Ex Parte Robb et al

Patent Trial and Appeal Board

Aug 31, 2017

14115688 (P.T.A.B. Aug. 31, 2017)

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.
14/115,688 02/05/2014 Richard A. Robb 630666.00449 9901
26710 7590 09/05/2017
QUARLES & BRADY LLP
Attn: IP Docket
411 E. WISCONSIN AVENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
BRIER, JEFFERY A
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD A. ROBB, SRINIVASAN RAJAGOPALAN,
RONALD A. KARWOSKI, and BRIAN J. BARTHOLMAI
Appeal 2017-003001
Application 14/115,688
Technology Center 2600
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
SCOTT B. HOWARD, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—16, which constitute all the
claims pending in this application. Final Act. 1; App. Br. 4.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We refer to Appellants’ Specification (“Spec.”) filed Oct. 22, 2015
(claiming benefit of US 61/483,811, filed May 9, 2011 andUS 61/518,424,
filed May 5, 2011) and Appeal Brief (“Br.”) filed Mar. 8, 2016. We also
refer to the Examiner’s Answer (“Ans.”) mailed July 28, 2016, and Final
Office Action (Final Rejection) (“Final Act.”) mailed Nov. 12, 2015.
Appeal 2017-003001
Application 14/115,688
Appellants ’ Invention
The invention generally relates to methods for analyzing in vivo tissue
volumes using medical imaging data, and in particular, computer-readable
media executing a method for receiving medical image data including
intensity-based tissue texture appearance data representing different tissue
types, segmenting (conducting segmentation) to delineate the different tissue
types, determining tissue groups by classifying the different tissue types and
differentiating the different tissue types using a similarity metric, clustering
the intensity-based tissue texture appearance data in the tissue groups
utilizing an unsupervised clustering technique, determining an amount of
data in each tissue group, and generating a report including a plurality of
shapes concurrently, the area of each shape being proportional to the amount
of data in a different one of the tissue groups. Spec. Tflf 3, 12—14; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A non-transitory computer-readable medium
having encoded thereon instructions which, when executed by at
least one processor, execute a method for generating a report,
comprising the steps of:
receiving, from a medical imaging machine, medical
image data including intensity-based tissue texture appearance
data having a plurality of data types each representative of a
different tissue type;
conducting segmentation to delineate the different tissue
types;
determining a plurality of tissue groups by classifying the
data types and differentiating the tissue types using a similarity
metric;
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clustering the intensity-based tissue texture appearance
data in the tissue groups using an unsupervised clustering
technique;
determining an amount of data in each tissue group; and
generating a report including a plurality of shapes
concurrently, the area of each shape being proportional to the
amount of data in a different one of the tissue groups.
Rejections on Appeal
1. The Examiner rejects claims 1—16 under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter.
2. The Examiner rejects claims 1—16 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
ISSUES
Based upon our review of the record, Appellants’ contentions, and the
Examiner’s findings and conclusions, the issue before us follows:
1. Did the Examiner err in rejecting claims 1—16 under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter?
2. Did the Examiner err in rejecting claims 1—16 under 35 U.S.C.
§ 112 as being indefinite?
ANALYSIS
The 35 U.S.C. § 101 Rejection
Appellants argue independent claims 1 and 12 together as a group
with respect to the § 101 rejection. See Br. 5—10. We select independent
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claim 1 as representative of Appellants’ arguments with respect to claims 1—
16. 37C.F.R. §41.37(c)(l)(iv).
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
The Examiner rejects the claims as being directed to patent ineligible
subject matter in that the claims are directed to an abstract idea “because the
claimed medical data is abstract generic data, the claimed steps performed
on the medical data are mathematical algorithms, and the claimed generating
a report is abstract” (Final Act. 9) and the “method claimed . . . can be
performed by [a] human mentally or with the aid of pencil and paper,”
which is abstract (Final Act. 9) and the claim limitations “do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the claimed computer-readable medium is a
conventional computer component” (Final Act. 11). Appellants contend that
the claims are “drawn to ‘significantly more’ than an abstract idea” (1)
because they tie a physical process to a mathematical formula (citing
Diamond v. Diehr, 450 U.S. 175 (1981)) (Br. 6); (2) “the algorithms are
performed on data made available from a medical device input” (citing In re
Abele, 684 F.2d 902 (CCPA 1982)) (Br. 6); (3) “the claimed subject matter
includes input from a physical device” (citing Digitech Image Technologies
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v. Electronics for Imaging, 758 F.3d 1344 (Fed. Cir. 2014)); (4) “the input
data was transformed” (citing Bilski v. Kappos, 561 U.S. 593 (2010)) (Br. 7—
8); and (5) “the underlying computer's operation is improved” (Br. 9).
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “Tong held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77—80 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts” {id.), e.g., to an
abstract idea. If the claims are not directed to an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’
to determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
Mayo, 566 U.S. at 78, 79).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
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or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Turning to the first step of the eligibility analysis, the Examiner finds
that claim 1 is directed to the abstract idea of manipulating medical data
using mathematical algorithms and then generating a report. Final Act. 9.
Appellants do not address the first eligibility analysis step. We agree with
the Examiner that the claims at issue are drawn to an abstract concept. The
Federal Circuit has ruled that claims covering the receipt, analysis, and
display of data were directed to abstract ideas. See, e.g., Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1047, 1054—56 & n.6 (Fed. Cir.
2017); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351—54 (Fed.
Cir. 2016); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1351-55 (Fed.
Cir. 2014); SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x
950, 951-52, 954—55 (Fed. Cir. 2014).
Additionally, as explained by the Examiner, the limitations of claim 1
may be performed strictly in the human mind. (Final Act. 9—10). ). “In a
similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Elec.
Power, 830 F.3d at 1354 (emphasis added); see also In re TLI Comm ’ns
LLC Patent Litig, 823 F.3d 607, 613 (Fed. Cir. 2016).
Having found Appellants’ claims are directed to an abstract concept
under Alice’s step 1 analysis, we next address whether the claims add
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significantly more to the alleged abstract idea. As directed by our reviewing
Court, we search for an ‘“inventive concept’ sufficient to ‘transform the
nature of the claim into a patent-eligible application.’” McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting Alice, 134 S. Ct. at 2355).
Turning to the second step of the eligibility analysis, the Examiner
finds that the limitations of claim 1 amount to no more than routine
conventional computer operations and components. Final Act 10—11; Ans.
8—13. We agree with the Examiner that the claims at issue do not amount to
significantly more than an abstract idea. The instant claims are akin to the
claims for analyzing information found to be abstract in Electric Power
Group, 830 F.3d at 1353, or the claims directed to image data processing
discussed in Digitech Image Technologies, LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (finding “a process that employs
mathematical algorithms to manipulate [data or information] to generate
additional information is [abstract and] not patent eligible”). See Elec.
Power Grp., 830 F.3d at 1353—54 (citing Digitech, 758 F.3d at 1351). As
explained by the Examiner (see Ans. 8—13), Appellants’ citations to
Diamond v. Diehr, In re Abele, Digitech Image Technologies, Bilski v.
Kappos, and The USPTO’s July 2015 Subject Matter Eligibility Guidance
(improvement of the underlying computer’s operation — see DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)) are
inapposite to the instant claims and Appellants misconstrue the cited
precedent.
Additionally, Appellants do not address any of the Examiner’s
additional findings and explanation in the Examiner’s Answer. Appellants
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did not file a reply brief addressing the Examiner’s additional findings and
clarified explanation or otherwise rebutting the findings and responsive
arguments made by the Examiner in the Answer.
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner’s rejection under § 101 of independent claims 1 and 12, and also
dependent claims 2—11 and 13—16, which fall with claims 1 and 12,
respectively.
The 35 U.S.C. § 112 Rejection
The Examiner rejects claims 1—16 as being indefinite. Final Act. 11—
13. Appellants contend the clustering step, referenced by the Examiner, is
clear. Br. 10—13. We agree with Appellants that the Examiner’s rejection is
in error (id.).
“[W]e apply the approach for assessing indefmiteness approved by the
Federal Circuit in Packard,[2] i.e., [“[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.” 751 F.3d at 1310, 1314. Put
differently, ‘claims are required to be cast in clear—as opposed to
ambiguous, vague, indefinite—terms.’ Id. at 1313; see also MPEP
§ 2173.02(1).” In re McAward, Appeal 2015-006416, 2017 WL 3669566,
*5 (PTAB Aug. 25, 2017) (precedential). The Examiner has not made
findings showing that what is being claimed would not have been clear to a
skilled artisan, but rather summarily concludes that “the method claimed in
claims 1-16 does not provide sufficient particularity and clarity to inform
skilled artisans of the bounds of the claim.” Final Act. 13 (citing Research
2 In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
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Corporation Technologies Inc. v. Microsoft Corp., 97 USPQ2d 1274 (Fed.
Cir. 2010) (internal quotations omitted). Appellants’ Specification describes
the clustering process, which lends clarity to the claims by showing that the
plain meaning of the clustering language in the claims is in fact what
Appellants intended to claim. See Spec. Tflf 13, 14, 44, 45, 48; Fig. 10. We
are, therefore, constrained by the record to find the Examiner erred in
rejecting claims 1—16 as indefinite.
CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1-16 under 35 U.S.C. § 101.
Appellant have shown that the Examiner erred in rejecting claims 1—
16 under 35 U.S.C. § 112, second paragraph.
DECISION
We affirm the Examiner’s rejection of claims 1—16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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