Ex Parte Mollus et al

Patent Trial and Appeal BoardFeb 22, 2016

12920327 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/920,327 08/31/2010 Sabine Mollus 24737 7590 02/24/2016 PHILIPS INTELLECTUAL PROPERTY & STANDARDS P.O. BOX 3001 BRIARCLIFF MANOR, NY 10510 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. 2008P00122WOUS 2695 EXAMINER ALMAN!, MOHSEN ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 02/24/2016 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): debbie.henn@philips.com marianne.fox@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SABINE MOLL US and JUERGEN WEESE Appeal2014-002680 Application 12/920,327 Technology Center 2100 Before ALLEN R. MacDONALD, BRUCE R. WINSOR, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-002680 Application 12/920,327 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. THE INVENTION The application is directed to selectively and interactively processing data sets. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for selectively and interactively processing data sets and configured for: gathering a first data set; gathering a second data set; determining a first feature in the first data set on the basis of an interactive selection; and identifying a second feature in the second data set such that the first feature in the first data set selectively corresponds to the second feature in the second data set, said apparatus further configured such that at least one of: a) said determining operates on an angiography data set rather than a tissue characterizing data set; and b) said identifying, based on the determined feature, operates on an angiography data set rather than a tissue characterizing data set. 1 Appellants identify Koninklijke Philips Electronics N.V. as the real party in interest. (App. Br. 3.) 2 Appeal2014-002680 Application 12/920,327 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Philippe St-Jean, et al., Automated Atlas Integration and Interactive Three-Dimensional Visualization Tools for Planning and Guidance in Functional Neurosurgery, IEEE Transactions on Medical Imaging, Vol. 17, No. 5, pp. 672-80 (Oct. 1998) Cemil Kirbas and Francis Quek, A Review of Vessel Extraction Techniques and Algorithms, ACM Computing Surveys, Vol. 36, No. 2, pp. 81-121(June2004) THE REJECTIONS2 1. Claims 1-5, 8, 12-14, and 19 each stand rejected under 35 U.S.C. Â§ 101 on the grounds that the claimed invention is directed to non- statutory subject matter. 2. Claims 1-20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over St-Jean and Kirbas. 3 APPELLANTS' CONTENTIONS Appellants' arguments can be summarized as follows: 1. Claims 1-5, 8, 12-14, and 19 are directed to patent eligible subject matter because they are drafted in accordance with "conventional U.S. patent practice," claims have issued to others in similar forms, and an "apparatus" is not purely software. (App. Br. 6-10.) 2 See Final Act. 3--4. 3 Claim 20 is also objected to as being of improper dependent form for failing to further limit the parent claim. (See Final Act. 3.) The objection is petitionable matter and, therefore, not before us. See MPEP Â§ 1201. 3 Appeal2014-002680 Application 12/920,327 2. The cited art does not teach or suggest "the first feature" or "the second feature." (App. Br. 10-13.) 3. For claim 5, the prior art does not teach or suggest "a point of interest on the vessel tree." (App. Br. 17-18.) 4. For claim 7, the prior art does not teach or suggest that "processing the angiography data set generates a correlation between vessel segments and territories fed by the respective vessel segments" and that "the generation of the correlation ... is based on a local flow fraction measured within the vessel segments." (App. Br. 13-15; Reply Br. 12-13.) 5. For claim 13, the prior art does not teach or suggest "determining a first feature in the first data set." (App. Br. 18-19.) 6. For claim 15, the prior art does not teach or suggest "said identifying following said determining automatically and without need for user intervention." (App. Br. 16-17.) ANALYSIS We address Appellants' arguments below, organized by the claims to which they apply. Claims 1, 3-5, 8, 12-14, 19 Appellants argue that the rejection of these claims was improper because the Examiner imposed an "imaginary criterion" in requiring the recitation of a hardware component in the claim and because the claims recite "an apparatus rather than a computer program." (App. Br. 6, 9.) We disagree. 4 4 Claim 2, in which the apparatus of claim 1 is "configured for visualizing," was also rejected under Section 101. (See Final Act. 4.) Because we sustain 4 Appeal2014-002680 Application 12/920,327 These claims do not use the well-defined terms of the statute, i.e., "machine" and "manufacture." Instead, they use the broader term "apparatus," the definitions of which include not only "machinery," but also "any system or systematic organization of activities, functions, processes, etc., directed towards a specific goal: the apparatus of government; espionage apparatus." The Random House Dictionary of the English Language, p. 100 (1987). Accordingly, the Examiner has reasonably construed these claims as being directed to software only, without any hardware and, as such, these claims "are not directed to any tangible embodiment of this information (i.e., in physical memory or other medium) or claim any tangible part of the digital processing system" but "are instead directed to information in its non- tangible form." Digitech Image Tech., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, 1349 (Fed. Cir. 2014); see Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007) (explaining that "[a]bstract software code is an idea without physical embodiment"). We conclude that, as in Digitech, the scope of these claims impermissibly extends beyond that of patent eligible subject matter. Citing a string of unrelated U.S. Patents, Appellants argue that the "imaginary criterion of the Advisory Action conflicts with conventional U.S. Patent practice." (App. Br. 7.) We do not accept that the four patents identified are representative of "conventional U.S. Patent practice" and, in any event, this argument is unpersuasive because "[i]t is immaterial in ex the prior art rejection of this claim below, we do not decide whether "configured for visualizing" would be sufficient to confer patent eligibility. 5 Appeal2014-002680 Application 12/920,327 parte prosecution whether the same or similar claims have been allowed to others." In re Wertheim, 541F.2d257, 264 (CCPA 1976). Appellants also argue that the Field of Invention, which states "the present invention relates to an apparatus adapted to perform such a method [and] a computer program adapted to perform such a method when executed on a computer," shows that the claimed apparatus is more than software. (See App. Br. 8.) We disagree because this language does not require mutual exclusivity (i.e., the "computer program" could be a subset of "apparatus"), meaning that the "apparatus" may still include within its scope unpatentable subject matter. For these reasons, we sustain the rejections of claims 1, 3-5, 8, 12-14, and 19 under Section 101 and, as a result, we do not reach the prior art rejections of claims 3-5, 8, 12-14, and 19. See In re Comiskey, 554 F.3d at 967, 973 (Fed. Cir. 2009) (declining to reach the obviousness rejections after finding claims nonstatutory). Claims 1, 2, 6, 9-11, 16--18, and 20 For these claims, Appellants argue that the prior art does not teach or suggest "the first feature" or "the second feature." (See App. Br. 12.) The Examiner explains that "one set of data in St-Jean is patient data, the other set of data is atlas or standard data for comparison, [the] selected feature in one set of data is the injured region or defined potential lesions in patient data and the second feature is the corresponding region in the atlas data." (Ans. 6, emphasis added.) In the Reply, Appellants characterize the Examiner's explanation as follows: "according to the Examiner's Answer, 'the first feature' is presumably the lesion in St-Jean Fig. 10 and 'the second feature' is presumably the right Gpm in Fig. 10." (Reply Br. 10.) 6 Appeal2014-002680 Application 12/920,327 Appellants then go on to explain in detail why the Examiner's explanation, as re-formulated by Appellants, cannot be correct. (See id. at 10-12.) Appellants' argument is unpersuasive because it fails to squarely address the Examiner's analysis. The Examiner found "the first feature" to be "the injured region or defined potential lesions in patient data" and "the second feature" to be "the corresponding region in the atlas data." (Ans. 6.) Appellants offer only what amounts to a straw man argument. With respect to claim 1, we agree with the Examiner's findings that St-Jean teaches gathering a first data set (e.g., the patient data); gathering a second data set (e.g., the atlas or standard data); determining a first feature in the first data set on the basis of an interactive selection (e.g., the injured region or potential lesions in the patient data); and identifying a second feature in the second data set such that the first feature in the first data set selectively corresponds to the second feature in the second data set (e.g., the corresponding region in the atlas or standard data). (See Ans. 5 (discussing St-Jean's "interactive visualization platform").) We further agree that the references teach "at least one of' the determining or identifying operating on an angiography data set, as St-Jean teaches future inclusion of "vascular information in the form of 3-D MR angiograms" and Kirbas teaches extraction of vessel models. (See Ans. 7.) We also agree with the Examiner that, in light of the express teaching in St-Jean of incorporating vascular data, it would have obvious to use such data obtained by the methods described in Kirbas in St-Jean's visualization platform, to obtain a system that would advantageously work on both types of data sets. (See Final Act. 2-3.) 7 Appeal2014-002680 Application 12/920,327 The "feature" claim terms would encompasses anything of interest in a first data set (e.g., a structure of the brain of interest) and anything in the second data set corresponding to the first feature (e.g., the region of the brain containing the structure of interest), and "determining" and "identifying" are sufficiently nebulous that the claims would cover essentially any use of corresponding data sets where one is angiography data. For these reasons, we sustain the rejection of claim 1 and, as no other arguments are offered for claims 2, 6, 9-11, 16-18, and 20, we affirm the rejection of those claims as well, for the same reasons. Claim 7 Claim 7 requires that "processing the angiography data set generates a correlation between vessel segments and territories fed by the respective vessel segments" and that "the generation of the correlation ... is based on a local flow fraction measured within the vessel segments." For this claim language, the Examiner cites Kirbas, noting that it "explicitly discloses flow measurements for relating two vessel segments throughout the disclosure." (Ans. 8.) Appellants respond that this does not correspond to the claim language. (See Reply Br. 14.) We agree with Appellants. The claim requires correlation between vessel segments and territories they feed. As the Examiner does not purport to find a correlation with territories fed in the references, we do not sustain the rejection of claim 7. Claim 15 Claim 15 requires that "said identifying follow[ s] said determining automatically and without need for user intervention." The Examiner points to St-Jean's Abstract, which states "[t]he volumetric atlas can be automatically deformed to an individual patient's MRI." (Ans. 10.) That 8 Appeal2014-002680 Application 12/920,327 passage refers to operation of the "ANIMAL" algorithm, which "computes nonlinear transformation to register one MRI (the patient image) to a second prelabeled target MRI that serves as a canonical atlas." (St-Jean 675.) Appellants argue that the Examiner's analysis is incorrect because "the automatic deforming initializes and therefore inherently precedes the user interaction described in St-Jean." (Reply Br. 12.) We agree with the Examiner. The reference explains that ANIMAL is used to automatically map the atlas MRI to the patient MRI without human intervention. (See St-JohnÂ§ II.D.) The visualization platform is then used to display 2-D or 3-D superimposed images, including the MRI and the mapped atlas MRI. (See St-JohnÂ§ II.D.) When a user makes an interactive selection of a feature in the first data set (e.g., the patient MRI image), the system is configured, as a result of the automatic ANIMAL mapping, to automatic display the corresponding second feature of the second data set (e.g., the atlas). We thus sustain the rejection of claim 15. DECISION For the reasons set out above, we affirm the Examiner's decision to reject claims 1---6 and 8-20, and reverse the Examiner's decision to reject claim 7. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 9