sufficiently that Appellant’s claims do not integrate
any alleged judicial exceptions into a practical application under Revised
Step 2A, Prong 2.
Accordingly, applying the principles set forth in the 2019 Office
Guidance and October 2019 Update, we find that the preponderance of the
evidence does not support the Examiner’s determination that Appellant’s
claims are directed to subject matter that is ineligible for patenting. We,
therefore, reverse the Examiner’s rejection of Appellant’s claims on that
ground.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
20–35, 39–
41, 43–45,
47–49
101 Ineligible Subject
Matter
20–35, 39–
41, 43–45,
47–49

REVERSED