Siemens Aktiengesellschaft

Patent Trials and Appeals Board

Aug 27, 2020

2020000280 (P.T.A.B. Aug. 27, 2020)

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.
14/599,678 01/19/2015 Puneet Sharma 2014P11850US01 1052
28524 7590 08/27/2020
SIEMENS CORPORATION
IP Dept - Mail Code INT-244
3850 Quadrangle Blvd
Orlando, FL 32817
EXAMINER
AKAR, SERKAN
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PUNEET SHARMA, LUCIAN MIHAI ITU,
SAIKIRAN RAPAKA, and FRANK SAUER

Appeal 2020-000280
Application 14/599,678
Technology Center 3700
____________

Before JENNIFER D. BAHR, BRETT C. MARTIN, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Siemens Aktiengesellschaft,1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 23–26. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification
The Specification “relates generally to representing a patient at a
particular physiological state and more particularly to mapping patient data
from one physiological state to another physiological state.” Spec. ¶2.
The Claims
Claims 23–26 are rejected. Final Act. 1. Claims 1–22 have been
withdrawn from consideration, and no other claims are pending. Id. Claim
23, the sole independent claim on appeal, is reproduced below.
23. A method for determining fractional flow reserve
(FFR) for a coronary stenosis of a patient at a hyperemia state,
comprising:
[a] receiving patient data of the patient at a rest state;
[b] calculating a value of a pressure drop over the
coronary stenosis of the patient at the rest state based on the
patient data;
[c] extracting features from the patient data;
[d] mapping the value of the pressure drop over the
coronary stenosis of the patient at the rest state to a value of the
pressure drop over the coronary stenosis of the patient at the
hyperemia state based on the extracted features; and
[e] outputting the FFR for the coronary stenosis of the
patient based on the pressure drop over the coronary stenosis of
the patient at the hyperemia state.
Appeal Br. 20.
The Examiner’s Rejections
There are two rejections before us:
1. claims 23–26 as ineligible under the judicial exception to 35
U.S.C. § 101 (Final Act. 2); and
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2. claims 23–26 as unpatentable over Sharma2 and Taylor3 (id. at
6).
DISCUSSION
Rejection 1—Eligibility
Patent Eligibility Framework
Section 101 provides that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.” 35 U.S.C. § 101. However,
the Supreme Court has “long held that this provision contains an important
implicit exception: [l]aws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, we “first determine whether the claims at issue are
directed to a patent-ineligible concept.” Alice, 573 U.S. at 218. If the claims
are determined to be directed to an ineligible concept, then we “consider the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)).
On January 7, 2019, the Director issued 2019 Revised Patent Subject
Matter Eligibility Guidance (“Revised Guidance”), which explains how the
Director directs that patent-eligibility questions under the judicial exception

2 US 2012/0072190 A1, published Mar. 22, 2012 (“Sharma”)
3 US 2014/0107935 A1, published Apr. 17, 2014 (“Taylor”).
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to 35 U.S.C. § 101 be analyzed. 84 Fed. Reg. 50–57; see also October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf).
Per the Revised Guidance, the first step of Alice (i.e., Office Step 2A)
consists of two prongs. In Prong One, we must determine whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon. 84 Fed. Reg. at 54 (Section III.A.1.). If it does not, the claim
is patent eligible. Id. With respect to the abstract idea category of judicial
exceptions, an abstract idea must fall within one of the enumerated
groupings of abstract ideas in the Revised Guidance or be a “tentative
abstract idea,” with the latter situation predicted to be rare. Id. at 51–52
(Section I, enumerating three groupings of abstract ideas), 54
(Section III.A.1., describing Step 2A Prong One), 56–57 (Section III.C.,
explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, we proceed to Step 2A
Prong Two, in which we determine if the “claim as a whole integrates the
recited judicial exception into a practical application of the exception.” Id.
at 54 (Section II.A.2.). If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception and fails to integrate it into a
practical application, we then proceed to the second step of Alice (i.e., Office
Step 2B). In that step, we evaluate the additional limitations of the claim,
both individually and as an ordered combination, to determine whether they
provide an inventive concept. Id. at 56 (Section III.B.). In particular, we
look to whether the claim:
 Adds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the
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field, which is indicative that an inventive concept may be
present; or
 simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.
Id.
Revised Guidance, Step 2A, Prong One
In Prong One of Step 2A, we determine whether claim 23 recites a
judicial exception (i.e., a law of nature, natural phenomenon, or abstract
idea).4
The Examiner determined that claim 23 recites abstract ideas in both
the mathematical concepts and mental processes categories set forth in the
Revised Guidance (84 Fed. Reg. at 52). Final Act. 3–4; Ans. 5–8.5
In particular, the Examiner determined that, and explains why, all of
the steps constitute abstract ideas within the mental processes category.
Ans. 6–8. Additionally, the Examiner determined that steps [b]–[d] also
constitute abstract ideas within the mathematical concepts category. Id. at
10–11 (noting step [b]’s explicit recitation of “calculating” and the
Specification’s description, at paragraphs 16 through 31, of steps [c] and [d]
as calculations).
Appellant argues that, “[w]hile some of the above-identified steps of
claim 23 may involve mathematical calculations in some embodiments,
claim 23 does not explicitly claim a mathematical equation.” Appeal Br. 5.

4 Appellant argues against the rejection of all claims together. Appeal Br. 3–
8. We choose claim 23 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
5 The Revised Guidance was issued subsequent to the Final Action but prior
to the Answer.
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This argument is inapposite to the issue at hand: whether claim 23 recites an
abstract idea.
Appellant’s only specific argument on point is that step [d] (the
“mapping” step) does not recite an abstract idea within the mental process
category. Appeal Br. 5. In that regard, Appellant argues “the ‘mapping’ in
claim 23 cannot be performed mentally to determine a value of the pressure
drop over the coronary stenosis of the patient at the hyperemia state due to
the complexity of such mapping.” Id. (emphasis added). Appellant’s
argument is not persuasive because Appellant has not demonstrated that the
mapping cannot be performed mentally (or with pen and paper). See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”). And the
Specification indicates that the mapping can be “compute[d]” mentally or
via pen and paper and provides a general function for the computing the
same. Spec. ¶¶22–23.
On the record presented, we are not apprised of error in the
Examiner’s determination, under Step 2A, Prong One of the Revised
Guidance, that claim 23 recites an abstract idea, indeed multiple abstract
ideas, in the mathematical concepts and mental processes categories.
Revised Guidance, Step 2A, Prong Two
In Prong Two of Step 2A, we determine whether claim 23 as a whole
integrates the recited judicial exceptions (here, abstract ideas) into a practical
application of the exceptions. In doing so, we first determine “whether there
are any additional elements recited in the claim beyond the judicial
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exception(s).” 84 Fed. Reg. at 54–55. There are none. Each limitation of
claim 23 recites an abstract idea.
Appellant, however, directs us to the preamble, arguing: “The claims
are integrated into the practical application of determining a fractional flow
reserve (FFR) for a coronary stenosis of a patient. See, e.g., Claim 23,
preamble.” Appeal Br. 6; see also claim 23 (“A method for determining
fractional flow reserve (FFR) for a coronary stenosis of a patient at a
hyperemia state, comprising . . . .”). Appellant asserts that, “[b]y
determining the FFR for the coronary stenosis of the patient, a particular
treatment or prophylaxis for the coronary stenosis is thereby effected.”
Appeal Br. 6.
It is true that, if a claim includes “an additional element that applies or
uses a judicial exception to effect a particular treatment or prophylaxis for a
disease or medical condition,” that fact is indicative of integration into a
practical application. 84 Fed. Reg. at 55. However, even assuming the
preamble of claim 23 constitutes a claim element, the preamble, like the rest
of claim 23, lacks a recitation of any particular treatment or prophylaxis. In
other words, Appellant’s argument is inapposite in view of the language of
the claim.
On the record presented, we are not apprised of error in the
Examiner’s determination, under Step 2A, Prong Two of the Revised
Guidance, that claim 23 fails to integrate any of the recited abstract ideas
into a practical application.
Revised Guidance, Step 2B
In Prong Two of Step 2B, we evaluate the additional limitations of
claim 23, both individually and as an ordered combination, to determine
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whether they provide an inventive concept. Again, however, there are no
additional limitations.
Appellant nonetheless relies on step [d] (the “mapping” step), arguing
“[s]imilar to the claims in Berkheimer, claim 23 provides for the
unconventional manner in which the mapping is performed that goes beyond
the alleged abstract idea of mapping.” Appeal Br. 8. Berkheimer affirmed a
district court’s summary judgment that claims 1–3 and 9 of the subject
patent were ineligible and vacated the summary judgment that claims 4–7
were ineligible because a genuine of issue of fact precluded summary
judgment. Berkheimer v. HP Inc., 881 F.3d 1360, 1370–71 (Fed. Cir. 2018),
cert. denied, 140 S. Ct. 911 (2020).6
Appellant compares its claim 23 to claim 4 at issue in Berkheimer.
Appeal Br. 8. Berkheimer, however, did not rule that claim 4, or claims 5–7,
were eligible. 881 F.3d at 1370 (“We do not decide today that claims 4–7
are patent eligible under § 101. We only decide that on this record summary
judgment was improper, given the fact questions created by the
specification’s disclosure.”). In any event, Appellant’s comparison of its
claim 23 to claim 4 at issue in Berkheimer is unfounded. Berkheimer noted
that “[c]laim 4 recites ‘storing a reconciled object structure in the archive
without substantial redundancy’” and “[t]he specification states that storing
object structures in the archive without substantial redundancy improves
system operating efficiency and reduces storage costs.” Id. (emphasis
added). Based on these facts, Berkheimer held a genuine issue of disputed
fact existed as to whether claim 4 provided benefits that improve computer

6 Berkheimer also affirmed the summary judgment that claims 10–19 were
invalid as indefinite. 881 F.3d at 1370–71.
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functionality. Id. Here, Appellant does not explain how claim 23’s
“mapping” limitation improves computer functionality or provide evidence
to support such a finding. Instead, Appellant merely argues that claim 23’s
“mapping” is “unconventional.” Appeal Br. 8. Appellant’s reliance on
Berkheimer is misplaced.
As for the allegation of unconventional “mapping,” that argument
does not support eligibility for at least two reasons. First, as discussed
above, Appellant has not shown error in the Examiner’s determination that
the “mapping” limitation itself recites an abstract idea. Accordingly, it is not
an “additional element.” See 84 Fed. Reg. at 56. Second, the “mapping”
limitation is “specified at a high level of generality.” Id. It recites, in
entirety: “mapping the value of the pressure drop over the coronary stenosis
of the patient at the rest state to a value of the pressure drop over the
coronary stenosis of the patient at the hyperemia state based on the extracted
features.” Neither this limitation nor the Specification provides details for
how the allegedly unconventional and inventive “mapping” is specifically
performed. Rather, the Specification and claim 23 merely indicate that it is
some function of extracted features and a Quality of Interest (“QoI”). See,
e.g., Spec. ¶23 (“QoI(State 2) = f(QoI(State 1), Features(State 1))”).
For the foregoing reasons, we affirm the rejection of claim 23 under
the judicial exception to § 101, as well as that of claims 24–26, which fall
therewith.
Rejection 2—Nonobviousness
The Examiner concluded that claims 23–26 would have been obvious
over Sharma and Taylor. Critical to that conclusion is the following finding:
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[Sharma teaches] mapping the value over the coronary stenosis
of the patient at the rest state to a value over the coronary stenosis
of the patient at the hyperemia state based on the extracted
features (“pressure/flow based measurements are used to
determine these flow reserves” [0026]; “maximum velocity at
rest is mapped to an average rest velocity and a maximum
velocity at hyperemia is mapped to an average hyperemia
velocity using patient-specific CFO simulations” [0030])
Final Act. 7 (citing Sharma ¶¶26, 30).
Appellant argues that “the mapping in the cited portions of Sharma is
1) from a maximum velocity at rest to an average velocity at rest, or 2) from
a maximum velocity at hyperemia to an average velocity at hyperemia.”
Appeal Br. 9. In other words, Sharma does not teach mapping blood
velocity (or any other datum) at rest to the same at hyperemia.
The Examiner responds that Sharma teaches mapping rest-to-rest and
hyperemia-to-hyperemia, not merely one or the other. Ans. 16 (“Initially, it
is noted that the appellant appears to intentionally note that Sharma teaches
mapping rest ‘or’ hyperemia conditions which appears to be an error since
Sharma specifically teaches mapping in both resting conditions and
hyperemia conditions.”). Understood. But it is not responsive to
Appellant’s argument.
The Examiner also responds that Sharma’s blood velocity can be used
to calculate blood “pressure drop,” as recited in claim 23. Ans. 17. This too
is non-responsive to the heart of Appellant’s argument. Nowhere in the
Final Action or Answer does the Examiner satisfactorily explain how the
asserted prior art teaches or renders obvious mapping the value of anything
at a rest state to a value at a hyperemia state.
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Appellant has apprised us of error in the obviousness rejection of
claim 23, as well as claims 24–26, which ultimately depend from claim 23.
Accordingly, we reverse the obviousness rejection of claims 23–26.
SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23–26 101 Judicial exception 23–26
23–26 103 Sharma, Taylor 23–26
Overall
Outcome
23–26

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED