Ex Parte Lu et al

Patent Trials and Appeals Board

Apr 1, 2019

14115709 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/115,709 11/05/2013 KongkuoLu
24737 7590 04/03/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2011P00361WOUS 4841
EXAMINER
PENG, BO JOSEPH
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
04/03/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KONGKUO LU and RAFAEL WIEMKER 1
Appeal2017-008407
Application 14/115,709
Technology Center 3700
Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
LISA M. GUIJT, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state that the real party in interest is KoninKlijke Philips N V of
Eindhoven, Netherlands. App. Br. 2.
Appeal2017-008407
Application 14/115,709
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
15. Claims 16-21 have been canceled. App. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
THE INVENTION
The claims are directed to a method and system for user-steered, on-
the-fly path planning to assist in image-guided endoscopic procedures.
Spec. ,r,r 1, 10. Claims 1, 13, and 14 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for user-steered, on-the fly path
planning in an image-guided endoscopic
procedure, comprising:
presenting, on a display, a 2D sectional
image showing a field of view of a region of
interest from a preoperative CT scan;
defining a control point on the 2D sectional
image within a patient's body lumen
responsive to a first user input;
presenting a new image centered at the
control point;
adjusting a viewing angle by rotating the
field of view about the control point to show a
longitudinal section of the body lumen
responsive to a second user input;
identifying a second point on a planned
path within the body lumen responsive to a
third user input;
extending a planned path connecting the
control point and the second point;
redefining the second point as a new
control point; and
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Application 14/115,709
Johnson
Soper
Akimoto
McLain
Poole
Virtue
repeating the presenting step, the adjusting
step, the identifying step, the extending step,
and redefining step until the planned path
reaches a procedure starting point within the
patient's body.
REFERENCES
US 6,928,314 Bl
US 2005/0182295 Al
US 2005/0261550 Al
US 2006/0072799 Al
US 2007/0024617 Al
US 2007/0127792 Al
REJECTIONS
Aug. 9, 2005
Aug. 18, 2005
Nov. 24, 2005
Apr. 6, 2006
Feb. 1, 2007
Jun. 7,2007
Claims 1-15 are rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter.
Claims 1-5 and 13-15 are rejected under 35 U.S.C. § 103 as
unpatentable over Poole, Johnson, and McLain or Virtue.
Claims 6-8 and 10 are rejected under 35 U.S.C. § 103 as unpatentable
over Poole, Johnson, McLain or Virtue, and Akimoto.
Claims 9, 11, and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over Poole, Johnson, McLain orVirtue, and Soper.
ANALYSIS
Claims 1-15-Rejected as Directed to Ineligible Subject Matter
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. But the
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
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exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014). To
determine whether a claim falls within a judicially recognized exception to
patent eligibility under 35 U.S.C. § 101, we apply the two-step framework
set forth in Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S.
66, 76-77 (2012), and reaffirmed in Alice. For the first step, we determine
whether the claims at issue are directed to a patent-ineligible abstract idea,
law of nature, or natural phenomenon. Alice, 573 U.S. at 217 (citing Mayo,
566 U.S. at 78-79). If so, we advance to the second step where "we
consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application" of the otherwise
patent-ineligible concept. Id. ( quoting Mayo, 566 U.S. 78-79). The Court
has described this second step "as 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." Id. at 217-18 (citing Mayo, 566 U.S. at 72-73)
(internal quotation marks and alterations omitted). The USPTO generally
designates the first and second Alice steps as steps 2A and 2B, respectively.
See MPEP § 2106.
The USPTO recently published revised guidance on the application of
the first step of the Alice framework (USPTO step 2A). See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Patent Eligibility Guidance"). 2 Under that guidance, to determine whether
2 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf.
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Application 14/115,709
a claim is "directed to" a judicial exception (abstract idea, law of nature, or
natural phenomenon), we apply a two-prong inquiry. For Prong One, we
determine: (1) whether the claim recites a judicial exception; if so, we
consider at Prong Two: (2) whether the claim recites additional elements that
integrate the judicial exception into a practical application. Id. at 50. Only
if a claim recites a judicial exception and does not integrate that exception
into a practical application, do we proceed to the second Alice step (USPTO
Step 2B). Id.
The Patent Eligibility Guidance also clarifies what constitutes an
"abstract idea:" a matter will be treated as an abstract idea if it falls within
the following specific groupings:
(a) Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions); and
( c) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Id. at 52. "Claims that do not recite [subject] matter that falls within these
enumerated groupings of abstract ideas should not be treated as reciting
abstract ideas," except in rare circumstances. Id. at 53.
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Even if the claims recite any one of these three groupings of abstract
ideas, these claims are still not "directed to" a judicial exception ( abstract
idea}-and thus are patent-eligible-if "the claim as a whole integrates the
recited judicial exception into a practical application of that
exception." Id. "Integration into a practical application" requires an
additional element or a combination of additional elements in the claim to
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 exception. Id. at 54--55. For
example, limitations that indicate "integration into a practical application"
include:
1) limitations that reflect improvements to the functioning of a
computer, or to any other technology or technical field;
2) limitations that apply or use a judicial exception to effect a
particular treatment or prophylaxis for a disease or medical
condition;
3) limitations that implement a judicial exception with, or use a
judicial exception in conjunction with, a particular machine or
manufacture that is integral to the claim;
4) limitations that effect a transformation or reduction of a particular
article to a different state or thing; and
5) limitations that apply or use the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to
monopolize the exception.
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Id. at 55 (citing MPEP §§ 2106.05(a}-(c), (e)).
Analysis
For the first Alice step (USPTO step 2A), the Examiner contends that
the claims are "directed to the abstract idea of choosing and connecting
points in the image of a lumen and rotating a 2D viewing," which the
Examiner characterizes as "merely organizing human [activities] because
any of those 2D sectional images are acquired with a conventional system."
Final Act. 4 (internal emphasis omitted). The Examiner also asserts that:
The method that is recited merely is like someone hav[ing] a
paper with a drawing of some lumen (tube shaped object) on a
desk, and defin[ing] a point, and the person move[ s] that point
on the paper to be centered in his field of view. That person can
then rotate the paper in clockwise or counterclockwise and then
define another point on the paper in the lumen region and draw a
line between two points. And then repeat the same method. All
these method now is claimed to be done on a computer display
which is again generic computer system done with a certain
methods of organizing human activities.
Id. (internal emphasis omitted). For the second Alice step (USPTO step 2B),
the Examiner asserts that the additional elements or combination of elements
"do not provide meaningful limitation(s) to transform the abstract idea into a
patent eligible application of the abstract idea such that the claim(s) amounts
to significantly more than the abstract idea itself." Id. at 4--5.
Appellants dispute that the claims are directed to an abstract idea.
App. Br. 10. Appellants assert that "the claims are directed to path planning
in an endoscopic procedure, not to selecting and connecting points, as
suggested by the Examiner." Id. Appellants also assert that none of the
steps ... can be performed mentally or on paper [because] high level image
processing is required for each of these steps." Id. Appellants further
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contend that "the claims amount to significantly more than the steps of
selecting a point in an image and connecting points in an image," because
"[t]he centering of the selected point (control point) and the rotation of a
field of view around the control point actually change the image presented,"
and these changes "cannot be performed in the mind or on paper." Id.
Finally, Appellants contend that the claims recite methods and systems that
"provide a complete planned path that facilitates an endoscopic procedure
which is a real-world application, and not an abstract idea." Id. In response
to this point, the Examiner asserts that the claims are not limited to
endoscopic procedures. Ans. 11.
The Examiner implicitly focuses the analysis on claim 1. See Final
Act. 4 (addressing the recited "method" comprising the steps of, i.e.,
defining a point and moving an image to center the point). We do likewise.
Having considered the determinations presented by the Examiner and
Appellants' arguments addressed thereto, we are not persuaded that claim 1
is directed to patent-ineligible subject matter under 35 U.S.C. § 101.
Specifically, we are not persuaded that claim 1 is directed to an abstract idea,
as the Examiner determines.
The Examiner expressly premises the abstract-idea determination on
claim 1 being directed to a method of organizing human activity. But as the
recent Patent Eligibility Guidance makes clear, not all methods of organizing
human activity are considered abstract ideas. Rather, a method constitutes
an abstract idea if it can be considered: ( 1) a fundamental economic
principle or practice; (2) a commercial or legal transaction; or (3) managing
personal behavior or relationships or interactions between people. Patent
Eligibility Guidance, 52. The method of claim 1 does not reasonably fall
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into any of these groupings, as it does not recite any economic, commercial,
legal, managerial, or interpersonal activities.
The Examiner further asserts that the method of claim 1 can be
performed with pen and paper. Final Act. 4. Specifically, the Examiner
states that the method can be performed with a paper having a drawing "of
some lumen (tube shaped object)," defining a control point on the paper,
moving the paper to be centered in the field of view, rotating the paper,
defining another point on the paper, and drawing a line between the two
points. Id. We agree with this assessment. In particular, the step of
"presenting ... a 2D sectional image" can be performed by obtaining an
image on paper. The steps of "defining a control point on the 2D sectional
image" and "presenting a new image centered at the control point" can be
performed by drawing a point on the first paper image and obtaining a
second paper image with that point at the center. The steps of "identifying a
second point" and "extending a planned path connecting the control point
and second point" can be performed by drawing a second point on the paper
image and drawing a line that connects the two points. Therefore, these
steps can arguably be performed in a human mind and can be considered
mental processes. As such, claim 1 recites an abstract idea.
Regarding Prong Two of the analysis, however, we determine that the
abstract idea is integrated into a practical application. Specifically, the path-
finding method of claim 1 is limited to the use of a "2D sectional image"
obtained from a "preoperative CT scan" of a "patient's body lumen." Thus,
claim 1 is necessarily rooted in the technology used to perform medical CT
scans, and therefore integrates the recited abstract idea into a practical
application. Because we disagree with the Examiner that claim 1 is directed
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to an abstract idea, we do not sustain the Examiner's rejection of claims 1-
15 as directed to patent ineligible subject matter.
Claims 1-5 and 13-15-Rejected as
Unpatentable over Poole, Johnson, and McLain or Virtue
Claims 1, 13, and 14 are the independent claims on appeal.
Appellants argue the appealed claims collectively. App. Br. 11-13. We
select claim 1 as representative of the appealed claims, and decide the appeal
on the basis of claim 1 alone. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv). Having
considered all of Appellants' arguments and evidence of record, we are not
persuaded that the Examiner erred in rejecting claim 1 as unpatentable over
Poole, Johnson, and McLean or Virtue, and claims 2-5 and 13-15 fall
therewith. We address specific arguments for emphasis in our analysis
below.
The Examiner relies on Poole to teach most of the limitations of claim
1, including, inter alia, "adjusting a viewing angle about the control point to
show a longitudinal section of the body lumen responsive to a second user
input;" however, the Examiner finds Poole does not disclose: (1) presenting
a new image centered at the control point; and (2) adjusting a viewing angle
by rotating the field of view about a control point to show a longitudinal
section of the body lumen responsive to a second user input. 3 Final Act. 6-7
( emphasis added) ( citing Poole ,r,r 16, 20, 32, 59). The Examiner relies on
Johnson to teach presenting a new image centered at the control point. Id. at
7 (citing Johnson, 14: 13-25). For the adjusting step (and, in particular,
rotating the field of view), the Examiner relies on a combination of Poole,
3 For convenience, we will refer to this as the "adjusting step."
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Johnson, and either McLain or Virtue. Id. (citing McLean ,r,r 47, 62, 63,
172,208; Virtue ,r 36); Ans. 12-16 (citing Poole ,r,r 3, 16, 20, 32, 68, Figs. 5,
6B; Johnson, 3:65--4:3, 14:13-25, 45-57; McLain ,r 47; Virtue ,r,r 30, 37).
In particular, the Examiner finds that each of McLain and Virtue teach
"adjusting a viewing angle by rotating the field of view about a control
point. Final Act. 7 ( emphasis added) ( citations omitted). The Examiner
contends that "[i]t would have been prima facie obvious to one of ordinary
skill[] in the art at the time of invention to modify the method device of
[Poole] to include the features of [Johnson] in order to provide a better
viewing experience, and to include the features of [McLean and Virtue] in
order to provide additional viewing functions." Final Act. 7.
Appellants first argue that Johnson does not teach rotating a view
about a control point, because it "provides only cross-sections in fixed
orientations: axial, coronal, and sagittal (based on patient orientation)," and
"views orthogonal to the midline." App. Br. 12 ( citing Johnson, 9:53-56,
14:34--44, Fig. 4). Similarly, Appellants argue that Johnson does not teach
adjusting a viewing angle responsive to a user input, because "user inputs
are only used to traverse the colon and to select a location for a virtual
endoscope." Id. (citing Johnson, 13:24--14:13). These arguments are not
persuasive, because Johnson is not relied on, by itself, to teach rotating a
view about a control point or adjusting a viewing angle responsive to a user
input. The Examiner relies on Poole and McLean or Virtue to teach
adjusting a viewing angle by rotating the field of view about a control point,
combined with Johnson's teaching of rotatable views along a colon midline
(or centered at a control point). Final Act. 7 (citing McLean ,r,r 47, 62, 63,
172,208; Virtue ,r 36); Ans. 13-15 (citing Johnson, 3:65--4:3; McLean ,r 47;
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Virtue ,r,r 30, 37). See In re Keller, 642 F.2d 413,425 (CCPA 1981) (One
cannot show nonobviousness by attaching references individually when the
rejection is based on a combination of references.).
Appellants next argue that McLean does not teach adjusting a viewing
angle by rotating the field of view. According to Appellants, "McLain
rotates an image not a field of view," and "[r]otating the field of view results
in different structure appearing in the image, while rotating the image means
that the same structure is in the image at a different orientation." App.
Br. 12 (citing McLean ,r 47). But Appellants do not provide evidence of
persuasive technical reasoning to support these assertions. For example,
McLain differentiates between rotating and tilting an image. See McLain
,r 172. Although we appreciate that tilting an image will present the viewer
the same structure, but at a different orientation, Appellants do not
adequately explain why rotation of the image will not present a different
structure altogether. Appellants' response thus amounts to unsupported
attorney argument, and therefore we give it little weight. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997). Nor does Appellants' argument address
the Examiner's reliance on the combination of Poole and McLean to result
in the claimed limitation.
Appellants also argue that Virtue does not teach the adjusting step.
Appellants assert that:
Virtue rotates an image volume, not a field of view. An image
volume is a three-dimensional volume from which images may
be taken. A field of view is an area corresponding to an image.
App. Br. 12 (citing Virtue ,r 36). Again, however, Appellants do not support
these assertions with evidence or persuasive argument, and we give the
assertions little weight. For example, Appellants do not adequately explain
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why rotating a 3D image (i.e., imaging volume) does not present a different
structure to a viewer so that the viewer can obtain "images for an area of
interest." Virtue ,r 36. Appellants' argument does not address the
Examiner's reliance on the combination of Poole and Virtue to result in the
claimed limitation.
Appellants next contend that "neither McLain nor Virtue disclose or
suggest rotation of a field of view to show a longitudinal section of the
body lumen." Id. The Examiner responds that Appellants have not defined
"longitudinal section of the body lumen," and that Poole and Johnson,
combined with either McLean or Virtue, teach this limitation. Ans. 11-16.
In reply, Appellants asserts that the Specification does define this term.
Reply Br. 12. In support of this assertion, Appellants quote the following
passage from the Specification:
Responsive to this input, the processor 310 may calculate and
present at the display 340 an image 602 corresponding to a
section of the 3D image space at the new viewing angle. At this
angle, the bronchial airway appears as a dark channel 14A
between two lighter regions (the bronchial walls) 14B."
Id. ( quoting Spec. ,r 48). Appellants conclude from this passage that "a
longitudinal section is a sectional view of a lumen (bronchial airway)
showing the lumen channel between two lumen walls." Id.
This argument is not persuasive. First, the Examiner does not rely
solely on McLain or Virtue to teach rotation of a field of view to show a
longitudinal section of the body lumen. Rather, the Examiner relies on the
combination of all of the references to teach this limitation. Final Act. 6-7;
Ans. 11-16. Appellants do not expressly dispute the Examiner's reasons to
combine the references. Second, we agree with the Examiner that the
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Specification does not define this term. The excerpt that Appellants allege
provides such a definition does not use the term, much less specifically
define it.
Appellants ask us to define "longitudinal section of a body lumen" to
mean a longitudinal sectional view of a body lumen, which we understand to
mean that the longitudinal axis of the body lumen is substantially parallel to
the viewing plane. Reply Br. 12. But the Specification uses the term
"longitudinal section," Spec. ,r 48, not "longitudinal sectional view." We
thus understand the term to refer to a part of the body lumen itself, not to a
particular view of it. Therefore, we agree with the Examiner that both Poole
and Johnson teach displaying a longitudinal section of a body lumen. Ans.
12-14 (citing Poole ,r,r 3, 16, 20, 32, 68, Fig. 5; Johnson, 3:65--4:3, 14:45-
57).
Because we are not persuaded that the Examiner erred in rejecting
claims 1-5 and 13-15 as unpatentable over Poole, Johnson, McLain, and
Virtue, we sustain the rejection.
Remaining Rejections
Appellants do not separately address the rejections of claims 6-12.
Therefore, for the reasons set forth above, we likewise sustain the
Examiner's rejection of claims 6-8 and 10 as unpatentable over Poole,
Johnson, McLain or Virtue, and Akimoto; and the rejection of claims 9, 11,
and 12 as unpatentable over Poole, Johnson, McLain or Virtue, and Soper.
DECISION
For the above reasons, we: (1) reverse the Examiner's rejection of
claims 1-15 as being directed to ineligible subject matter; (2) affirm the
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Examiner's rejection of claims 1-5 and 13-15 as unpatentable over Poole,
Johnson, McLain, and Virtue; (3) affirm the Examiner's rejection of claims
6-8 and 10 as unpatentable over Poole, Johnson, McLain or Virtue, and
Akimoto; and (4) affirm the Examiner's rejection of claims 9, 11, and 12 as
unpatentable over Poole, Johnson, McLain or Virtue, and Soper.
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)(l )(iv).
AFFIRMED
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