Ex Parte Samset et al

Patent Trials and Appeals Board

Jun 25, 2019

14141752 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/141,752 12/27/2013
45436 7590 06/27/2019
DEAN D. SMALL
THE SMALL PA TENT LAW GROUP LLC
225 S. MERAMEC, STE. 725T
ST. LOUIS, MO 63105
FIRST NAMED INVENTOR
Eigil Samset
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.
267336 (553-1999US1) 3658
EXAMINER
MEHL, PATRICK M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
Docket@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EIGIL SAMSET and GEIR ULTVEIT HAUGEN 1
Appeal2017-006971
Application 14/141,752
Technology Center 3700
Before ULRIKE W. JENKS, TA WEN CHANG, and DAVID COTTA,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
system or method for tracking a probe, which have been rejected as obvious
and as being directed to patent ineligible subject matter. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants identify the Real Party in Interest as General Electric Company.
(Br. 4.)
Appeal2017-006971
Application 14/141,752
STATEMENT OF THE CASE
The Specification states that the invention "relates generally to a
system and method for tracking an invasive device using ultrasound position
signals." (Spec. ,r 1.)
Claims 24--41 are on appeal. Independent claims 24 and 3 5 are
illustrative and reproduced below:
24. A system for tracking an invasive device, the system
compnsmg:
an ultrasound probe configured to be inserted into a
patient's body, the ultrasound probe comprising an array
including a plurality of transducer elements, wherein the array
is configured both for acquiring ultrasound image data and for
tracking a position of the ultrasound probe;
a display device;
a localization system comprising:
a substrate configured to be externally attached to
the patient;
an ultrasound transducer module comprising at
least one transducer element attached to the substrate,
where the ultrasound transducer module is configured to
communicate ultrasound signals with the array; and
a connector device electrically connected to the
ultrasound transducer module;
and
a processing unit in electronic communication with the
ultrasound transducer module, the display device and the
ultrasound probe, wherein the processor is configured to:
determine a position of the ultrasound probe based
on the ultrasound signals communicated between the
array and the at least one transducer element attached to
the substrate;
2
Appeal2017-006971
Application 14/141,752
generate an ultrasound image based on the
ultrasound image data acquired by the array;
display the ultrasound image on the display device;
and
display the position of the ultrasound probe on the
display device based on the ultrasound signals
communicated between the array and the at least one
transducer element attached to the substrate.
35. A method of tracking a position of a probe, the
method comprising:
attaching a first plurality of transducer elements to the
outside of a patient;
positioning an ultrasound probe inside the patient, where
the ultrasound probe comprises an array including a second
plurality of transducer elements;
communicating ultrasound signals between the array and
the first plurality of transducer elements;
determining with a processing unit a position of the
ultrasound probe based on the ultrasound signals communicated
between the array and the first plurality of transducer elements;
and
displaying the position of the ultrasound probe on a
display device.
(Br. 28-29, 30 (Claims App'x).)
The Examiner rejects claims 24--41 under 35 U.S.C. § 101 as being
directed to judicial exceptions to patent eligible subject matter without
significantly more. (Ans. 4.)
The Examiner rejects claims 24--29 and 31--41 under 35 U.S.C. § 103
as being unpatentable over Vesely2 and Lichtenstein. 3 (Ans. 6.)
2 Vesely et al., US 6,246,898 Bl, issued June 12, 2001.
3 Lichetenstein, US 2010/0191101 Al, published July 29, 2010.
3
Appeal2017-006971
Application 14/141,752
The Examiner rejects claim 30 under 35 U.S.C. § 103 as being
unpatentable over Vesely, Lichtenstein, and Friemel. 4 (Ans. 10.)
I.
Issue
The Examiner has rejected claims 24--29 and 31--41 as obvious over
Vesely and Lichtenstein and claim 30 as obvious over Vesely, Lichtenstein,
and Friemel. The same issues are dispositive for both rejections; we
therefore discuss them together.
The Examiner finds that Vesely teaches almost all of the limitations of
independent claim 24, except that it does not explicitly teach an ultrasound
probe as the invasive device. (Ans. 7 .) However, the Examiner finds that
Vesely teaches "invasive instruments that can be inserted into the patient,
such as a probe or other device used in a surgical or diagnostic procedure,"
as well as "imaging modality systems, such as 2D and 3 D ultrasound
devices." (Id.)
The Examiner concludes that it would have been obvious to a skilled
artisan to use "an ultrasound probe comprising an array including a plurality
of transducer elements, wherein the array is configured both for acquiring
ultrasound image data as the invasive device, and [to] generate an ultrasound
image based on the ultrasound image data acquired by the array," as required
by claim 24. (Id.) The Examiner finds that "[t]he motivation for doing so is
that ultrasound probes allow one to image within the body and provide
information to the clinician to make a diagnosis." (Id.)
4 Friemel et al., US 2003/0055308 Al, published Mar. 20, 2003.
4
Appeal2017-006971
Application 14/141,752
In addition, the Examiner finds that Lichtenstein teaches the claim 24
limitations relating to the ultrasound probe and generating and displaying an
ultrasound image based on data acquired by the probe. (Id. at 7-8.) The
Examiner concludes that it would have been obvious to a skilled artisan to
modify Vesely to include the ultrasound probe taught by Lichtenstein,
because "Lichtenstein and Vesely are in the art of tracking invasive devices
in the body, and the probe of Lichtenstein would provide a method 'to
reconstruct the 3-D shape of the surface' in the body." (Id. at 8.)
Appellants contend that Vesely does not teach, and in fact teaches
away from, an ultrasound probe comprising an array "configured both for
acquiring ultrasound image data and for tracking a position of the ultrasound
probe," as required by claim 24. ( Br. 18-19.) Appellants contend that
Lichtenstein teaches a position sensor and a separate transducer for
capturing ultrasound images and therefore does not remedy the deficiency in
Vesely. (Id. at 20.)
The issue with respect to both obviousness rejections is whether the
combination of Vesely and Lichtenstein suggests an ultrasound probe
comprising "an array ... configured both for acquiring ultrasound image
data and for tracking a position of the ultrasound probe."
Analysis
Claims 24--34, 36, and 37
On balance, we agree with Appellants that the Examiner has not
established a prima facie case that claims 24--29, 31-34, 36, and 37 are
obvious over Vesely and Lichtenstein or that claim 30 is obvious over
Vesely, Lichtenstein, and Friemel. In particular, the Examiner has not
established that the prior art suggests an ultrasound probe comprising "an
5
Appeal2017-006971
Application 14/141,752
array including a plurality of transducer elements, wherein the array is
configured both for acquiring ultrasound image data and for tracking a
position of the ultrasound probe" ( claim 24 and dependent claims), or an
array of transducer elements that both communicates ultrasound signals for
determining the position of the probe and is also "configured to acquire
ultrasound image data" ( claims 3 6 and 3 7).
The Examiner does not appear to have explicitly addressed these
limitations in the Final Rejection. In response to Appellants' arguments in
the Appeal Brief, however, the Examiner asserts in the Answer that
Vesely teaches ... a probe for surgical and/or diagnosis
purposes, where the mobile ultrasonic transducers are fitted
which broadly reads on an ultrasound probe with either
treatment or diagnosis/imaging capability with ultrasound
transducers as positioning beacons for tracking the probe. . ..
The secondary reference Lichtenstein teaches a diagnostic
ultrasound imaging probe with an array of two transducers, the
array being broadly interpreted as a fixed geometrical
arrangement, one ultrasound imaging transducer for imaging
the surrounding tissue and one for positioning/tracking the
probe, where the choice of the tracking transducer as ultrasound
beacons is an arbitrary design consideration as taught by
Lichtenstein and by Vesely for mounting the moving ultrasound
trackers in the diagnostic probe. Therefore, it would have been
obvious for a person of ordinary skill in the art to have
combined both Vesely and Lichtenstein to have the diagnostic
imaging ultrasound probe with its array of transducers
configured for the acquiring ultrasound image data and
therefore for tracking the position of the ultrasound probe
relatively to the surrounding tissue since the choice of the
configuration of the ultrasound probe such as an imaging probe
is an arbitrary design consideration as taught by Vesely and by
Lichtenstein.
(Ans. 14--15 (citations omitted).)
6
Appeal2017-006971
Application 14/141,752
We are not persuaded. While we agree that the combination of
Vesely and Lichtenstein teaches an ultrasound probe configured both for
acquiring ultrasound image data and for tracking the position of the probe,
the claims at issue require that these functions be performed by the same
array of transducer elements of the ultrasound probe.
The Examiner first appears to assert that (1) the imaging and position
transducers of Lichtenstein's imaging ultrasound probe forms an array,
which may be broadly interpreted as "a fixed geometrical arrangement"; (2)
Lichtenstein teaches that any type of positional transducer may be used in its
invention; (3) Vesely teaches that ultrasound transducers on the probe may
be used to locate the probe; and (4) therefore, a skilled artisan would find it
obvious to use a ultrasound probe comprising an array of transducers
"configured both for acquiring ultrasound imaging data and for tracking a
position of the ultrasound probe," because the references show that "the
choice of the configuration of the ultrasound probe such as an imaging probe
is an arbitrary design consideration." (Id.; see also id. at 16.)
The Examiner fails to provide persuasive evidence, however, that the
imaging and position transducers of Lichtenstein's probe constitutes an array
within the meaning of the claims at issue. "It is axiomatic that, in
proceedings before the PTO, claims in an application are to be given their
broadest reasonable interpretation consistent with the specification and that
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Sneed, 710 F.2d 1544,
1548 (Fed. Cir. 1983) ( citation omitted).
In this case, Lichtenstein teaches that its position and ultrasonic
transducers are part of two separate subsystems (i.e., the position sensing
7
Appeal2017-006971
Application 14/141,752
and ultrasonic imaging subsystems) that are electrically isolated from each
other. (Lichtenstein Abstract.) The Specification suggests that a skilled
artisan would not consider such separate transducers to be part of the same
array, stating, for instance, that "[t]he device transducer elements 22 may be
arranged in an array, or the device transducer elements 22 may be separated
from each other on the invasive device 18." (Spec. ,r 27 ( emphasis added).)
The Examiner has not provided persuasive explanation or evidence that a
skilled artisan would in fact consider Lichtenstein's position and ultrasonic
transducers to be part of an array when the term is given its broadest
reasonable interpretation consistent with the specification. Without further
explanation of the Examiner's reasoning, we are not persuaded by the
Examiner's assertion that "the choice of the configuration of the ultrasound
probe such as an imaging probe is an arbitrary design consideration as taught
by Vesely and by Lichtenstein." (Ans. 15.) "[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir.
2006).
The Examiner further asserts that
Vesely shows that the use of both [image transducer] "1702" and
[position transducers] "1706" is sequentially [sic] but using [sic] the
configuration of Fig. 17 A to maintain the orientation of the ultrasound
beam known relatively to the positioning transducers "1706", which
fixed geometrical arrangement reasonably suggests a fixed array of
transducers during the performance of the ultrasound probe for
acquiring image data and tracking the position and orientation of the
ultrasound probe with both sets of transducers capable to transmit two
different sets of ultrasound signals for imaging (1702 transducers) and
8
Appeal2017-006971
Application 14/141,752
for tracking (1706 transducer as beacons being received by the
reference transducers as in col. 13 4th iD. Vesely therefore teaches a
combination of imaging and ultrasound tracking beacons as an
arbitrary design consideration for the diagnostic imaging ultrasound
probe. Therefore, the examiner maintains that the combination of
references teaches and/or makes obvious the claimed limitations.
(Ans. 15-16.)
Vesely's Figure 17 A is reproduced below:
FlG, l?A
(Vesely Fig. 17 A.) Figure 1 7 A is a perspective view of an ultrasound
imaging head 1700, where the imaging head has "a window through which
ultrasound is transmitted and received by an image transducer 1702" and is
"fitted with a transducer housing 1704 which clips to imaging head" and
which "holds three or more position transducers 1706." (Id. at 5: 16-17,
30:38-51.)
To the extent the Examiner asserts that image transducer 1702 and
position transducers 1706 are part of the same array, the Examiner has not
persuaded us that a skilled artisan would understand these separate
transducers to be part of an "array" when the term is given its broadest
reasonable interpretation consistent with the Specification, for the same
reasons already discussed above with respect to Lichtenstein.
9
Appeal2017-006971
Application 14/141,752
To the extent the Examiner asserts that the "fixed geometrical
arrangement" of the image transducer 1702 and position transducers 1706 is
not an "array" but would suggest to a skilled artisan the claimed "array ...
of transducer elements ... configured both for acquiring ultrasound image
data and for tracking a position of the ultrasound probe," or that the
arrangement of the imaging and position transducer elements is merely an
arbitrary design consideration, we are not persuaded because the Examiner
has not provided sufficient articulated reasoning, or rational underpinning
for such reasoning, to support his conclusions. KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir.
2006).
Accordingly, we reverse the Examiner's rejection of claims 24, 36,
and 37. We also reverse the Examiner's rejection of claims 25-34, which all
depend directly or indirectly from claim 24. In re Fine, 837 F.2d 1071, 1076
(Fed. Cir. 1988) ("Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious. ").
Claims 3 5 and 3 8--41
Appellants do not provide any substantive arguments with respect to
the rejection of claims 35 and 38--41 as obvious over Vesely and
Lichtenstein. 5 Thus, we summarily affirm the Examiner's rejection as to
these claims.
5 We note that independent claim 3 5 and dependent claims 3 8--41 do not
recite a limitation relating to an array of transducer elements "configured
both for acquiring ultrasound image data and for tracking a position of the
ultrasound probe."
10
Appeal2017-006971
Application 14/141,752
Issue
II.
The Examiner has rejected claims 24--41 under 35 U.S.C. § 101 as
being directed to judicial exceptions to patent eligible subject matter without
significantly more. The Examiner asserts that the claims recite a
mathematical operation, i.e., determining the position of the ultrasound
probe based on the ultrasound signals communicated between transducers on
the probe and transducer( s) attached to a substrate, as well as mental
activity. (Ans. 4.)
The Examiner asserts that the additional elements in the claim, e.g.,
collecting data in a patient's body with an ultrasound probe with a
transducer array, attaching transducer(s) to the patient using a substrate,
generate images based on ultrasound data, and displaying information,
amount to no more than insignificant extra-solution activity and/or "general
instructions to apply or use the judicial exception(s) in a particular
technological environment (e.g., medical diagnostics). (Id. at 5.) The
Examiner asserts that the claims do not use the information produced by the
abstract idea to "generate an effect outside of a computer" or "provide any
'improvement' to [a] technology." (Id.) Finally, the Examiner asserts that
"[t]he generically recited processing unit (elements) are all well-understood
elements and/or computer components performing functions that are routine
and conventional in the art." (Id.)
Appellants contend that the claims are not directed to an abstract idea
as alleged by the Examiner and that, even if they were directed to judicial
exception(s), the claims recite significantly more than the judicial
exception(s). (Appeal Br. 12-16.)
11
Appeal2017-006971
Application 14/141,752
The issue with respect to this rejection is whether the claims are
directed to a judicial exception without significantly more.
Analysis
\Ve analyze this case under the framework set fmih by the Supreme
Court in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012), and applied by our reviewing court in Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015). As the Ariosa court
explained:
In Mayo ... , the Supreme Court set forth a framework for
distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts. First, we
determine whether the claims at issue are directed to a
patent-ineligible concept. . . . If the answer is yes, then
we next consider the elements of each claim both
individually and "as an ordered combination" to determine
whether additional elements "transform the nature of the
claim" into a patent-eligible application .... The Supreme
Court has described the second step of this analysis 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 1375.
lviayo Step One: vVhether Claim l Is Directed to Abstract Idea
\Ve begin with the first step of the Aiayo test, namely whether a claim
is "directed to" a patent-ineligible concept. On January 7, 2019, the Director
of the US PTO issued the "2019 Revised Patent Subject l\tfatter Eligibility
Guidance" ("Revised Guidance"), which provides further details regarding
12
Appeal2017-006971
Application 14/141,752
how the Patent Office analyzes patent-eligibility questions under 35 U.S.C.
§ 101. 84 Fed. Reg. 50----57 (Jan. 7, 2019). Under the Revised Guidance, the
first step of the A;Jayo test (i.e., Step 2A of the Revised Guidance) is "a two-
pronged inquiry." Id. at 54. In prong one, we evaluate whether the claim
recites a judicial exception, such as laws of nature, natural phenomena, or
abstract ideas. Id. If the claim recites a judicial exception, the claim is
further analyzed under prong two, which requires "evaluat[ion of] whether
the claim recites additional elements that integrate the exception into a
practical application of that exception." id. The Revised Guidance explains
that, "[i]f the recited exception is integrated into a practical application of
the exception, then the claim is eligible at Prong Two of . .. Step 2A [ of the
Revised Guidance]." Id.
First Prong cfRevised Guidance Step 2A
\Vith respect to the first prong of Step 2A of the Revised Guidance,
we agree with the Examiner that claims recite a mathematical concept and/or
mental activity, which is an abstract idea. 84 Fed. Reg. 52. In particular,
independent claims 24 and 35 recite, respectively, "determin[ing] a position
of the ultrasound probe based on the ultrasound signals comrnunicated
between the an-ay and the at least one transducer element attached to the
substrate" and "detennining with a processing unit a position of the
ultrasound probe based on the ultrasound signals communicated between the
array and the first plurality of transducer elements." (Br. 28-29, 30 (Claims
App'x).) As explained in the Specification, this determination is made
through triangulation, a mathematical calculation that can be perfonned in
the hmnan mind, based on the time it takes for ultrasound signals to be
13
Appeal2017-006971
Application 14/141,752
communicated between the transducer(s) on the probe and the transducer(s)
external to the patient: "As long as at least three of the transducer elements
[ external to the patient] are positioned in different three dimensional
positions with respect to the invasive device ... being tracked, the
processing unit ... can triangulate the position of the invasive device" with
respect to the externally positioned transducer elernents. (Spec. ,i150-51;
see also id. ii,r 60----61 . )
Having detennined that the claims arguably recite an abstract concept,
we turn next to the second prong of Revised Guidance Step 2A.
Second Prong qf Revised Guidance Step 2A
The second prong of Step 2A asks whether the claims as a whole
integrate the judicial exception into a practical application of the exception,
first by "[i]dentifying whether there are any additional elements recited in
the claim beyond the judicial exception(s)," then by "evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application." Revised Guidance,
84 Fed. Reg. at 54-55.
In this case, the elements recited in independent claim 24 beyond the
mathematical calculations include: (1) an ultrasound probe configured to be
inserted into a patient's body, comprising an array of transducer elements
configured both to acquire image data and track probe position; (2) "a
display device"; (3) "a substrate configured to be externally attached to the
patient," comprising an ultrasound transducer module configured to
communicate with the probe; (5) "a connector device electrically connected
to the ultrasound transducer module"; and (6) a processing unit that, in
14
Appeal2017-006971
Application 14/141,752
addition to determining the position of the probe, is configured to generate
and display ultrasound image based on data acquired by the probe as well as
display the position of the ultrasound probe based on the signals
communicated between the transducers on the probe and substrate. (Br. 28
(Claims App'x).) Likewise, the steps recited in claim 35 that go beyond the
mathematical calculations include: (1) "attaching a ... plurality of
transducer elements to the outside of a patient"; (2) positioning an
ultrasound probe comprising an aITay of transducer elements inside the
patient; (3) communicating ultrasound signals between the probe array and
transducer elements attached to the outside of the patient; and (4)
"displaying the position of the ultrasound probe on a display device." (Id. at
30 (Claims App'x).)
Evaluating these additional elements in combination, we conclude that
the claims as a whole integrate the recited mathematical calculations (i.e.,
triangulation) into a practical application. In particular, the additional
elements of the claims implement the judicial exception (i.e., the
mathematical concept of triangulation) with a particular machine (i.e., an
ultrasound probe) that is integral to the claim. Revised Guidance, 84 Fed.
Reg. at 55 (explaining that "[a]n additional element imp1ement[ing] a
judicial exception with, or uses a judicial exception in conjunction with, a
paiiicular machine or manufacture that is integral to the claim" may
integrate the judicial exception into a practical application).
Accordingly, we reverse the Examiner's rejection of claims 24 and 35
as directed to patent-ineligible subject matter without significantly more.
We reverse the Examiner's rejection of claims 24--34 and 36-41, which all
depend directly or indirectly from claims 24 or 35, for the same reasons.
15
Appeal2017-006971
Application 14/141,752
SUMMARY
For the reasons above, we reverse the Examiner's decision rejecting
claims 24--34, 36, and 37. We summarily affirm the Examiner's decision
rejecting claims 35 and 38--41.
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-IN-PART
16