Ex Parte YUI

Patent Trial and Appeal Board

Jan 17, 2017

12854426 (P.T.A.B. Jan. 17, 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.
12/854,426 08/11/2010 Masao YUI LSN-6542-5 7770
23117 7590 01/27/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
RAJ, RAJIV J
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
01/27/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAO YUI
Appeal 2015-002532
Application 12/854,426
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—11 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
Appeal 2015-002532
Application 12/854,426
THE INVENTION
The Appellant’s claimed invention is directed to a magnetic resonance
imaging apparatus and a method of controlling the apparatus. (Spec. 1:7).
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A magnetic resonance imaging (MRI) apparatus, comprising:
a sequence execution control unit configured to repeatedly and
alternately execute MRI data acquisition sequences for (a) a
diagnostic image and (b) a navigator image from a subject being
imaged, the navigator image being an image used for motion
detection;
a slice position detecting unit configured to analyze each
subsequent navigator image and thereby detect a position of a mark
that indicates a position of a slice excited by the prior execution of a
diagnostic imaging sequence;
a respiratory motion estimating unit configured to estimate
motion of a portion of the subject due to respiration, based on the
position of the mark; and
a sequence correcting unit configured to correct a diagnostic
imaging sequence to be subsequently executed, based on the estimated
respiratory motion.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Soubelet et. al US 2008/0240536 A1 Oct. 2, 2008
Boeing et. al US 2008/0310698 Al Dec. 18, 2008
The following rejections are before us for review:
1. Claims 1—11 stand rejected under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.
2. Claims 1—11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boeing and Soubelet.
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Appeal 2015-002532
Application 12/854,426
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner determined that claims 1-11 are directed to “an abstract
idea, being a basic concept of providing healthcare (Ans. 2). Furthermore,
according to the Examiner, “i[t] appears that claims 1-11 are software on a
processor coupled to a memory and the claim is describing the intent of the
software” (Ans. 2). The Examiner further finds that there is no improvement,
e.g., “to another technology or technical field” (Ans. 2).
The Appellant argues that the rejection of claims 1—11 is improper
because, inter alia, the invention provides an improved technical effect in
MRI imaging technology (Reply Br. 4). According to the Appellant, the
claims contain meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment {id. at 8). Consistent
with DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014), the Appellant explains how “the claims at issue are rooted in complex
MRI technology- that happens to use, inter alia, program-configured
computerized control systems - to overcome a problem specifically arising
in the realm of MRI data signal acquisition technology” (Reply Br. 10) and
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2015-002532
Application 12/854,426
thereby rendered patent eligible. We agree with the Appellant. We have
determined that the elements of the claim are rooted in technology as the
Appellant has argued and the rejection is not sustained.
Rejection under 35 U.S.C. § 103(a)
The Appellant argues, inter alia, that the rejection of claim 1 is
improper because in the rejection of record the cited prior art fails to disclose
“a mark that indicates a position of a slice excited by the prior execution of a
diagnostic imaging sequence” (App. Br. 16—19).
In contrast, the Examiner has determined that the cited claim
limitation is shown at paragraphs 30, 44, 51, and claim 5 of Boeing (Final
Act. 4—5).
We agree with the Appellant. Boeing at paragraphs 30 and 44
discloses a position marker that establishes the patient’s position on the
examination table. Boeing at paragraph 51 discloses a “virtual marker
object Mv,” that is similarly used to establish the patient coordinate system.
There is no disclosure at the cited portions that either the position marker or
virtual marker object “indicates a position of a slice excited by the prior
execution of a diagnostic imaging sequence” as specifically claimed.
As the cited claim limitation is not shown, the rejection of claim 1 and
its dependent claims is not sustained. The remaining claims contain a
similar claim limitation and the rejection of these claims is not sustained as
well.
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Appeal 2015-002532
Application 12/854,426
CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 1—11 under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter.
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 1—11 under 35 U.S.C. § 103(a) as being unpatentable over
Boeing and Soubelet.
DECISION
The Examiner’s rejection of claims 1—11 is reversed.
REVERSED
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