Sangtae Ahn et al.

Patent Trials and Appeals Board

May 27, 2020

2018006817 (P.T.A.B. May. 27, 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.
14/847,643 09/08/2015 Sangtae Ahn 281758-2 7381
61604 7590 05/27/2020
GE Healthcare, IP Department
9900 W. Innovation Drive
Mail Code RP2131
Wauwatosa, WI 53226
EXAMINER
LEE, SHUN K
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
05/27/2020 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):
GEHealthcare@anaqua.com
HCTechnologies@ge.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANGTAE AHN, et al.
_________

Appeal 2018-006817
Application 14/847,643
Technology Center 2800
____________

Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12 and 23–26. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies General Electric Company as the real party
in interest (Appeal Br. 3).
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to “tomographic imaging for
medical applications” (Appeal Br. 5). Claim 1, reproduced below (with
emphases on certain disputed limitations) is illustrative of the claimed
subject matter:
1. A method for enhanced imaging of a subject of interest using
a hybrid positron emission tomography (PET)/magnetic
resonance (MR) imaging system, the hybrid PET/MR imaging
system comprising a first imaging device for producing emission
projection data corresponding to the subject of interest, a second
imaging device for providing second source scan data
corresponding to the subject of interest, said second imaging
device different from said first imaging device, and a computer
coupled to the first and second imaging devices, the computer
comprising a processor and a memory in communication with the
processor, the method comprising:
programming the processor with program instructions to
perform functions as follows
receiving emission projection data from the first
imaging device and second source scan data from the
second imaging device:
reconstructing second source images based on the
second source scan data;
generating a prior map based on the second source
images:
generating a prior weight map, comprising:
generating a confidence map based on the second
source images; and
generating a prior weight map that is spatially
varying based on the confidence map;
constructing a penalty function that
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calculates voxel-wise differences between the prior
map and a given image;
transforms each voxel-wise difference by using a
potential function; and
calculates a weighted sum of the transformed voxel-
wise differences where weights for the weighted sum are
based on the prior weight map;
reconstructing an emission image and an attenuation map,
comprising:
iteratively updating the emission image based on
the attenuation map and the emission projection data;
iteratively updating the attenuation map based on
the emission image and the emission projection data by
using the penalty function;
obtaining a final attenuation map; and
generating a final emission image.

Independent Claim 23 is directed to a similar method that incorporates
the disputed limitations of claim 1, above.2

2 The Appeal Brief original Claims Appendix filed 2/09/2018 contains an
incorrect version of the claims on Appeal, which was corrected in the
Response to Notification of Non-Compliant Brief filed 2/23/2018.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Schweizer et al.
(“Schweizer”)
US 2011/0158497 A1 June 30, 2011
Zhang et al.
(“Zhang”)
US 2012/0070057 A1 Mar. 22, 2012
Keereman et al.
(“Keereman”)
US 2012/0076378 A1 Mar. 29, 2012
John Nuyts et al., Simultaneous Maximum A Posteriori
Reconstruction of Attenuation and Activity Distributions from
Emission Sonograms, IEEE Transactions on Medical Imaging, Vol.
18, No. 5 (May 1999), pp. 393–403 (“Nuytz”).

REJECTIONS
Claims 1–12 and 23–26 are rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter without significantly more.
Claims 1–4, 6–11, and 23–26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schweizer in view of Nuyts.
Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Schweizer, Nuyts, and Keereman.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Schweizer, Nuyts, and Zhang.

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OPINION
The rejection of claims 1–12, 23–26 under 35 U.S.C. § 101 for claiming
patent-ineligible subject matter.
PRINCIPLES OF LAW
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., 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 Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). 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.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against 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, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second part
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). “A claim that recites an
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abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “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.
Pursuant to applicable statute and precedential decisions and
consistent with the 2019 Revised Guidance and the October 2019 Update,
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 activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
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, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

101 ANALYSIS
Appellant argued all the claims as a group (Appeal Br. 10–13). We
select claim 1 as the representative claim for this group, and the remaining
claims 2–12 and 23–26 de facto stand or fall with claim 1 (noting
independent claim 23 is not separately argued from claim 1). Cf. 37 C.F.R.
§ 41.37(c)(1)(iv).

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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The 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised Guidance,” supersedes the
earlier guidance that was in effect at the time the Appeal Brief was filed. Id.
at 51 (“Eligibility–related guidance issued prior to the Ninth Edition, R–
08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”).
Accordingly, our analysis will not address the sufficiency of the Examiner’s
rejection against the Office’s previous guidance. Rather, our analysis will
comport with statute and precedential decisions and will follow the
analytical structure set forth in the 2019 Revised Guidance.
Claim 1 covers a “method” and is thus statutory subject matter for
which a patent may be obtained.5 This is not in dispute.
As discussed earlier, § 101, however, “contains an important implicit
exception: 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 Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding that claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 (as well as the similar method claim 23) is directed to an
abstract idea.

5 This discussion corresponds to Step 1 of the 2019 Revised 101 Guidance
which requires determining whether a “claim is to a statutory category.”
2019 Revised Guidance, 84 Fed. Reg. at 53; see also id. at 53–54
(“consider[] whether the claimed subject matter falls within the four
statutory categories of patentable subject matter identified by 35 U.S.C.
101”).
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Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk.”). The Revised Guidance lays out
three types of abstract ideas: mathematical concepts, methods of organizing
human activity, and mental processes. 2019 Revised Guidance, 84 Fed.
Reg. at 52. See also Digitech Image Techs., LLC v. Elecs. for Imaging,
Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding that claims to a
‘‘process of organizing information through mathematical correlations’’
are directed to an abstract idea); Intellectual Ventures LLC v. Symantec
Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (‘‘[W]ith the exception of
generic computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human,
mentally or with pen and paper.’’)
The Examiner determined that the claims recite limitations
corresponding to a mathematical algorithm (Final Act. 3). The Examiner
contends that the steps of “generating a confidence map,” “generating a prior
weight map,” “constructing a penalty function,” and “reconstructing an
emission image and an attenuation map” based on the penalty function are
directed to a mathematical algorithm (Final Act. 2–3). The Examiner
contends that the method of claim 1, merely performing the functions of
“obtaining emission projection and scan data” and “converting the obtained
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emission projection and scan data into attenuation and emission data,” is
directed to the abstract idea without significantly more (Ans. 2–3).
Appellant contends that the claims do not merely recite an abstract
idea, and instead “improve an existing technological process of
reconstructing an emission image and an attenuation map” (Appeal Br. 11)
by providing “more flexibility and robustness that previously proposed
PET/MR image processing techniques (Appeal Br. 13, citing Spec. ¶ 13).
Accordingly, there is a dispute over whether the invention, because of
its alleged improvement to the existing state of the art, recites patent eligible
subject matter.
The Abstract Idea6 (Step 2A, Prong One)
Claim 1 recites a method for use with data generated by a hybrid
PET/MR imaging system that programs a computer processor with
instructions to perform a series of steps. The method steps recited in
representative claim 1 subsequently carried out by that processor,
individually and collectively, describe either mathematical concepts or
mental processes; that is, “receiving” emission projection data and second
source scan data, “reconstructing” second source images based on this
information, “generating” a prior map, “generating” a prior weight map,
“constructing” a penalty function using differences between the prior map
and an image, “reconstructing” an emission image and “generating” the final
emission image (Appeal Br., Claim Appx. 19).

6 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. 2019 Revised Guidance 53. Step 2A is a two prong inquiry.
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The court has held that abstract ideas include the concepts of
collecting data, analyzing the data, and reporting the results of the collection
and analysis, including when limited to particular content. See, e.g.,
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying, and
manipulating data); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1350 (Fed. Cir. 2014) (claims directed to a “process of
organizing information through mathematical correlations” are directed to an
abstract idea).
While claim 1 does recite the data as a specific type of PET/MR data,
it does not recite an affirmative step of actually taking an image. The
Specification describes an embodiment where a storage repository stores
“acquired data, reconstructed images and/or information derived therefrom”
(Spec. ¶ 22), making it clear that the method can be done on previously
stored data. Therefore, the “receiving” steps are not narrowed to taking an
image at the time of the method but are akin to making observations and
evaluations that can be performed in the human mind (e.g., looking at a PET
image printed out or displayed on an electronic screen, or physically
receiving a copy of the data) and thus are matters that fall within the
“[M]ental processes” enumerated grouping of abstract ideas, both as to each
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claim limitation and the claim as a whole.7 Alternately, receiving data from
an image source is insignificant extra-solution activity (i.e., data gathering).
See 2019 Revised Guidance, 84 Fed. Reg. at 55 n.31; see also MPEP §
2106.05(g). Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir.
2016) (agreeing with the Board that printing and downloading generated
menus are insignificant post-solution activities).
The generating, constructing, and reconstructing concepts are akin to
mathematical concepts, including mathematical relationships and
calculations. Generating image data, weighted maps, or penalty functions, as
well as constructing or reconstructing images based on the algorithm
constitutes performing mathematical calculations, as the Examiner
determines (Final Act. 2–3, Ans. 2–3).
Therefore, we have reviewed the record and are unpersuaded as to
reversible error in the Examiner’s characterization of what claim 1 recites.

7 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” Id. at 54. This case implicates subject
matter grouping “(a)” and “(c)”:
(a) Mathematical concepts—mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(c) Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Id. at 52.
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Practical Application (Step 2A, Prong Two)
Having concluded that claims 1 and 23 each recites a judicial
exception, i.e., an abstract idea (Step 2A, Prong One), we next consider
whether the claim recites additional elements that integrate the judicial
exception into a practical application (Step 2A, Prong Two). 8
Here, it is clear from the Specification (including the claim language)
that the claims focus on an abstract idea, and not on any improvement to
technology and/or a technical field. The Specification’s description of the
problem and solution shows that any advance over the prior art by the
claimed invention is in utilizing a generic computer processor to conduct
manipulation of emission projection data using information from an
additional MR image, not on any improvement in computer functionality
itself. The Specification attributes no special meaning to “receiving,”
“generating,” “constructing,” and “reconstructing” steps with respect to an
improvement in computer functionality. Appellant’s argument that this

8 This corresponds to Prong Two (“If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application”) of Step 2A of the 2019 Revised 101 Guidance. 2019 Revised
Guidance, 84 Fed. Reg. at 54. “A claim that integrates a judicial exception
into a practical application will apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Id. One consideration, implicated here, that is
“indicative that an additional element (or combination of elements) may
have integrated the exception into a practical application” (id. at 55)
(footnote omitted) as if “[a]n additional element reflects an improvement in
the functioning of a computer, or an improvement to other technology or
technical field” (id.).

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invention is a technical improvement relies on a single sentence in the
Specification, that the invention provides “more flexibility and robustness
that previously proposed PET/MR image processing techniques (Appeal Br.
13, citing Spec. ¶ 13), but does not provide specific arguments regarding
how the flexibility and robustness results from the invention as claimed. It is
true that specific asserted improvements in, for example, computer
capabilities, when claimed, can render claimed subject matter not directed to
an abstract idea. Cf. McRO, Inc. v. Bandai Namco Games America, Inc.,
837 F.3d 1299, 1316 (Fed. Cir. 2016) (“When looked at as a whole, claim 1
is directed to a patentable, technological improvement over the existing,
manual 3–D animation techniques.”). But merely improving an abstract idea
does not prevent it from still being an abstract idea. Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea.”) Therefore, after careful review, there
is insufficient evidence in the record before us that the claimed subject
matter reflects any such improvement in technology.
Last, the application to a certain field – a method “using a hybrid
PET/MR imaging system”– does not do more than generally link the use of a
judicial exception to a particular technological environment. This does not
render the idea non-abstract, however, since “the prohibition against
patenting abstract ideas ‘cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment’ or [by] adding
‘insignificant post solution activity.’” Bilski, 561 U.S. at 610–12 (quoting
Diehr, 450 U.S. at 191–92). Accordingly, within the meaning of the 2019
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Revised Guidance, we find there is no integration into a practical
application.
Therefore, because claim 1 (as well as claim 23) recites a judicial
exception and does not recite additional elements that integrate the judicial
exception into a practical application, the claim is directed to a judicial
exception.9
We have considered all the Appellant’s arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claims 1–12 and 23–26 are directed to an
abstract idea (i.e. ineligible subject matter).

9 The Federal Circuit has explained that “the ‘directed to’ inquiry applies a
stage-one filter to claims, considered in light of the specification, based on
whether ‘their character as a whole is directed to excluded subject matter.’”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
“abstract idea” for which computers are invoked merely as a tool. See id. at
1335–36.
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Alice step two – Does the Claim Provide an Inventive Concept?10
Step two is “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 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)). As part of this
step, we also look to whether the claim adds a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)); or simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. 2019 Revised Guidance, 84
Fed. Reg. at 52–56.
In that regard, the Examiner asserts that the steps of obtaining data or
generating an image after manipulating the data are well understood, routine,
and conventional steps which do not amount to significantly more than
receiving data and generating an image from that data (Final Act. 2–3). The
examiner goes on to cite, in the rejection under 35 U.S.C. 103, the use of
PET and MR data being used together in a computer with a memory and a
processor, as shown by Schweizer (Final Act. 5). Further, the Examiner
states that the limitation reciting the method step of “programming the

10 This corresponds to Step 2B of the 2019 Revised Guidance page 56 (“[I]f
a claim has been determined to be directed to a judicial exception under
revised Step 2A, examiners should then evaluate the additional elements
individually and in combination under Step 2B to determine whether they
provide an inventive concept (i.e., whether the additional elements amount
to significantly more than the exception itself).”).
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processor with program instructions to perform functions” is merely an
instruction to implement an abstract idea on a computer (Final Act. 18).
We agree with the Examiner.
Consistent with precedential law, we addressed Appellant’s argument
as to purported specific asserted improvements in technology under step one
of the Alice framework. See Ancora, 908 F.3d at 1347 (“We have several
times held claims to pass muster under Alice step one when sufficiently
focused on such improvements.”). Such an argument can also challenge a
determination under step two of the Alice framework. See buySAFE, 765
F.3d at 1354–55. “[R]ecent Federal Circuit jurisprudence has indicated that
eligible subject matter can often be identified either at the first or the second
step of the Alice/Mayo [framework].” 2019 Revised Guidance at 53.
We are not persuaded that claim 1 or claim 23 presents an element or
combination of elements indicative of a specific asserted improvement in
technological capabilities, thereby rendering the claimed subject matter
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon using a generic computer device to perform the abstract
idea of manipulating image data from two image sources with an algorithm
in order to create a final emission image.
We have reviewed the Specification and, as explained above, we can
find no suggestion of any technical improvements associated with the
performance of the recited steps. The Specification is focused on enhancing
an image of a subject of interest (as recited in each of claims 1 and 23), not
on enhancing a processor in a computer. The application of an abstract
idea on a computer, like the programming of a processor to perform the
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method steps of claim 1 and claim 23, does not integrate abstract ideas
into a patent eligible concept. Alice, 573 U.S. at 223 (“[M]ere recitation
of a generic computer cannot transform a patent-ineligible abstract idea
into a patent-eligible invention. Stating an abstract idea while adding the
words ‘apply it’ is not enough for patent eligibility.” (citation and internal
quotation omitted)). Rather than focusing on said computer or processor,
the Specification focuses on receiving emission projection data and second
source scan data, reconstructing second source images based on this
information, generating a prior map, generating a prior weight map,
constructing a penalty function using differences between the prior map and
an image, reconstructing an emission image and generating the final
emission image (see, e.g., Spec. Figure 3–5), the “processor” (as recited in
claim 1) acting merely as a conduit for practicing that method. Cf. In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (“Put
differently, the telephone unit itself is merely a conduit for the abstract idea
of classifying an image and storing the image based on its classification”).
For the reasons discussed above, we are unpersuaded that the record
supports interpreting the steps recited in the claim as yielding any
improvement in technology.
Looking to the additional elements of the hybrid PET/MR imaging
system, the computer, the memory, and the processor of claim 1, we ask if
they are, as the Examiner asserted, simply “conventional elements” (Final
Act. 2). While “[t]he patent eligibility inquiry may contain underlying
issues of fact,” “[w]hen there is no genuine issue of material fact regarding
whether the claim element or claimed combination is well-understood,
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routine, [and] conventional to a skilled artisan in the relevant field” the
question of patent eligibility taking into account well-understood, routine
and conventional elements can be decided as an issue of law. Berkheimer,
881 F.3d at 1365, 1368 (quoting Mortg. Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016); see also Aatrix Software,
Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018)
(“A factual allegation or dispute should not automatically take the
determination out of the court’s hands; rather, there needs to be justification
for why additional evidence must be considered—the default being a legal
determination.”).
As demonstrated by the Specification, a computer processor was well-
known (Spec. ¶ 20, “general purpose computer processors” can be used),
and the recited steps they perform ask nothing more of them than to use
them for their commonly–associated information–processing functions.
Much like the “data storage unit” and “computer, coupled to said storage
unit” in the claims of Alice (U.S. Patent 7,149,720, claim 1), “the claims
here do [not do] more than simply instruct the practitioner to implement the
abstract idea [. . .] on a generic computer.” Alice, 573 U.S. at 225. See also
Bancorp Servs., 687 F.3d at 1278 (“[T]he use of a computer in an otherwise
patent-ineligible process for no more than its most basic function—making
calculations or computations—fails to circumvent the prohibition against
patenting abstract ideas and mental processes.”).
Further, a hybrid PET/MR imaging system, recited as the source of
the image data in claim 1 (and claim 23), was well understood, routine and
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conventional in the art, as the Examiner has demonstrated11. Cited
references found by the Examiner include Schweizer (¶ 14, describing the
advantage of PET/MR to “enhance image reconstruction of the latter”),
Keereman, (¶ 2, “a new generation of medical imaging scanners is currently
being developed, which combines the high sensitivity of functional imaging
by positron emission tomography (PET) with the wide range of imaging …
of magnetic resonance (MR)”), and Zhang (¶ 8, “some imaging systems
combine a PET scanner with a magnetic resonance (MR) scanner”).
Therefore, we find clear support demonstrating that the PET/MR itself, is a
component that is well-understood, routine and conventional.
On the record before us, Appellant has not shown that the claims on
appeal add a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional, when the claim limitations are
considered both individually and as an ordered combination. We conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.

11 We note that the Examiner’s Final Action from which this appeal is taken
is dated September 28, 2017, while the decision in Berkheimer v. HP Inc.,
881 F.3d 1360, 1369 (Fed. Cir. 2018) issued in February of 2018. Further,
the Examiner’s Answer is dated April 19, 2018, the same day that the PTO
issued the Memorandum titled “Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.).” Therefore, the Examiner did not have
the opportunity to apply the Berkheimer decision to this case.
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Accordingly, because we are not persuaded as to reversible error in
the determinations that representative claim 1, as well as independent claim
23 and dependent claims 2–12, 24–26 are directed to an abstract idea and do
not present an “inventive concept,” we sustain the Examiner’s conclusion
that they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101.

The rejection of claims 1–12 and 23–26 under 35 U.S.C. § 103(a) as being
unpatentable over Schweizer and Nuyts.
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection.). We sustain the § 103 rejections for the reasons expressed by the
Examiner in the Final Office Action of September 28, 2017 and the Answer.
We add the following primarily for emphasis.
Appellant relies upon the same argument for claims 1 and 23 (Appeal
Br. 15, 16).
There is no dispute that Schweizer teaches a method for enhanced
imaging of a subject of interest using a hybrid PET/MR (position emission
tomography/magnetic resonance) imaging system, including the step of
programming a processor to receive emission data and utilize that data, a
prior weight map, and an attenuation map to generate a final emission image
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(Final Act. 5–7). Appellant’s main contention is that Nuyts does not teach
using priors to construct a penalty function and cannot remedy the
deficiency of Schweizer (Appeal Br. 15–16; Reply Br. 13).
Appellant’s arguments are not persuasive of reversible error for
reasons presented by the Examiner (Ans. 3–4).
The Examiner asserts that the disputed limitation of “constructing a
penalty function that” performs certain steps is taught by Nuyts, since the
steps of the penalty function (in summary, that it calculates voxel wise
differences between the prior map and a given image, transforms those
differences using a potential function and calculates the weighted sum of
those differences with weights based on the prior weight map) encompass
the teaching of Nuyts (Final Act. 4–8), despite Nuyts not reciting the words
“penalty function” (Final Act. 19). The Examiner points out that “weights
. . .are based on the prior weight map” are based on a “function f of the prior
weight map wherein f may be any function” (Ans. 3, relying on Spec. ¶ 48;
see also Spec. ¶ 47).
Specifically, the Examiner relies upon Equation (22) of Nuyts, which
calculates the difference between a priori expected attenuation coefficients
of neighboring pixels, ( - ), to teach a weighted sum of pixel differences
(Final Act. 19). The relied upon Equation (22) incorporates a potential
function (either (23) or (24)) acting upon ( - ), and is further incorporated
into Equation (27), weighted with the coefficient (Ans. 3, citing the
resulting equation parenthetically). The Examiner further asserts that the use
of this a priori data (data formed beforehand) is utilizing a prior weight map,
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since Nuyts teaches using this prior knowledge to guide the reconstruction
algorithm “toward a meaningful solution” (Ans. 3–4, citing Nuyts at p. 395).
Appellant does not provide sufficient information or persuasive
arguments why the Examiner’s understanding of the calculation and
transformation steps of the claimed penalty function do not encompass the
algorithm of Nuyts. While there might be, as Appellant argues, “no mention
in Nuyts that these priors can be used to construct a penalty function”
(Appeal Br. 16), the Examiner has made a prima facie case that the
algorithm of Nuyts performs all the steps recited in the claim as performed
by the penalty function, regardless of the terminology used, de facto
teaching a penalty function. Appellant argues that, e.g., Nuyts teaches that
the “gradient of the posterior is the sum of the gradients of the prior and the
likelihood” (Appeal Br. 16), but this and similar statements in the brief do
not adequately rebut the Examiner’s finding that Nuyts teaches the
calculating and transforming steps that comprise the penalty function. There
is no requirement that the prior art must recite verbatim the steps of the
method in order to teach them. In re Fritch, 972 F.2d 1260, 1264–65 (Fed.
Cir. 1992) (A reference stands for all of the specific teachings thereof as
well as the inferences one of ordinary skill in this art would have reasonably
been expected to draw therefrom). Appellant has not directed us to any
specific definitions in the Specification or adequately explained why the
Examiner’s interpretation of calculating voxel-wise differences,
transforming them using a potential function, or calculating a weighted sum
of those differences based on the prior weight map are either incorrect or
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unreasonably broad. Thus, Appellant has not shown reversible error in the
Examiner’s obviousness determination based on the applied prior art.
Appellant relies upon the same arguments made for claim 1 for claim
23 (Appeal Br. 13–16) and for separately rejected claims 5 and 12 (Appeal
Br. 16–18).
Accordingly, we sustain the Examiner’s rejection of independent
claims 1 and 23, as well as all claims dependent thereon.
CONCLUSION
The decision of the Examiner to reject claims 1–12 and 23–26 is
affirmed.
More specifically:
The rejection of claims 1–12 and 23–26 under 35 U.S.C. § 101 as
attempting to claim judicially-excepted subject matter is affirmed.
The rejection of claims 1–12 and 23–26 under 35 U.S.C. § 103(a) as
being unpatentable over the references cited is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–12, 23–26 § 101 Eligibility   1–12, 23–26
1–4, 6–11,
23–26
§ 103 Schweizer, Nuyts 1–4, 6–11,
23–26

5 § 103 Schweizer, Nuyts,
Keereman
5
12 § 103 Schweizer, Nuyts,
Zhang
12

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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