Ex Parte Weibrecht

Patent Trial and Appeal Board

Mar 14, 2017

13511018 (P.T.A.B. Mar. 14, 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.
13/511,018 05/21/2012 Martin Weibrecht 2009P01438WOUS 6258
24737 7590 03/16/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue LIN, JERRY
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
03/16/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN WEIBRECHT
Appeal 2016-003523
Application 13/511,01s1
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of correcting tracer-uptake measurements for a patient. The Examiner
rejected the claims on appeal as directed to patent-ineligible subject matter.
We affirm.
1 According to Appellant, the real party in interest is Koninklijke Philips
N.V. App. Br. 2.
Appeal 2016-003523
Application 13/511,018
STATEMENT OF THE CASE
The Specification teaches that “[i]n several cancer diseases, 2-[18F]-
Deoxy-D-Glucose (FDG) is applied for monitoring response to therapy.”
Specification p. 1,11. 6—7. The Specification further teaches: “[i]t has been
shown that decreasing uptake correlates with better response to the applied
therapy. Likewise, the same or even increased tracer-uptake correlates with
poor response.” Id. at p. 1,11. 9-11. 2—3. Monitoring tracer uptake is
complicated because uptake is a “dynamic process.” Id. at p. 1,11. 16—17.
“Depending on the tracer, the disease, and further aspects, the maximum
uptake is reached at different times post injection (p.i.).” Id. at p. 1,11. 21—
22. Prior art tomographic systems suffer from the problem that “there is no
consideration taken to added complexity caused by a variable delay between
the tracer injection and the measurement of the lesion uptake.” Id. at p. 2,11.
7—8. The inventors claim to have solved this problem, using a “tracer-
uptake correction method and a system that corrects] for variation in time
between injection and acquisition.” Id. at p. 2,11. 13—14.
Claims 1—13 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A method of correcting tracer-uptake
measurements for a patient, comprising:
receiving input data about said patient including
data indicating how tracer uptake values (TUV)meas varies
with time Tmeas,
determining whether the input data includes tracer-
impact data that impact the tracer-uptake measurements
for said patient,
selecting tracer-uptake reference data based upon
said tracer impact data,
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Application 13/511,018
comparing the tracer-uptake reference data with
said tracer uptake values (TUV)meas, and based on the
comparing;
applying a correction of the tracer-uptake
measurements for said patient.
App. Br. 12.
The Examiner rejected claims 1—13 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter.
ANALYSIS
Determination of subject matter eligibility involves a two-step test.
First one must determine if the claimed subject matter is directed to a
judicially recognized exception. Mayo Collaborative Serves, v. Prometheus
Lab., Inc. 132 S. Ct. 1289, 1297 (2012). If the claims address a judicially
recognized exception, the next step is to determine if the claims recite
additional elements that transform the nature of the claim. Id.
In rejecting claims 1—13 as directed to patent-ineligible subject matter,
the Examiner first determined that the claims were drawn to an abstract idea
comprised of “calculations” and “computational steps.” Final Act. 2—3. The
Examiner then concluded that the claims “contain no additional steps that
impart a practical application of [the] abstract idea.” Id. at 3. We agree with
the Examiner that the claims are directed to patent-ineligible subject matter.
With respect to the first step of the subject matter eligibility
determination, we find that the claims are directed to an abstract idea. The
Federal Circuit addressed the patentability of method claims similar to those
at issue here in University of Utah Res. Foundation v. Ambry Genetics
Corp., 11A F.3d 755 (Fed. Cir. 2014). The method claims at issue in Ambry
involved methods of comparing the sequence of a wild-type BRCA1 gene
with the sequence obtained from a human subject. Id. at 761. In Ambry, the
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court found that the claimed subject matter was patent ineligible because “it
claimed an abstract mental process of ‘comparing’ and ‘analyzing’ two gene
sequences.” Id. at 763.
Claim 1, like the claims in Ambry, is directed to a mental comparison.
As in Ambry, claim 1 “recites nothing more than the abstract mental steps
necessary to compare.” Id. Claim 1 thus requires receiving data (“receiving
input data . . . ”), analyzing it (“determining whether . . . ”), picking data for
use in a comparison (“selecting tracer-uptake reference data . . . ”),
performing the comparison (“comparing . . . ”), and applying a correction
based on the comparison (“applying ...”). All of these steps can be
performed mentally and, thus constitute a patent ineligible mental process.
Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)
(collecting information and “analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category.”);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (“. . . a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.”).
Appellant argues that the claimed step of applying a correction cannot
be mentally performed because the correction “inherently must be externally
performed in order to affect the patient.” Reply Br. at 4. Claim 1, however,
does not require that the correction have any effect upon the patient. It
requires, “applying a correction of the tracer-uptake measurements for said
patient.” There is nothing in this claim language that requires the step to be
“externally performed.” Indeed the claim simply requires correcting
measurements, which can be done mentally. This is consistent with the way
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corrections are described as being applied in the Specification, where the
correction simply results in a “new correction curve.” See e.g., Spec. p. 10,
11. 24—26 (“By applying a correction of the tracer-uptake measurements for
said patient based on said correction indicator it results in a new correction
curve (CCorr) of the tracer dynamics that is based on the actual
measurement.”).
With respect to the second step of the subject matter eligibility
determination, we find that claim 1 does not recite additional elements that
transform the nature of the claim. Step two of the eligibility determination is
“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.’” Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). We see
nothing in the subject matter claimed that transforms the claimed mental
process into an inventive concept. As discussed above, claim 1 recites
nothing more than the abstract mental steps necessary to compare reference
uptake data with measured uptake values. None of the method steps, viewed
“both individually and ‘as an ordered combination,”’ transform the nature of
the claim into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355
(quoting Mayo, 132 S. Ct. at 1297, 1298). All of the limitations of claim 1
are directed to well-understood, routine, conventional activities.
Appellant argues that, like the claims in Diamond v. Diehr, 450 U.S.
175 (1981), the claims at issue here modify and improve a real-world
process. App. Br. 8—9. Appellant thus contends:
Under conventional industry practice, no consideration is
taken to the added complexity caused by a variable delay
between the tracer injection and the measurement of the
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lesion uptake. (See Specification, p. 2, 11. 3-8). The
claims at issue solve this technological problem.
Id. at 9.
The Court in Diamond found that a claim employing a mathematical
formula in a manufacturing process was patent eligible, because it “appliej’d]
that formula in a structure or process which, when considered as a whole,
[ was] performing a function which the patent laws were designed to protect
(e. g., transforming or reducing an article to a different state or thing).”
Diamond, 450 U.S. at 192. Unlike the process claimed in Diamond, which
was directed to a specific industrial process, i.e., “a physical and chemical
process for molding precision synthetic rubber products,” id. at 184, claim 1
merely recites a process for manipulating information. Claim 1 is thus
closer to Mayo — in which the Court found unpatentable claims that “simply
tell doctors to gather data from which they may draw an inference in light of
[] correlations” (Mayo 132 S. Ct. at 1298) — than it is to Diehr.
Appellant argues that “[g]iven the particularities of the way in which
each operation is performed, independent claim 1 cannot and does not
preempt the making, using and selling of basic tools of scientific and
technological work.” App. Br. 10. Accordingly, Appellant contends that the
claims are patent eligible because they do not preempt “the making, using,
and selling of basic tools of scientific and technological work.” Id. But
even taking this as true, “the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
Accordingly we affirm the Examiner’s rejection of claim 1 as directed
to patent ineligible subject matter. Appellant contends that claim 12 is
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patent eligible for the same reasons as claim 1. App. Br. 7. Accordingly we
affirm the Examiner’s rejection of claim 12 for the reasons discussed with
respect to claim 1.
Appellant contends that “each of the[] dependent claims includes
additional elements that further establish each of these dependent claims is
not within the Court’s implicit exception to subject matter eligibility.”
Appellant, however, does not argue any of the dependent claims with
particularity, limiting the argument on the dependent claims to the above
quoted sentence. This is not sufficient to show error in the Examiner’s
rejection. See 37 C.F.R. § 41.37(c)(l)(iv) (noting that an argument that
merely points out what a claim recites is unpersuasive). As Appellant does
not provide substantive argument with respect to the independent
patentability of claims 2—11 and 13, these claims fall with claim 1. Id.
SUMMARY
For these reasons and those set forth in the Examiner’s Answer, and
the Final Office Action, the Examiner’s final decision to reject claims 1—13
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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