Tomy Varghese et al.

Patent Trials and Appeals Board

Jul 31, 2019

14276019 - (D) (P.T.A.B. Jul. 31, 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.
14/276,019 05/13/2014 Tomy Varghese P140237US01 (1512.486) 6228
72088 7590 07/31/2019
WISCONSIN ALUMNI RESEARCH FOUNDATION
C/O BOYLE FREDRICKSON S.C
840 North Plankinton Avenue
Milwaukee, WI 53203
EXAMINER
KUAN, JOHN CHUNYANG
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
docketing@boylefred.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMY VARGHESE and ATUL NISHIKANT INGLE
____________

Appeal 2018-007176
Application 14/276,019
Technology Center 2800
____________

Before KAREN M. HASTINGS, DEBRA L. DENNETT, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s Final Rejection of claims 1–21. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Wisconsin Alumni Research Foundation is the Applicant/Appellant and is
identified as the real party in interest. App. Br. 3.
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STATEMENT OF THE CASE
The invention is generally directed to “ultrasonic imaging techniques
for obtaining information about tissue elasticity and in particular to a method
of rapidly acquiring three-dimensional elasticity reconstructions useful, for
example, during RF ablation.” Spec. ¶ 3. According to the Specification,
the prior art techniques for obtaining this information are deficient because
“[t]he spatial data [obtained] may be relatively noisy.” Id. ¶ 8. The
inventors address this problem by formulating the problem as a smoothness-
constrained trilinear interpolation considering only locally adjacent spatial
data points that allows simultaneous three-dimensional interpolation and
noise reduction. Id. ¶ 11. Thus, “a sparse matrix that may be readily
inverted providing a simple closed-form solution that allows the steps of
interpolation and noise reduction to be reliably and rapidly executed.” Id.
Claim 1 is illustrative of the subject matter claimed and is reproduced below
(formatting added):
1. A system for acquiring three-dimensional ultrasound data
comprising:

an ultrasonic probe assembly including:

an ultrasonic probe providing an array of independently
actuatable ultrasound elements having a predetermined spatial
arrangement;

processing circuitry in communication with the ultrasonic
probe to digitize echo signals received from the ultrasound
elements, the ultrasonic probe and processing circuitry
operating together to direct an ultrasound beam into a patient’s
tissue and receive ultrasonic echoes with respect to
predetermined ultrasound elements and measure the same to
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provide ultrasound data at a plurality of first discrete locations
related to the predetermined spatial arrangement of the
predetermined ultrasound elements; and

an electronic computer receiving the ultrasound data and
executing a stored program held in a non-transitive medium to:

(a) process the ultrasound data to obtain spatial
data characterizing the tissue at the plurality of first
discrete locations over three dimensions of a volume of
interest within the tissue; and

(b) determine data of voxels in a plurality of
second discrete locations in a three-dimensional image
grid within the tissue by simultaneously minimizing a
combination of:

an error between data of voxels and
interpolated values of the spatial data in a region
proximate to the data of voxels; and

a gradient of the data of the voxels at a
location of each voxel,

wherein the region proximate to the spatial
data extends in three dimensions about the spatial
data by less than the volume of interest; and

(c) display an image comprising the spatial data
and the data of voxels,

whereby a balance between interpolation fidelity
and smoothness for human tissue is obtained in ultrasonic
measurements of the tissue.

Independent claim 14 is directed to a method of acquiring three-
dimensional ultrasound data essentially using the system of claim 1.
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Appellant requests review of the Examiner’s final decision to reject
claims 1–21 under 35 U.S.C. § 101 because the claimed invention is directed
to non-statutory subject matter (i.e., an abstract idea) without significantly
more. Final Act. 2; App. Br. 7.

ANALYSIS
Rejection under 35 U.S.C. § 101 (ineligible subject matter)2
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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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.”); 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

2 We limit our discussion to independent claims 1 and 14.
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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
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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. (internal citation omitted) (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
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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
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.
The PTO recently published revised guidance on the application of
35 U.S.C. § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “Guidance”).3 Under the
Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes),
(designated as Step 2A (Prong 1) in the Guidance); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)) (designated as
Step 2A (Prong 2) in the Guidance).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or

3 We note that the Guidance was not available to the Examiner and
Appellant during the prosecution of the instant Application.
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception (designated as Step 2B in the Guidance).
Step 2A (Prong 1) and Step 2A (Prong 2) are used for the analysis
under the first step of Alice, while Step 2B informs the analysis under the
second step of Alice.

The Examiner’s Rejection and Appellant’s Arguments
The Examiner finds that the claim is directed to mathematical
concepts including mathematical relations or algorithms similar to the
concepts found abstract previously by the courts. Final Act. 4. In support of
this assertion, the Examiner points to In re Grams, 888 F.2d 835 (Fed. Cir.
1989), Benson (409 U.S. 63), Flook (437 U.S. 584), Mackay Radio &
Telegraph Co. v. Radio Corp. of America, 306 U.S. 86 (1939), and Kappos
(561 U.S. 593) for decisions where the courts have held that the use of
mathematical concepts are abstract ideas. Id. at 4–5. The Examiner also
directs attention to Digitech Image Tech., LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344 (Fed. Cir. 2014), Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016)), and Intellectual Ventures I LLC v.
Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), where the
courts have held the manipulation of data are also abstract ideas. Id. at 5.
Appellant argues that, unlike Grams, Gottschalk, and Flook, the
claimed invention does not attempt to patent a mathematical algorithm, but
rather systems and methods specifically requiring ultrasonic imaging which
simultaneously interpolates and minimizes noise of an acquisition based on
actual tissue qualities. App. Br. 10–11, 13. Appellant further argues that,
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unlike Digitech, Electric Power, Intellectual, and even Alice, the claimed
invention does not merely recite a generic purpose computer but, instead
recites novel techniques with respect to a machine in a specific technological
field. Id. at 12–13. Appellant further asserts that the subject matter of claim
1 recites a technological improvement over existing ultrasonic imaging
techniques similar to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016) and McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299 (Fed. Cir. 2016). Id. at 7–8, 10. Appellant additionally argues that the
claimed invention recites an ultrasonic probe assembly and processing
circuitry which implements the aforementioned techniques thereby
providing a clear technological improvement over existing ultrasonic
imaging techniques. App. Br. 10–11.

Determination of Claims’ Statutory Category
Before any consideration as to whether a claim is directed to a patent
ineligible subject matter, such as an abstract idea, we must first determine if
the claim falls under a statutory category, a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
There is no dispute between Appellant and the Examiner that the
claims fall under a statutory category under 35 U.S.C. § 101. See generally
App. Br.; Final Act. 4. For completeness, we note that independent claim 1
is a system claim including an ultrasonic probe assembly comprising an
ultrasonic probe, processing circuitry, and an electronic computer. We
interpret claim 1 as falling under the statutory category of “machine,” i.e., a
structure that can be termed a machine under 35 U.S.C. § 101. Independent
claim 14 recites a method of acquiring three-dimensional ultrasound data
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using a system similar to that claimed in claim 1. App. Br. 15, 18. We
interpret claim 14 as falling under the statutory category of a “process.”
Having established that the claim falls in a statutory category, we now
follow the Guidance to analyze claims 1 and 14 to determine if they are
directed to a patent ineligible subject matter.

Determination of Patent Subject Matter Eligibility
a. Alice Step 1 (Office Revised Step 2A (Prong 1))
The Examiner determined that the subject matter of independent claim
1 is directed to an abstract idea. Final Act. 4–5; Ans. 4.
Under Step 2A (Prong 1) of the Guidance, we must first determine
whether the claims include any limitations that fall within the subject matter
groupings of abstract ideas enumerated in Section I of the Guidance.
Guidance, 84 Fed. Reg. at 51–54.
As the Examiner notes, independent claim 1 comprises the steps of:
(a) process the ultrasound data to obtain spatial data
characterizing the tissue at the plurality of first discrete
locations over three dimensions of a volume of interest within
the tissue; and

(b) determine data of voxels in a plurality of second
discrete locations in a three-dimensional image grid within the
tissue by simultaneously minimizing a combination of:

an error between data of voxels and interpolated
values of the spatial data in a region proximate to the data
of voxels; and

a gradient of the data of the voxels at a location of
each voxel,

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wherein the region proximate to the spatial data
extends in three dimensions about the spatial data by less
than the volume of interest; and

(c) display an image comprising the spatial data and the
data of voxels,

whereby a balance between interpolation fidelity and
smoothness for human tissue is obtained in ultrasonic
measurements of the tissue.
Final Act. 4; Ans. 3.
Claim 1 recites mathematical concepts in the form of the following
mathematical relationships, mathematical formulas or equations, or
mathematical calculations:
a. conversion of ultrasound data to spatial data (Spec. ¶¶ 13–14,
56–58);4 and
b. determination of voxel data by minimizing the error between
the data based on a series of formulae (id. ¶¶ 62–71).5
Our analysis is equally applicable to independent claim 14.
Therefore, we agree with the Examiner’s determination that claims 1
and 14 recite the abstract idea of a mathematical concept. See Final Act. 4–5

4 The noted portions of the Specification and Figures 2 and 3 of the
Application describe obtaining spatial data based on geometrical
relationship. See also Varghese (US 8,328,726 B2; issued December 11,
2012), which the Specification (¶ 58) refers to.
5 We note that claim 1 encompasses mathematical formulae as presented in
dependent claims 4–6. We determine it is appropriate to consider the
formulae described in the Specification and the dependent claims in our
deliberations with respect to claim 1 because the language the “process” and
“determine” steps in claim 1, when read in light of the Specification,
includes the noted formulae.
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and Ans. 3–4.
c. Alice Step 1 (Office Revised Step 2A (Prong 2))6
Having determined that the subject matter of claims 1 and 14 is
directed to an abstract idea, we now consider under Step 2A (Prong 2) of the
Guidance whether the claim as a whole integrates the recited judicial
exception into a practical application of the exception. Guidance, 84 Fed.
Reg. at 54. “A claim that integrates a judicial exception into a practical
application will apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Id. When a claim recites a judicial exception and fails to integrate the
exception into a practical application, the claim is “directed to” the judicial
exception. Id. at 51.
Independent claim 1 principally recites the additional elements7 of an
ultrasonic assembly, processing circuitry, and an electronic computer.
To the extent that the Examiner regards the system’s operation to be
abstract, we disagree. See Final Act. 6–7. As we explain in our analysis
below, the additional elements reflect an improvement to a technology, and
thus, the independent claims integrate the recited mathematical concept into
a practical application.

6 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office Guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office Guidance). See generally
Guidance, 84 Fed. Reg. 50.
7 We use the term “additional elements” for “claim features, limitations,
and/or steps that are recited in the claim beyond the identified judicial
exception.” See Guidance, 84 Fed. Reg. at 55 n.24.
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A claim may integrate the judicial exception into a practical
application when, for example, it reflects an improvement to technology or a
technical field. Guidance, 84 Fed. Reg. at 55 n.25 (citing MPEP
§ 2106.05(a)). For instance, the Federal Circuit found claims eligible when
they were directed to a “particular configuration of inertial sensors and a
particular method of using the raw data from the sensors,” which improved
the accuracy of calculating an object’s position and orientation. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017) (cited in
MPEP § 2106.05(a)(II)(vii)). Although the claims used mathematical
equations, the Federal Circuit in Thales explained that “[t]he mathematical
equations are a consequence of the arrangement of the sensors and the
unconventional choice of reference frame in order to calculate position and
orientation.” Id. The claimed system eliminated “many ‘complications’
inherent in previous solutions” for determining an object’s position and
orientation. Id. at 1348.
On the other hand, a claim does not integrate the abstract idea into a
practical application when it merely adds insignificant extra-solution activity
or generally links the judicial exception’s use to a particular technological
environment or field. Guidance, 84 Fed. Reg. at 55 n.32 (citing MPEP
§ 2106.05(h)). For example, in Flook, the claim used a mathematical
formula to calculate a numerical limit on a process variable in the catalytic
chemical conversion of hydrocarbons. Flook, 437 U.S. at 586 (cited in
MPEP § 2106.05(h)). The Supreme Court rejected the argument that the
claim was made eligible through its limitations to the petrochemical field
and oil refining. Id. at 589–91. Reflecting on this case, the Supreme Court
in Kappos commented that “Flook established that limiting an abstract idea
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to one field of use or adding token post solution components did not make
the concept patentable.” Kappos, 561 U.S. at 612.
We disagree with the Examiner that the recited data collection focuses
on an algorithm that processes data to provide a better data set for display.
See Final Act. 6–7; Ans. 4. Here, as in Thales, the independent claims solve
a technical problem. Thus, we agree with Appellant that the claimed system
is not an abstract concept. See generally App. Br.
Specifically, the invention involves an ultrasonic probe providing an
array of independently actuatable ultrasound elements having a
predetermined spatial arrangement. The Specification describes the use of a
system for volumetric ultrasound acquisition that obtains data in a series of
radially extending planes positioned at different angles about a common
axis. See Spec. ¶ 7. The data are then interpolated to regular voxel data
points so that the spatial data can be displayed through projections as pixels
in a display monitor. Id. ¶ 8. The Specification explains that “[e]mploying
two distinct steps of modeling then interpolating . . . may produce a
suboptimal fit of the voxel data to the spatial data” because “[t]he spatial
data may be relatively noisy.” Id. ¶¶ 9–10. Appellant is concerned with
solving the technical problem of the noise in the spatial data. Id. ¶ 11. The
invention processes the acquired ultrasound data “to obtain spatial data
characterizing the tissue at a plurality of discrete locations over three
dimensions of a volume of interest within the tissue followed by a
determination of the values of voxels in a three-dimensional image grid
within the tissue.” Id. ¶ 13. In doing so, it “simultaneously minimizes a
combination of: an error between each given voxel data and interpolated
values of the spatial data selected to be in a region proximate to the voxel
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data; and a gradient of the voxel data at the given voxel data point location.”
Id. The invention relies on an interpolation fidelity balanced against a
requirement for smoothness in the voxel data that ensures that the voxel data
change “slowly over space in the manner to be expected when measuring the
elastic properties of physical tissue which will tend to be homogenous within
any given region.” Id. ¶ 63. Thus, the invention improves “processing of
sparse and noisy ultrasound data in a way that simultaneously
accommodates an interpolation and smoothing of the data in three
dimensions.” Id. ¶ 14. Appellant’s described solution overcomes the
limitations of existing approaches. Id. ¶ 11.
Appellant’s described technical solution is required by independent
claims 1 and 14. For instance, the independent claims recite determining the
voxel data by simultaneously minimizing the combination of an error
between the voxel data and the interpolated values of the spatial data in a
region proximate to the voxel data and a gradient of the voxel data at a
location of each voxel. The independent claims also recite that “a balance
between interpolation fidelity and smoothness for human tissue is obtained
in ultrasonic measurements of the tissue”. These claim limitations address
the shortcomings of the prior art techniques, which do not determine voxel
data based on a balance between interpolation fidelity and smoothness for
human tissue obtained in ultrasonic measurements of the tissue. Spec. ¶¶
10–14.
The independent claims recite a practical application of these results
because the claimed system and method improve the output for three-
dimensional elasticity reconstructions. Spec. ¶ 3.

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Here, as in Thales, “[t]hat a mathematical equation is required to
complete the claimed method and system does not doom the claims to
abstraction.” Thales, 850 F.3d at 1349. The mathematical concepts recited
in the independent claims are “a consequence of the arrangement of” the
system’s ultrasonic probe and how it receives signals during the scan. See
id.; see also Spec. ¶ 56, Fig. 2.
For all these reasons, the claimed invention uses the recited
mathematical concepts to improve a system and method for acquiring three-
dimensional ultrasound data.
Because we find the claims are not directed to an abstract idea, we
need not proceed to determine whether the claims provide an inventive
concept. See Guidance, 84 Fed. Reg. at 56 (discussing “Step 2B: If the
Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim
Provides an Inventive Concept”).
Accordingly, we reverse the Examiner’s rejection of claims 1–21
under 35 U.S.C. § 101 for the reasons given above and presented by the
Appellant.

DECISION
The Examiner’s rejection of claims 1–21 under 35 U.S.C. § 101 is
reversed.

REVERSED