Ex Parte Liu et al

Patent Trial and Appeal Board

Jul 25, 2018

13779999 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/779,999 02/28/2013
28524 7590 07/27/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Jun 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.
2012P07696US01 7897
EXAMINER
NGHIEM, MICHAEL P
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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 JUN LIU, HUI XUE, MARCEL DOMINIK NICKEL, TI-CHIUN
CHANG, MARIAPPAN S. NADAR, ALBAN LEFEBVRE, EDGAR
MUELLER, QIU WANG, ZHILI YANG, NIRMAL JANARDHANAN and
MICHAEL ZENGE 1
Appeal 2017-011132
Application 13/779,999
Technology Center 2600
Before KAREN M. HASTINGS, A VEL YN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 2-172. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Siemens Corp. and Siemens Aktiengesellschaft are identified as the real
parties in interest. Appeal Br. 1.
2 Claim 1 was withdrawn via an amendment by Appellants on August 7,
2015.
Appeal2017-011132
Application 13/779,999
Independent claim 2 is illustrative of the claimed subject matter:
2. A method for correcting for coil sensitivity differences in
generating a parallel magnetic resonance (MR) image,
comprising the steps of:
providing a matrix A of 20 sliding block vectors of a 20
image of coil calibration data acquired from a parallel magnetic
imaging apparatus, wherein
a 2,1
a .
n,:,J
a .
I,n,;,
\
a 2,n/;
. . . a
n,:,,n,t,.
nc is a number of coils, nb is a number of sliding blocks
extracted from the coil calibration data, and lliJ is a kxky x 1
column vector obtained by concatenating columns that
represents a }th sliding block of an ith coil, wherein kx and ky are
scalars defining a block of size kx x ky ;
calculating a left singular matrix V11 from a singular value
decomposition of A,
"'1.1
wherein A= V2'UN and
r,. [ ] : - J l' ,r -! - '1:->'2,···,'· -
V2_i
\
V l,t
V '\l
, n,.,l n,,,2 V' U,. ,I _)
is a matrix of left singular vectors of A corresponding to T
leading singular values wherein H denotes a complex-conjugate
transpose, Vi,k is a kxky x 1 column vector obtained by
concatenating columns, which Vi,k is an i-th block in vector Vk,
wherein Vk, k=l, 2, ... , T, is a component of V11;
calculating
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Application 13/779,999
P1.u Pu.2 P1,U.J<,.
P 1.~r.•tf = r:{11 =
Pfl, ,Ll
P11,"2,1
\._Pn, .. /1£,. ,I
wherein PiJ,t, i=I, ... , nc,}=I, ... , nc, t=I, ... , kxky, is a
kxkyx I column vector of nc x nc matrices;
calculating SiJ,t = FH(Pt(PiJ,t)) wherein FH represents an
inverse Fourier transform and Pt represents a zero-padding
operator; and
solving MHcr = (S)H e for e, where e is a vector of coil
sensitivity maps for all coils at spatial location r, wherein sr is a
vector of matrices of values SiJ,t at a spatial location r in the
image,
' r \
snc,1,k):.,.
,,
s r
Sit' -... - n.,., 2.,l sll., , 2 ,k,,k,,
and
!'
Sn,,,n, ,k_.,A,.
1 I ',. 1 ' 0 (} ~1 () n ... () l l At"'
0 0 o, () () 0 /
/0 0 ... u'
0 0 ()
'·
1 J
and
using the vector of coil sensitivity maps to correct coil
sensitivities, which corrected coil sensitivities are used to
generate said parallel MR image by finding a parallel MR
image m that minimizes the expression
! t111,;,(c1 <2001)-ytll: + lllfVinl!i
k i=l
wherein Fu is an undersampling Fourier transformation
operator, Ci denotes the coil sensitivity map for the i-th coil, Yi
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represents observed undersampled k-space data for the i-th coil,
Wis a redundant Haar wavelet transformation, and A is a
weighting factor.
Independent claim 10 is directed to a non-transitory program storage
device having program instructions to perform the same steps as set out in
claim 2 for correcting coil sensitivity differences in generating a parallel
magnetic resonance (MR) image using a vector of coil sensitivity maps
(Appeal Br. 21-23 (Claims Appendix)).
Appellants do not separately argue independent claim 10 from claim
2. Accordingly, we select claim 2 as representative of the independent
claims.
THE REJECTIONS
The following rejections made by the Examiner are maintained on
appeal:
1. Claims 2-17 under 35 U.S.C. § 112(a) for failing to comply
with the written description requirement;
2. Claims 2-17 under 35 U.S.C. § 112(b) as being indefinite; and
3. Claims 2-17 under 35 U.S.C. § 101 for being directed to an
abstract idea.
ANALYSIS
We have reviewed each of Appellants' arguments. However, we
determine that a preponderance of the evidence supports the Examiner's
finding that the language of independent claims 2 and 10 is indefinite, that
the claims lack written description support and that the claims are directed to
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non-statutory subject matter under 35 U.S.C. § 101. Accordingly, we will
sustain the Examiner's§§ 112(a) and (b) rejections in addition to the
Examiner's rejection under § 101 for essentially those reasons expressed in
the Answer, including the Examiner's Response to Argument section.
The§ l l 2(a) Written Description Re;ection
Appellants do not present separate arguments specifically directed to
any of the dependent claims under rejection (Appeal Br. 6-9). Accordingly,
the dependent claims will stand or fall with their parent independent claims
of which claim 2 is representative.
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, Appellants' Specification must "convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention." Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir.
1991)). We must first interpret the disputed claim language by giving the
terms thereof the broadest reasonable interpretation in their ordinary usage
as they would be understood by one of ordinary skill in the art in light of the
written description in the Specification, including the drawings, as
interpreted by this person, unless another meaning is intended by Appellants
as established in the written description of the Specification, and without
reading into the claims any limitation or particular embodiment disclosed in
the Specification. See, e.g., In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
The Examiner determines that Appellants do not have written
description support for the independent claim limitations "correcting for coil
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sensitivity differences" ( claims 2 and 10) and "using the vector of coil
sensitivity maps to correct coil sensitivities, which corrected coil
sensitivities are used to generate said parallel MR image by finding a
parallel MR image m that minimizes the expression" ( claims 2 and 1 O; Ans.
3; see also Adv. Act. 2). According to the Examiner, since the Background
section of Appellants' Specification teaches that parallel imaging exploits
the varying sensitivities of receiver coils, it does not teach that there is a
need for "correcting for coil sensitivity differences" as disclosed in the
preamble and body of the claims ( claims 2 and 10). The Examiner also finds
that "the recited expression" in the claims refers to equation 3 6 of
Appellants' Specification, which "suggests performing MR reconstruction
using a minimized expression" but does not teach "'using the ... corrected
sensitivities ... to generate ... a parallel MR image that minimizes the
recited expression"' (Ans. 4, 6).
Assuming arguendo that Appellants are correct that the disclosure
reasonably would convey to one of ordinary skill in the art that the inventors
had possession of the subject matter in the limitation "correct[ing] coil
sensitivities," nonetheless, we agree with the Examiner that the second
limitation "using the ... corrected sensitivities ... to generate ... a parallel
MR image that minimizes the recited expression" lacks written description
support.
Appellants argue that support for the limitation "using the vector of
coil sensitivity maps to correct coil sensitivities, which corrected coil
sensitivities are used to generate said parallel MR image by finding a
parallel MR image m that minimizes the expression" is "found in the
[S]pecification as originally filed at page 28" (Appeal Br. 8), however,
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Appellants' argument is not persuasive. The recited expression in the claims
is reproduced from equation 36 disclosed on page 28 of Appellants'
Specification. Appellants' Specification and claims fail to explain which
elements in the recited expression (i.e., equation 36) refer to "corrected
sensitivities." In addition, although the claims disclose "using the vector of
coil sensitivity maps to correct coil sensitivities," Appellants' claims do not
disclose actually generating the corrected core sensitivities. Consequently, it
is unclear how these corrected coil sensitivities (which are not explicitly
generated) are then subsequently used to generate a parallel MR image by
finding a parallel MR image m that minimizes the recited expression.
Furthermore, it is unclear how m can be found to minimize the recited
expression when m is itself a part of the recited expression. It is also unclear
from Appellants' disclosure how any of the calculations performed in claim
2 (for allegedly determining the corrected coil sensitivities) listed prior to
"recited expression" representing equation 3 6 are used in equation 3 6 to
generate the parallel MR image. Claim 2 discloses generating a matrix A
from a 2D image of coil calibration data, then calculating a left singular
matrix from a singular value decomposition of A, then calculating P, s and
solving for cr. However, neither the matrix A data, the left singular matrix
data, P, S, cr or some new variable representing "corrected coil sensitivities"
is disclosed as part of the recited expression 36. It is, therefore, unclear how
exactly the corrected coil sensitivities are "used" to generate the parallel MR
image or find a parallel MR image that minimizes the expression.
Appellants' Specification also does not clearly explain the relationship
between the other variables in the preceding equations and equation 36. In
particular cr is disclosed by the Specification as being "the optimizer that
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maximizes the correlation between ... the left and right hand sides of EQ.
(19)" (Spec. 19), however, the Specification fails to explain how that
determination leads to correcting coil sensitivities and generating the parallel
MR image. The claim essentially comprises a list of multiple equations
without adequately explaining how each of the equations relate to one
another to generate the final alleged result. Furthermore, the recited
expression 36 is set apart in the Testing section of Appellants' Specification
as a means for performing Reconstruction. The recited expression 3 6 is
merely stated as being used for MR reconstruction without any explanation
of how the equation relates to the 35 equations previously discussed in the
Specification. Particularly absent from the Specification is any disclosure of
how the corrected sensitivities are used to find the parallel MR image m that
minimizes the recited expression. While mis a variable in expression 36, it
is not being solved for and there is no variable for "corrected sensitivities" in
the recited expression. Finally, we emphasize that Appellants do not
identify any disclosure that explains the relationship of all of the prior
equations and/or their variables to equation 36 for performing the MR image
reconstruction.
In light of the foregoing, we determine that Appellants fail to identify
disclosure which reasonably conveys to those skilled in the art that the
inventors had possession of the claim subject matter under consideration.
We sustain the§ 112(a) rejection of all claims.
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The§ l l 2(b) Reiection
During prosecution, claims are definite if they "set out and
circumscribe a particular area with a reasonable degree of precision and
particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner found that independent claims 2 and 10 are indefinite
because the preamble limitation "correcting for coil sensitivity differences"
is not supported by the body of the claim (Ans. 7-8), it is not clear whether
the matrix A refers to the 2D sliding block vectors of a 2D image or a
kxky x 1 column vector obtained by concatenating columns that represents a
}th sliding block of an ith coil (Final Action 4), neither the Specification or
the claims provide a definition for the parameters V and U from the equation
A === VIL/u (Ans. 9), it is not clear how cr is solved because equation 23
from the Specification explaining how to solve for cr is missing (id. at 10-
13) and that it is unclear what the expression being minimized represents (id.
at 10-14) and it is unclear from the final claim paragraph what the parallel
MR image m minimizes (Final Action 4 ). Assuming arguendo that
Appellants are correct that one of ordinary skill in the art would recognize
that they are correcting for coil sensitivities as set forth in the preamble, that
matrix A was clearly defined, cr is solved, and what the parallel MR image
m is minimizing, nonetheless we agree with the Examiner that the variables
V and U are undefined and indefinite.
Appellants contend that the parameter V is defined as the matrix and
the parameter U is defined with regards to the term "Fu'' (Appeal Br. 9).
In prosecution before the PTO "[i]t is the applicants' burden to
precisely define the invention, not the PTO's." Morris, 127 F. 3d at 1056.
The purpose of this requirement is to provide the public with adequate notice
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of the boundaries of protection involved. The time to do so is during
prosecution where an applicant has the ability to amend the claims to more
precisely define the metes and bounds of the claimed invention. See Ex
Parte Miyazaki, 89 USPQ2d 1207, 1210-12 (BPAI 2008).
Contrary to Appellants' position, a preponderance of the evidence
supports the Examiner's position that the variables U and V are undefined.
The claims do not define V from equation A. Instead, they define the left
singular matrix V11- It is unclear if V is supposed to refer to V11- The
parameter U is not the same as "Fu'' since, as explained supra, the
relationship between the variables in the expression minimized at the end of
the claims and the variables in the all of the prior equations is not clear.
Furthermore, only the collective variable "Fu'' with a subscript u is defined
for the expression rather than "U" and it is not clear that the definitions for
that expression apply to any other variables in the claim. Therefore, the
claims do not provide any guidance on how to define U. In addition, the
Specification does not clearly define either V or U. At most, the
Specification notes that the equation comprising V and U, which is equation
8 in the Specification, denotes equation 9 (Spec. 14). In addition, we note
that the claims appear to define A as both a matrix and the equation.
Consequently, we agree with the Examiner that the appealed claims
are rendered indefinite by the limitations of independent claims 2 and 10
disclosing the equation A."" 1'2,l/l (Final Action 4).
Appellants' statement and argument are not supported by evidence
and, therefore, lack persuasive merit. Furthermore, Appellants do not
address the Examiner's determination that the claims are rendered indefinite
because the Specification does not define the relationship between the
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variables under review (see Reply Br. 3). For these reasons, Appellants have
not provided this record with persuasive responses to the clarity problems
identifiedbytheExaminer. SeeinrePackard, 751 F.3d 1307, 1313 (Fed.
Cir. 2014) ("Given the role of the applicant in the process, it is a reasonable
implementation of the examination responsibility, as applied to§ 112(b), for
the USPTO, upon providing the applicant a well-grounded identification of
clarity problems, to demand persuasive responses on pain of rejection.").
We sustain the § 112(b) rejection of all claims.
The§ 1 OJ Re;ection
Appellants do not present separate arguments specifically directed to
any of the dependent claims under rejection (Appeal Br. 12-17).
Accordingly, the dependent claims will stand or fall with their parent
independent claims of which claim 2 is representative.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Id. at 2355. In that regard, the Examiner determined that the
claims are directed to using the vector of coil sensitivity maps to correct coil
sensitivities and using the corrected coil sensitivities to generate a parallel
MR image which are similar to the abstract idea of organizing information
according to mathematical correlations and concluded that the subject matter
of the claims is directed to the judicial exception of abstract ideas ( Ans. 18-
19).
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Appellants challenge the Examiner's articulation of what the claims
are directed to by arguing that the Examiner fails to analyze each claim as a
whole, but the challenge is unfounded (see Appeal Br. 15-16; Reply Br. 4--
6). For example, the fact that the claims are drafted to correct coil
sensitivity differences is not dispositive. The question is what the claims are
"directed to."
[T]he "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."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1375 ... (Fed. Cir. 2016) (inquiring into "the
focus of the claimed advance over the prior art").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). "The
'abstract idea' step of the inquiry calls upon us to look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). "In
determining the eligibility of respondents' claimed process for patent
protection under § 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
As set out in the Background section of Appellants' Specification, it
was known to use joint estimation and eigenvector approaches to
compensate for differences in sensitivity functions in order calibrate coil-by-
coil reconstruction (Spec. 2). The claims are directed to using the "detailed
mathematical derivations for the eigenvector approach" (id.) to correct coil
sensitivity differences and generate a parallel MR image.
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Accordingly, the claims as a whole, in light of the Specification, are
directed to performing mathematical derivations of the eigenvector approach
as part of a calibration process for correcting sensitivities and minimizing an
expression, which is consistent with the Examiner's position (Final Action
5---6; Ans. 18-22). There appears to be no dispute that the mathematical
derivations of the eigenvector approach and minimizing of the expression
constitute organizing eigenvector information through mathematical
calculations (i.e., are abstract ideas) (Appeal Br. 15-16, admitting that the
mathematical concepts of calculating a left singular matrix, performing
calculations using matrices, and minimizing mathematical expressions are
known).
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, 134 S. Ct. at 2355 (alteration in original) ( quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)). In response to Appellants' argument that "the 'character as a
whole' of the claims clearly relates to improvements in
computer-related technology that pertains to magnetic resonance imaging,
which is recognized and understood as a practical, useful and beneficial tool
in the practice of medicine and medical diagnostics" ( Appeal Br. 15-16), the
Examiner determined that, generically linking the use of a judicial exception
to a particular technological environment or field of use (i.e., to magnetic
resonance imaging) is insufficient because "[t]he claims do not include
additional elements that are sufficient to amount to significantly more than
the abstract idea" because they do not provide meaningful limitation( s) to
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transform the abstract idea into a patent eligible application of the abstract
idea (Ans. 20). In particular, the Examiner finds that "[w]hile the term
'improvement(s)' is mentioned, there are no discussions of, e.g., what the
capabilities of the existing technology are, accordingly, what the specific
improvements to existing technology are, which claimed steps directed to
the improvements are" (id.). There is no disclosure in the claims or
Specification to indicate computer-specific hardware that is being improved,
nor does the Specification disclose in detail how performing equation 36 or
any of the preceding 3 5 mathematical equations leads to an improvement in
MR tools.
The Specification does not support Appellants' argument that the
additional elements comprise significantly more than the abstract idea of
organizing eigenvector data according to mathematical correlations and data
gathering to generate a MR image. The claims do not specify any devices as
performing the mathematical steps. In addition, the Specification does not
disclose the mathematical steps as being tied to any special or non-generic
hardware. Cf Alice, 134 S. Ct. 2358 ( citation omitted). "[T]he mere
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." Id. The fact that
the claims end by disclosing generating an MR image through a
mathematical expression without adequately explaining how that constitutes
an improvement or is tied to MR non-generic hardware causes the final
paragraph of the claims to be tantamount to a generic statement of applying
it by simply stating that the result of the mathematical calculations is
"applied" towards generating a MR image.
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Finally, Appellants argue that the claims comprise significantly more
than the abstract idea because "the [E]xaminer acknowledges" that the
claimed combination of limitations in the independent claims "is not
disclosed or suggested by the prior art" (Appeal Br. 16 ( citing to Final
Action 7)). However, a finding of novelty or nonobviousness does not
necessarily lead to the conclusion that subject matter is patentable eligible.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry." Ass 'n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). The question in step two of the
Alice framework is not whether an additional feature (i.e., the calculation) is
novel but whether the implementation of the abstract idea involves "more
than performance of 'well-understood, routine, [and] conventional activities
previously known to the industry.'" Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir.
2014) (quoting Mayo, 566 U.S. at 73) based upon whether "[t]aking the
claim elements separately, the function performed by the computer at each
step of the process is '[p ]urely conventional.'" Alice at 23 59 ( citing Mayo,
566 U.S. at 66); cf id. at 2359 ("Considered 'as an ordered combination,'
the computer components of petitioner's method 'ad[d] nothing ... that is
not already present when the steps are considered separately.") Regardless
of whether the mathematical function itself is novel, the claims do not recite
a computer or non-generic hardware performing any functions that are not
purely conventional because the steps of the claim limitations are not tied to
any computer hardware. As such, when considered as an ordered
combination, the computer components ( or complete lack thereof) of
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Appellants' method adds nothing that is not already present when the steps
are considered separately.
DECISION
The rejection of claims 2-17 under 35 U.S.C. § 112(a) for failing to
comply with the written description requirement is affirmed.
The rejection of claims 2-17 under 35 U.S.C. § 112(b) as being
indefinite is affirmed.
The rejection of claims 2-17 under 35 U.S.C. § 101 is affirmed.
The decision of the Examiner is affirmed.
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).
AFFIRMED
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