Ex Parte Liu et al

Patent Trial and Appeal Board

Apr 28, 2016

12728315 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121728,315 03/22/2010
28524 7590 05/02/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
David Liu
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2009P06027US01 5161
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID LIU, SHAOHUA K. ZHOU, SASCHA SEIFERT,
DOMINIK BERNHARDT, and DORIN COMANICIU
Appeal2013-010389
Application 12/728,315 1
Technology Center 3600
Before BIBHU R. MOHANTY, BRADLEY B. BAY AT, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1-23. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is Siemens
Aktiengesellschaft. Appeal Brief filed May 23, 2013, hereafter "App. Br.,"
1.
Appeal2013-010389
Application 12/728,315
BACKGROUND
The invention relates to imaging software for detecting vascular
landmarks in a three-dimensional ("3D") image volume, for example, a CT
or MRI scan volume. Abstract; Specification, hereinafter "Spec.," i-fi-12--4.
A node potential value for a landmark candidate is generated with error
values determined using spatial histogram-based error regression, and edge
potential values based on a bifurcation analysis of image volume using
vessel tracing, and with the optimal landmark candidate determined using
Markov random field model based on node potential values and edge
potential values. Id. at i15.
Representative claim 1 is reproduced from page 15 of the Claims
Appendix of the Appeal Brief (Claims App'x) as follows, with emphasis
added to relevant claim limitations:
1. A method for detecting target landmarks in an image volume,
the method comprising:
detecting a set of landmark candidates for each of a plurality of
target landmarks in an image volume;
generating a node potential value for each landmark candidate
based at least in part on an error value determined using
spatial histogram-based error regression;
generating edge potential values for pairs of landmark
candidates based on a bifurcation analysis of the image volume
using vessel tracing; and
determining an optimal landmark candidate for each target
landmark, using a Markov random field model based on the
node potential values and the edge potential values.
In a Final Rejection, the Examiner rejects claims 1-11 under 35
U.S.C. § 101 as directed to nonstatutory subject matter and claims 1-23
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Appeal2013-010389
Application 12/728,315
under 35 U.S.C. § 103(a) as obvious over Wu2 and Paragios. 3 Final Action
mailed December 6, 2012, hereinafter "Final Act.," 6-15; see, also, Answer
mailed June 24, 2013, hereinafter "Ans.," 3-8.
DISCUSSION
35 US.C. § 101, nonstatutory subject matter
The Examiner finds that claims 1-11 recite an abstract idea because
the claimed steps either fail to recite or insufficiently recite a machine or
transformation. Final Act. 6-8. The Examiner finds that detecting a set of
anatomical landmarks may be done visually, but does not address whether
the remaining steps of claim 1 can be accomplished mentally. Ans. 3.
The Appellants argue that the claims do not recite an abstract idea
because the claimed methods require detecting data in an image volume,
which is a functional and palpable application of medical imaging
technology. App. Br. 7-8. The Appellants also contend that the claimed
image data represents a physical object that is transformed when detecting
landmarks and, further, that a skilled artisan could not mentally determine
landmark candidates because of the analyses required, such as spatial
histogram-based error regression and Markov random field modeling. Id. at
8; Reply Brief filed August 20, 2013, hereinafter "Reply Br.," 2.
We reverse the rejection of record because the Examiner has failed to
present a prima facie case that the claims are nonstatutory under § 101. The
machine-or-transformation test is useful for determining whether a claimed
process is statutory under § 101. Here, however, the Examiner generally
2 US Publication 2008/0317308 Al, published December 25, 2008.
3 US Publication 2009/0046951 Al, published February 19, 2009.
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Appeal2013-010389
Application 12/728,315
describes some of the insufficiencies under § 101, but does not provide an
adequate explanation of how this analysis results in the claims being directed
to an abstract idea and does not address all the elements of the claims. 4
Therefore, because a prima facie case of nonstatutory subject matter
has not been established, we reverse the rejection of claims 1-11under35
U.S.C. § 101.
35 US.C. § 103(a)
Claims 1, 12, and 18 are the only independent claims. In light of our
disposition of this appeal and because the issues argued for claims 12 and 18
are similar to those presented for claim 1, we need address only some of the
obviousness arguments presented for claim 1.
The Appellants argue that Wu discloses a cost transformation that
requires determining a minimum cost path, but that does not serve to teach
generating node potential values based on spatial histogram-based error
regression nor generating edge potential values based on vessel tracing-
based bifurcation analysis. App. Br. 11-13; Reply Br. 3-5. The Examiner
finds that although Wu fails to teach using spatial histogram-based error
regression, Wu teaches that cost values may be assigned to nodes to
determine cost path values between adjacent nodes which meets this
4 Should there be further prosecution of this application, the Examiner may
wish to review all claims for compliance with 35 U.S.C. § 101 in light of the
recent Office guidance on patent eligible subject matter found in "July 2015
Update: Subject Matter Eligibility," 80 Fed. Reg. 45429 (July 30, 2015),
and in "2014 Interim Guidance on Patent Subject Matter Eligibility," 79 Fed.
Reg. 74618 (Dec. 16, 2014), which supplements the "Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.," Memorandum to
the Examining Corps, June 25, 2014.
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Appeal2013-010389
Application 12/728,315
limitation because "[h ]ow the costs of the vertices are generated does not
limit the claim since the prior art is able to calculate for the cost of the
vertices." Ans. 3--4. The Examiner uses a similar line of reasoning on the
bifurcation limitation, for instance, finding that how the edge potential
values are generated does not limit the claim. Id. at 4.
The Examiner does not provide any evidence that the use of Wu's
teachings would result in equivalent results to the claimed elements. Our
view is that the manner in which node and edge potential values are
calculated should have been considered by the Examiner because these
elements require that the method steps be performed in a specific way, and
therefore, represent meaningful limitations. As such, we find the
Examiner's disregard of some of these elements, as well as the failure to
demonstrate that the prior art disclosures are equivalent to some of the claim
limitations of claim 1, provide insufficient support for the obviousness
rejection.
We cannot, therefore, sustain the rejection of claims 1-23 under 35
U.S.C. § 103(a).
SUMMARY
The rejection of claims 1-11 under 35 U.S.C. § 101 is reversed.
The rejection of claims 1-23 under 35 U.S.C. § 103(a) is reversed.
REVERSED
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