Wael Yared et al.

Patent Trials and Appeals Board

Mar 31, 2020

14054651 - (D) (P.T.A.B. Mar. 31, 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.
14/054,651 10/15/2013 Wael Yared 008916.00005 9097
155218 7590 03/31/2020
BANNER & WITCOFF, LTD.
Client 008916
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
LAMBERSKI, JENNIFER A
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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):
PTO-155218@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAEL YARED, JOSHUA KEMPNER,
JORGE RIPOLL LORENZO, and ALICIA ARRANZ1
Appeal 2019-001341
Application 14/054,651
Technology Center 1600
Before ERIC B. GRIMES, RYAN H. FLAX, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
imaging method, which have been rejected as anticipated, obvious, and
ineligible for patenting. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as VisEn Medical, Inc.
Appeal Br. 2. We use the word Appellant to refer to “applicant” as defined
in 37 C.F.R. § 1.42(a).
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STATEMENT OF THE CASE
“[T]he invention relates to systems and methods for in vivo
tomographic imaging of fluorescent probes and/or bioluminescent reporters,
wherein a fluorescent probe and a bioluminescent reporter are spatially co-
localized . . . in a diffusive medium (e.g., biological tissue).” Spec. ¶ 8. The
Specification states that “[b]y combining detection of both bioluminescence
and fluorescence, it is possible to retrieve 3D information of fluorescent
probes with the superior signal-to-noise ratio of bioluminescence due to the
lack of background signal.” Id. ¶ 49.
Claims 1–4, 8, 9, 12, 13, 40, 42, 44, and 48–52 are on appeal. Claim
1, reproduced below, is illustrative:
1. A method for imaging a target region of a diffuse object,
the method comprising:
(a) administering a probe comprising a fluorescent
species to the object, wherein following administration of the
probe the fluorescent species is co-located with a
bioluminescent reporter in the object;
(b) detecting bioluminescent light emitted from the
object by the bioluminescent reporter in the target region of the
object;
(c) directing excitation light into the object at multiple
locations and/or at multiple angles, thereby exciting the
fluorescent species;
(d) detecting fluorescent light, the detected fluorescent
light having been emitted by the fluorescent species in the
target region of the object as a result of excitation by the
excitation light; and
(e) processing data corresponding to the detected
bioluminescent light and the detected fluorescent light via
tomographic reconstruction to provide a tomographic image of
the target region of the object.

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The claims stand rejected as follows:
Claims 1–4, 8, 9, 12, 13, 40, 42, 44, and 48–52 under 35 U.S.C. § 101
as being ineligible for patenting (Ans. 3);
Claims 1–3, 9, 12, 13, 40, 42, 44, and 52 under 35 U.S.C. § 102(b) as
anticipated by Inoue2 (Ans. 4);
Claims 48–51 under 35 U.S.C. § 103(a) as obvious based on Inoue
and Ntziachristos3 (Ans. 5); and
Claims 4 and 8 under 35 U.S.C. § 103(a) as obvious based on Inoue
and Bryan4 (Ans. 6).
OPINION
Eligibility
Claims 1–4, 8, 9, 12, 13, 40, 42, 44, and 48–52 stand rejected under
35 U.S.C. § 101. The Examiner finds that “[c]laims 1 and 48–51 are directed
to an abstract idea, specifically, to a method that includes the steps of
processing data (claim 1), e.g., by weighting different combinations of data
collected (claim 48–51).” Ans. 3. The Examiner finds that “[t]hese steps
encompass mental steps and abstract ideas similar to the concepts that have
been identified as abstract by the courts . . . e.g., collecting information,
analyzing it, and displaying certain results of the collection and analysis;
obtaining and comparing intangible data; or storing, gathering, and
analyzing data.” Id.

2 Yusuke Inoue et al., In vivo fluorescence imaging of the reticuloendothelial
system using quantum dots in combination with bioluminescent tumour
monitoring, Eur. J. Nucl. Med. Mol. Imaging 34:2048–2056 (2007).
3 Ntziachristos et al., US 7,383,076 B2; June 3, 2008.
4 Bryan, US 2002/0090659 A1; July 11, 2002.
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The Examiner concludes that the claims do not
amount to significantly more than the judicial exception
because the active steps of the method (i.e., administering a
fluorescent species and a bioluminescent species; directing
excitation light thereby exciting the fluorescent species; and
detecting fluorescence emission . . . and bioluminescent light
. . . ) represent conventional steps already engaged by those
skilled in the art for imaging a target region of a diffuse object.
Id., citing Inoue. The Examiner concludes that the claims are ineligible for
patenting. Id.
Appellant argues that
the Office Action has failed to properly identify what the claims
are directed to. Instead, the Office asserts that the claims are
directed to “a method that includes the steps of processing data
. . . e.g., by weighting different combinations of data collected.”
The mere fact that a claim may include step of processing data,
even taking this assertion to be true, does not render the entire
claim patent ineligible.
Appeal Br. 8. Appellant argues that “[c]laim 1 is not directed to the alleged
abstract idea or any other abstract idea. Rather, claim 1 is directed to a
unique imaging approach including processing a particular type of data in a
particular manner to obtain a particular result.” Id.
Principles of Law
A. Section 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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. See, 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 Court’s two-part 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
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, 67 (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 182 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
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
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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 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. (citations 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
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks 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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
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Revised Guidance”).5 “All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); 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) (9th ed. Rev. 08.2017, Jan. 2018))
(“Step 2A, Prong Two”).6
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

5 In response to received public comments, the USPTO issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(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, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Step 2(A), Prong 1
Following the 2019 Revised Guidance, we first consider whether the
claims recite a judicial exception. The Examiner identifies step (e) of claim 1
as reciting “mental steps and abstract ideas similar to . . . collecting
information, analyzing it, and displaying certain results of the collection and
analysis; obtaining and comparing intangible data; or storing, gathering, and
analyzing data.” Ans. 3.
The 2019 Revised Guidance lists “[m]ental processes—concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion)” as one category of abstract ideas. 84 Fed. Reg. at 52.
However, “[c]laims do not recite a mental process when they do not contain
limitations that can practically be performed in the human mind, for instance
when the human mind is not equipped to perform the claim limitations.”
October 2019 Update at 7. Here, the Examiner has not persuasively shown
that “processing data corresponding to the detected bioluminescent light and
the detected fluorescent light via tomographic reconstruction to provide a
tomographic image of the target region of the object” is a process that can
practically be performed in the human mind. Claim 1. Thus, the Examiner
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has not shown that claim 1 recites an abstract idea in the “mental processes”
category.
The 2019 Revised Guidance also lists “[m]athematical concepts—
mathematical relationships, mathematical formulas or equations,
mathematical calculations” as a category of abstract ideas. 84 Fed. Reg. at
52. However, we conclude that claim 1 does not recite an abstract idea in the
mathematical concepts category. “A claim does not recite a mathematical
concept (i.e., the claim limitations do not fall within the mathematical
concept grouping), if it is only based on or involves a mathematical
concept.” October 2019 Update at 3.
Here, “processing data . . . via tomographic reconstruction to provide
a tomographic image,” as stated in claim 1, does not expressly recite any
mathematical concept. The Specification provides “[t]hree examples of the
approaches that can be used to combine the bioluminescence and
fluorescence measurements.” Spec. ¶ 53; see also ¶¶ 54–57. The
Specification also states, however, that suitable methods are “not limit[ed]
. . . to these approaches.” Id. ¶ 53. And, although the exemplary methods and
dependent claims 48–51 involve weighting data corresponding to either the
detected fluorescent light or the detected bioluminescent light, no specific
mathematical weighting is recited in the claims. Thus, even claims 48–51
fail to recite “mathematical relationships, mathematical formulas or
equations, [or] mathematical calculations” that would fall within the
“[m]athematical concepts” category of abstract ideas. 84 Fed. Reg. at 52.
The final category of abstract ideas listed in the 2019 Revised
Guidance is “[c]ertain methods of organizing human activity,” such as
“commercial or legal interactions.” 84 Fed. Reg. at 52. The Examiner has
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not asserted that an abstract idea of this type is recited in the claims, and we
perceive none.
In summary, we conclude that the claims on appeal do not recite an
abstract idea. “If the claim does not recite a judicial exception, it is not
directed to a judicial exception . . . and is eligible. This concludes the
eligibility analysis.” 84 Fed. Reg. at 54. The rejection of claims 1–4, 8, 9,
12, 13, 40, 42, 44, and 48–52 under 35 U.S.C. § 101 is reversed.
Anticipation
Claims 1–3, 9, 12, 13, 40, 42, 44, and 52 stand rejected as anticipated
by Inoue. The Examiner finds that Inoue teaches a method meeting all of the
limitations of claim 1, including administering bioluminescent cells and
fluorescent quantum dots to a mouse, “detecting bioluminescent light . . . by
tomographic bioluminescence imaging (BLI),” directing excitation light and
“detecting fluorescent light . . . by tomographic fluorescence imaging
(FLI),” and “analyzing the detected light signals and signal intensity to
provide merged tomographic BLI/FLI images of the mouse.” Ans. 4.
Appellant argues that, “in contrast to Appellant’s approach, Inoue
obtains separate bioluminescence and fluorescence images and simply
overlays the two images.” Appeal Br. 16. Appellant argues that
“[o]verlaying a bioluminescence image with a fluorescence image is distinct
from performing tomographic reconstruction using data corresponding to
detected bioluminescence light and data corresponding to detected
fluorescence light to provide a tomographic image.” Id.
We agree with Appellant that the Examiner has not persuasively
shown that the broadest reasonable interpretation of the claim language
encompasses Inoue’s disclosed method. Claim 1 requires detecting
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bioluminescent light and fluorescent light, then “processing data
corresponding to the detected bioluminescent light and the detected
fluorescent light via tomographic reconstruction to provide a tomographic
image of the target region of the object.” Claim 1 (emphasis added).
“Tomographic” is an adjective referring to tomography, which is
defined by Merriam-Webster7 as follows: “a method of producing a three-
dimensional image of the internal structures of a solid object (such as the
human body . . . ) by the observation and recording of the differences in the
effects on the passage of waves of energy impinging on those structures.”
The Specification’s description of the claimed method is consistent
with the ordinary meaning of “tomographic,” in focusing on three-
dimensional imaging. The Specification states, for example, that the
disclosed
methods increase the accuracy of tomographic reconstructions
in diffuse media and enhance the quantitative, three-
dimensional structural, functional and molecular information
obtained. . . . This increase in accuracy is obtained by reducing
the ill-posedness of bioluminescent imaging in order to obtain
three-dimensional (3D) reconstructions from measurements of
bioluminescence signals with the aid of fluorescence.
Spec. ¶ 48.8 “It is the intensity of the fluorescence emission that provides the
3D information needed for the reconstruction, while the bioluminescence
emission provides the background-free spatial signal distribution.” Id. ¶ 49.

7 www.merriam-webster.com/dictionary/tomographic, last visited March 9,
2020.
8 The Specification states that “an ill-posed problem” is one for which “there
is an infinite combination of concentration, position, and size that will yield
exactly the same measurement.” Spec. ¶ 50.
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We therefore conclude that the broadest reasonable interpretation of
“tomographic reconstruction to provide a tomographic image,” as recited in
claim 1, requires reconstructing a three-dimensional (3D) image by
processing data corresponding to the detected bioluminescent light and
fluorescent light.
Inoue describes “in vivo fluorescence imaging (FLI) of the reticulo-
endothelial system using quantum dots (QD) and . . . its use in combination
with in vivo bioluminescence imaging (BLI).” Inoue 2048, abstract. Inoue
“attempted to use fluorescent reticuloendothelial imaging for the localisation
of bioluminescent signals.” Id. at 2055, left col.
Inoue reports that “[i]n vivo BLI/FLI, accompanied by fusion of both
images, improved the accuracy and confidence level of the localisation of
the bioluminescent foci compared to BLI alone.” Id. “Fusion of the
fluorescent and bioluminescent images was achieved without special data
processing.” Id. More specifically, “[f]or detailed comparison between BLI
and FLI, fusion images were produced using general-purpose software
(Adobe Photoshop . . .) by overlaying the transparent, pseudo-colour
bioluminescent image onto the grey-scale fluorescent image.” Id. at 2051,
left col.
In view of these disclosures, we conclude that the Examiner’s findings
that Inoue discloses “tomographic bioluminescence imaging (BLI),”
“tomographic fluorescence imaging (FLI),” and “merged tomographic
BLI/FLI images,” Ans. 4, are not supported by a preponderance of the
evidence. The Examiner has not shown that overlaying two images using
Adobe Photoshop, as described by Inoue, would be understood by those
skilled in the art to be “processing data . . . via tomographic reconstruction to
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provide a tomographic image,” as required by claim 1. In fact, Inoue
distinguishes the “projectional images” produced by FLI with the images
produced by computed tomography (CT): “Disadvantages of FLI include
difficulty in discriminating between overlapping organs because most in
vivo FLI studies provide projectional images unlike CT or MRI.” Inoue
2055, right col.
Because the Examiner has not established that Inoue discloses a
method meeting all of the claim limitations, we reverse the rejection of claim
1, and dependent claims 2, 3, 9, 12, 13, 40, 42, 44, and 52, under 35 U.S.C.
§ 102(b) based on Inoue.
Obviousness
Claim 4, 8, and 48–51 stand rejected as obvious based on Inoue and
either Ntziachristos or Bryan. Both of these rejections rely on Inoue as
disclosing all of the limitations of claim 1, and cite Ntziachristos or Bryan
for the additional limitations of the dependent claims. Ans. 5–7.
As discussed above, however, we conclude that the Examiner has not
shown that Inoue discloses all of the limitations of claim 1. The Examiner
has not pointed to any teachings in Ntziachristos or Bryan that would
suggest “processing data corresponding to the detected bioluminescent light
and the detected fluorescent light via tomographic reconstruction to provide
a tomographic image,” as required by claim 1 but missing from Inoue.
Therefore, the Examiner has not shown that the claimed method would have
been obvious based on the cited references, and we reverse both of the
rejections under 35 U.S.C. § 103(a).
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 8, 9,
12, 13, 40,
42, 44, 48–
52
101 Eligibility 1–4, 8, 9,
12, 13, 40,
42, 44, 48–
52
1–3, 9, 12,
13, 40, 42,
44, 52
102(b) Inoue 1–3, 9, 12,
13, 40, 42,
44, 52
48–51 103(a) Inoue, Ntziachristos 48–51
4, 8 103(a) Inoue, Bryan 4, 8
Overall
Outcome
1–4, 8, 9,
12, 13, 40,
42, 44, 48–
52

REVERSED