Ex Parte Zankowski et al

Patent Trial and Appeal Board

Jun 7, 2017

13484921 (P.T.A.B. Jun. 7, 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.
13/484,921 05/31/2012 Corey E. Zankowski 8632-102199 (12-024-US) 4322
76260 7590 06/09/2017
FITCH EVEN TAB IN & FLANNERY, LLP
VARIAN MEDICAL SYSTEMS
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
COX, THADDEUS B
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
06/09/2017 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):
mail@fitcheven.com
ipdocket @ varian. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COREY E. ZANKOWSKI, JANNE NORD, JARKKO PELTOLA,
and ESA KUUSELA1
Appeal 2016-001683
Application 13/484,921
Technology Center 3700
Before FRANCISCO C. PRATS, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to systems and methods for providing medical treatment.
Claims 1, 3, 5—13, 15, and 17—20 are on appeal as rejected under 35 U.S.C.
§§ 101 and 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification explains:
The use of radiation to treat medical conditions comprises a
known area of prior art endeavor. For example, radiation therapy
1 Appellants identify the Real Parties in Interest as Varian Medical Systems,
Inc. and Varian Medical Systems International AG. App. Br. 3.
Appeal 2016-001683
Application 13/484,921
comprises an important component of any treatment plans for
reducing or eliminating unwanted tumors. Unfortunately,
applied radiation does not inherently discriminate between
unwanted materials and adjacent tissues, organs, or the like that
are desired or even critical to continued survival of the patient.
As a result, radiation is ordinarily applied in a carefully
administered manner to at least attempt to restrict the radiation
to a given target volume.
Spec. 12. Further, the Specification states, “[s]uch treatment plans are often
optimized prior to use.” Id. 14.
Claims 1 and 13 are independent claims; claim 1 is representative and
is reproduced below:
1. An apparatus comprising:
a memory having stored therein historical information regarding
delivered radiation doses to at least one non-targeted patient
volume for a plurality of different volume presentations, the
historical information comprising, at least in part, distance
information regarding relative positions of the plurality of
different volume presentations;
a control circuit operably coupled to the memory and configured
to optimize a radiation-treatment plan for a specific patient using
the historical information, at least in part, by comparing the
historical information against radiation-treatment plan
optimization results to qualitatively assess the radiation-
treatment plan optimization results.
App. Br. 12 (Claims App.).
The following rejections are on appeal:
Claims 1, 3, and 5—12, which are apparatus claims, stand rejected
under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final
Action 2.
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Claims 13, 15, and 18—20, which are method claims, stand rejected
under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Id. at
3.
Claims 1, 3, 5—10, 13, 15, and 17—19 stand rejected under 35 U.S.C.
§ 103(a) over Wu2 and Krishnan.3 Id. at 5.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) over Wu,
Krishnan, andNord.4 Id. at 9.
Claim 20 stands rejected under 35 U.S.C. § 103(a) over Wu,
Krishnan, and Nord. Id. at 11.
DISCUSSION
Unless otherwise indicated herein, we adopt the Examiner’s findings
of fact, reasoning on scope and content of the claims and prior art, and
conclusions set out in the Final Action and Answer.5 Only those arguments
made by Appellants in the Briefs have been considered in this Decision.
Arguments not presented in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
Patent Eligibility
We address both rejections under 35 U.S.C. § 101 together because
the claims recite substantially similar subject matter and Appellants present
the same arguments over each.
2 U.S. Patent App. Pub. No. 2012/0014507 A1 (Jan. 19, 2012) (“Wu”).
3 U.S. Patent App. Pub. No. 2007/0276777 A1 (Nov. 29, 2007)
(“Krishnan”).
4 U.S. Patent App. Pub. No. 2010/0232572 A1 (Sept. 16, 2010) (“Nord”).
5 Final Office Action, mailed Mar. 9, 2015 (“Final Action”); Examiners
Answer, mailed Sept. 23, 2015 (“Ans.”).
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“Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Mayo Collaborative Servs. v.
Prometheus Labs, Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)). In analyzing patent-eligibility questions
under 35 U.S.C. § 101, the Supreme Court instructs us to “first determine
whether the claims at issue are directed to a patent-ineligible concept.” Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). If the initial
threshold is met, we then move to a second step and “consider the elements
of each claim individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 97).
Taking up the first step of the patent-eligibility analysis, we find
claim 1 (and claim 13), even though requiring tangible components such as a
memory and a control circuit, to be directed to the abstract idea of
information/data management and it is apparent that the recited physical
components merely provide a generic and well-known platform upon which
to carry out the abstract idea. Similar to the facts of In re TLI Comm. LLC,
823 F.3d 607, 611—12 (Fed. Cir. 2016), the system (or method) of the claim
is not directed to an improvement in computer or radiation therapy device
technology, as all the features of the utilized system are shown, as discussed
infra, to be well-known, but is directed to storing and accessing data on
patient radiation therapy, comparing current patient data to the historical
data, and deciding whether the related current therapy is optimized or can be
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further optimized, i.e., organizing data, using the customary tangible
components only in routine and generic ways.
Turning to the second step under Alice, we find that the components
(or their use) recited by the claim, individually and as a combined whole,
cannot confer patent-eligibility. The application of technology in claim 1 is
in line with the well-known, routine functionality of the technology, e.g., a
memory stores data, a circuit processes data and relays commands; nothing
significantly more is added. Thus, as did the Federal Circuit in In re TLI, we
find that the steps recited by the claim(s), individually and as a combined
whole, cannot confer patent eligibility. In re TLI, 823 F.3d at 613—15; see
also SmartGene, Inc. v. Advanced Bio. Labs SA, 555 Fed. App’x 950, 955—
56 (Fed. Cir. 2014) (claims drawn to organizing patient information and
analyzing it as a doctor would were directed to an abstract idea and requiring
a computer to do this was not enough to convey patent-eligibility).
We find the Examiner has established that claim 1 (and 13) are
directed to patent-ineligible subject matter as directed to an abstract idea
(comparing data to optimize radiation treatment) without reciting
significantly more to amount to an inventive concept (merely using generic
technology). Appellants have not produced evidence showing, or
persuasively argued, that the Examiner’s determination is incorrect. We
address Appellants’ arguments below.
Appellants contend that the Examiner’s determination is not explicitly
based on facts or evidence and, thus, “is based upon clear error.” App. Br. 8.
We are not persuaded by this argument.
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The Examiner has specifically identified why the claims are patent-
ineligible:
[they] are directed to the abstract idea of comparing historical
radiation doses with the results of an optimized radiation
treatment plan. The claims do not include additional elements
that are sufficient to amount to significantly more than the
judicial exception because the additional elements are simply a
generic computer memory and control circuit. These generically
recited computer elements do not add a meaningful limitation to
the abstract idea because they would be routine in any computer
implementation.
Final Action 2, 3. Thus, the Examiner has based the determination on the
fact that the claims are merely directed to an abstract idea without
significantly more. We note, Appellants’ Specification indicates its
“teachings are highly flexible in practice” and in the “simple example”
described in the Specification, the system or process of the invention is
described as no more than keeping track of how different volumes within the
body are dosed in radiation treatments (i.e., record keeping) so that the
compared ongoing treatments may be tweaked or optimization, or not. Spec.
H 20, 39. This supports the Examiner’s determination that the subject
matter claimed is merely an abstract idea without more, which can be
flexibly-applied to an array of uses.
We affirm the patent-ineligibility rejection.
Obviousness
We address all obviousness rejections together because the same facts
govern each rejection and Appellants argue all such rejections together.
We find the Examiner has established that claim 1 (and claim 13)
would have been obvious over the cited prior art combination(s). Further,
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we find there would have been motivation to combine the cited prior art, at
least because each reference is directed to controlling and optimizing
radiation treatment using historic patient data using standard computer
technology; thus, combining the various attributes of each reference’s
disclosed subject matter would have been obvious and reasonably expected
to succeed. Appellants have not produced evidence showing, or
persuasively argued, that the Examiner’s determinations are incorrect. We
address Appellants’ arguments below.
Appellants argue that the Krishnan reference (correcting their
argument from the Appeal Brief in the Reply Brief to address this reference
rather than Wu) “does not disclose comparing historical information against
radiation treatment plan optimization results to qualitatively assess the
radiation treatment plan optimization results.” Reply Br. 3 (italics omitted).
Appellants contend Krishnan is directed only to using historical patient
radiation treatment information to assess whether a radiation treatment plan
“is capable of providing a specified tumor dose, all things considered.” Id.
at 4. We are not persuaded by this argument.
To the extent Appellants argue over the prior art references
individually, such arguments are not persuasive. “Non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. . . . [The
reference] must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). As found by the
Examiner, Wu discloses developing a radiation treatment plan for a patient
based on information in a database of patient data and past treatment plans to
generate optimal treatment plans. See Wu Abstract; see also Final Action 5—
13 (discussing Wu). Further, as found by the Examiner, Wu discloses
characterizing the geometry of organs at risk in radiation treatment (volumes
where irradiation is not wanted) relative to the target volume and, in
particular, associated distances from the target volume. Wu 141; see also
Final Action 5—13 (discussing Wu). Wu discloses using a memory and
processor to analyze the historic patient data to develop “a set of radiation
treatment planning parameters.” Wu H 45—63; see also Final Action 5—13
(discussing Wu). Krishnan is also directed to developing a radiation
treatment plan using historic patient data “on large numbers of patients” and
where “[t]he outcomes are then correlated back to the dosages and patient
data to come up with a model for how outcomes are determined by
individual patient data.” Krishnan 116; see also Final Action 5—11
(discussing Krishnan). Krishnan also discloses that treatment can be
iteratively optimized to achieve better treatment plans. Krishnan H 19, 65;
see also Final Action 5—11 (discussing Krishnan).
In light of the foregoing, KSR’s instruction concerning the
obviousness of combining familiar elements, and Appellants’ failure to
argue that the invention yields unpredictable results, we agree with the
Examiner that “it would have been obvious to one of ordinary skill at the
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time of the invention to modify the invention of Wu by comparing the
historical information against radiation-treatment plan optimization results,
as taught by Krishnan, in order to qualitatively assess the radiation-treatment
plan optimization results.” Final Action 6. In view of the above-discussed
facts and the determinations of the Examiner, we are not persuaded by
Appellants’ arguments and affirm the obviousness rejections.
SUMMARY
The rejections of the claims as directed to patent-ineligible subject
matter are each affirmed.
The rejections of the claims as obvious over the cited prior art
combinations are each affirmed.
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
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