Ex Parte Samset et alDownload PDFPatent Trials and Appeals BoardJun 25, 201914141752 - (D) (P.T.A.B. Jun. 25, 2019) Copy Citation 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 Copy with citationCopy as parenthetical citation