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Patent Trials and Appeals Board

Sep 27, 2019

13575636 - (D) (P.T.A.B. Sep. 27, 2019)

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.
13/575,636 07/27/2012 Satoshi Okuyama 402315US2X PCT 2333
22850 7590 09/27/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
CHNG, JOY POH AI
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SATOSHI OKUYAMA 1
___________

Appeal 2019–000331
Application 13/575,636
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, LARRY HUME, and
PHILLIP BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 5, 7, and 8, which constitute all the claims pending
in this application. Claims 1–4 and 6 are cancelled. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is Toshiba Medical Systems Corp. App. Br. 1.
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STATEMENT OF THE CASE2
Appellant’s claimed invention relates to “technology that centrally
manages processing of medical images in a server.” Spec. ¶ 1.
Exemplary Independent Claim 5
5. A medical image processing system comprising:
a plurality of clients;
a server; and
a medical imaging device to capture medical images of a
subject; wherein the clients are each configured to request
corresponding one of a plurality of image processors of the
server to perform image processing on at least one of a plurality
of the medical images of different body regions of a single
subject, and
the server comprises:
an image storage to store the medical images of the
subject captured by the medical imaging device;
the image processors each corresponding to one of the
clients, the image processors configured to, in response to a
request regarding a medical image of a body region from their
respective clients, perform processing on the medical image;
a processor configured to:
associate the medical images to store the medical images
in the image storage in a readable/writable manner in advance;
when a specific one of the image processors
receives a request regarding a specific medical image

2 We herein refer to the Final Office Action, mailed April 14, 2017 (“Final
Act.”); Appeal Brief, filed March 8, 2018 (“App. Br.”); Examiner’s Answer,
mailed Aug. 14, 2018 (“Ans.”); and the Reply Brief, filed Oct. 15, 2018
(“Reply Br.”).
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from a corresponding one of the clients, read the specific
medical image out of the image storage to transmit the
specific medical image to the specific image processor so
that processing required by the corresponding one of the
client is performed on the specific medical image, and
after the processing, write the specific medical image into
the image storage;
based on a process of writing to and reading from
the image storage, determine one of a plurality of stages
to which progress of the processing on the specific
medical image belongs, and associate the one of the
stages with the specific image processor and the specific
medical image to thereby create progress information, the
stages including a stage where the specific medical image
is unprocessed, a stage where the specific medical image
is being processed, and a stage where the processing is
completed: and
a UI controller configured to display a plurality of screen
regions each corresponding to one of the body regions, to create
display screen data for visually providing the stages of the
progress of the processing in one of the screen regions
corresponding to the specific medical image, and to send the
display screen data to the corresponding one of the clients.
App. Br. 7–8 (Claims Appendix) (dispositive limitation emphasized).
Rejection
Claims 5, 7, and 8 are rejected under 35 U.S.C. § 101, as being
directed to a judicial exception, without significantly more. Final Act. 2.
Issue on Appeal
Did the Examiner err in rejecting claims 5, 7, and 8 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
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ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented.
Principles of Law — 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “‘[L]aws of nature, natural phenomena, and abstract
ideas’ are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.” (Emphasis omitted)); see also Bilski v. Kappos, 561 U.S.
593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as “molding of rubber products” (Diehr, 450 U.S. at 193); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
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the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
Subject Matter Eligibility — 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This
new guidance is applied in this Opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people);3 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).4, 5
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a

3 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter
“Step 2A, prong 1”).
4 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter
“Step 2A, prong 2”).

5 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.6
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and

6 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
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a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses
a computer as a tool to perform an abstract idea — see
MPEP § 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use
— see MPEP § 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
2019 Revised Guidance, Step 2A, Prong One 7
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
The Examiner concludes independent claim 5 recites an abstract idea
“such as an ‘idea of itself’ in Alice.” Final Act. 2. In support, the Examiner
explains:
An example of ‘an idea of itself’ is the concept of comparing
new and stored information when receiving [an] (image) data
request to retrieve (image) data for transmission, and using
rules to identify options and using categories to organize, store

7 Throughout this Opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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and transmit information, because the claims recite using rules
to divide progress of processing into a plurality of stages,
organizing the progress information based on the plurality of
stages, storing the image and presenting the (image) processing
progress information.
Final Act. 2.
Turning to the claims, we conclude sole independent claim 5 does not
recite any of the three categories of abstract ideas described in the 2019
Revised Guidance. We focus our analysis on the whether the claimed
function of “associate the medical images to store the medical images in the
image storage in a readable/writable manner in advance” might be
categorized reasonably as a mental process. Claim 5. (See 2019 Revised
Guidance, 84 Fed. Reg. at 52). We turn to Appellant’s Specification for
context.
Appellant points to paragraph 11 of the Specification for written
description support for the “associate” function. See App. Br. 3.
Paragraph 11, in turn, refers to Figure 2, which depicts “an example of the
data structure of progress information according to the first embodiment.”
Spec. ¶ 8.
Paragraph 11 of the Specification describes, in pertinent part:
The image storage 11 stores medical images captured
using a medical imaging device such as a CT or MRI (Magnetic
Resonance Imaging) device. The image storage 11 manages
and stores these medical images with each study. Specifically,
medical images of each region (hereinafter referred to as
“series”) captured with the medical imaging device are each
associated with a study and stored in the image storage 11. For
example, Fig. 2 shows an example of the data structure of
medical images. As shown in Fig. 2, medical images Sr11-Sr13
for different series captured in a study St1, for example, are
associated as medical images of the study St1. If, for example,
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whole body imaging has been performed, series-specific
medical images of the head region, the chest region, and the
abdominal region, etc. captured in the study are associated as a
series of medical images, and the series-specific medical
images are stored in a manner allowing them to be extracted.
Moreover, the series-specific medical images Sr11-Sr13 are
configured to include image data D11 and appended
information D12.
Spec. ¶11 (emphasis added).

Figure 2 of Appellant’s Specification, reproduced below, illustrates an
“example of the data structure of medical images.” (Spec. ¶ 8). Figure 2
depicts the series of medical images associated by study and body region. In
particular, Figure 2 depicts how the series-specific medical images are stored
in a manner allowing them to be extracted (Spec. ¶11):

Appellant’s Figure 2 is depicted above, showing how medical
images are associated and stored, with appended information
including progress information.
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As per the progress information box in Figure 2 (D121), the
Specification provides further description regarding how such progress
information is used, for example, referring to Figure 5:
The display region P1 is configured by including the partial
regions P11-P15 corresponding to the body regions. The partial
regions P11-P15 are associated with the medical images of each
series corresponding to the study selected in the study-list
display unit C11. For example, the partial region P11
corresponds to the head region and is associated with medical
images of the head region. Similarly, the partial region P12, the
partial region P13, the partial region P14, and the partial region
P15 are respectively associated with the chest region, the
abdominal region, the legs, and the arms. Moreover, in
accordance with the progress status of processing for the
associated medical images, the partial regions P11-P15 are
displayed [] color-coded as shown in Fig. 5 by the progress-
screen generator 122
Spec. ¶ 37.
Based upon the complexities of such series-specific medical image
storage, including various types of appended metadata, and considering the
claims as a whole, we conclude the claimed function of “associate the
medical images to store the medical images in the image storage in a
readable/writable manner in advance” is not categorized reasonably as a
mental process. (See 2019 Revised Guidance, 84 Fed. Reg. at 52). A person
would have immense difficulty keeping track of the enormous amount of
image metadata, and would not reasonably be able to store and retrieve
series-specific medical image data from an image storage (e.g., the human
mind) without immediate mental processing overload.
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Therefore, we conclude that none of the claims on appeal recite an
abstract idea, as identified above, under Step 2A, Prong One. Because our
inquiry ends here, we do not proceed further to Step 2A, Prong Two.
Accordingly, for the reasons discussed above, we are constrained on
this record to reverse the Examiner’s Rejection under 35 U.S.C. § 101 of all
claims 5, 7, and 8 on appeal.
CONCLUSION
The Examiner erred in rejecting claims 5, 7, and 8 under 35 U.S.C.
§ 101, as being directed to a judicial exception, without significantly more.

DECISION
We reverse the Examiner’s decision rejecting claims 5, 7, and 8 under
35 U.S.C. § 101.
REVERSED