Alexander Fischer et al.

Patent Trials and Appeals Board

Mar 21, 2022

2021004599 (P.T.A.B. Mar. 21, 2022)

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. 12/375,430 01/28/2009 Alexander Fischer 2006P01448WOUS 7296 38107 7590 03/21/2022 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 1600 Summer Street 5th Floor Stamford, CT 06905 EXAMINER BRUTUS, JOEL F ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 03/21/2022 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): marianne.fox@philips.com patti.demichele@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEXANDER FISCHER and LOTHAR SPIES Appeal 2021-004599 Application 12/375,430 Technology Center 3700 ____________ Before LINDA E. HORNER, MICHAEL L. HOELTER, and LISA M. GUIJT, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decisions to reject claims 1, 3-5, 7-12, 14-29, and 44-47. See Final Act. 2 (Office Action Summary); Advisory Actions dated June 17, 2021 and October 27, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejections of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Koninklijke Philips N.V.” Appeal Br. 2. Appeal 2021-004599 Application 12/375,430 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates to therapy planning in medicine . . . [and] to other situations in which a therapy is applied to a patient or other subject.” See Spec. 1:3-5. Claims 1, 12, 22, and 29 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A therapy planning system, comprising: a tangible, non-transitory computer readable storage medium encoded with one or more computer executable instructions; and a computer processor which executes the instructions and thereby causes the processor to: compute values of at least one biological parameter of at least one region of interest of a subject from a volumetric functional image of the subject using a tracer generated by a functional imager and registered with an anatomical image of the subject generated by an anatomical imager, wherein the at least one biological parameter includes at least one biological parameter value of the region of interest of the subject indicative of a proliferation of a tumor parameter; and determine one or more desired therapies using the values of the at least one biological parameter and a pathology model. EVIDENCE Name Reference Date Kattan et al. (“Kattan”) US 6,409,664 B1 June 25, 2002 Sjogren et al. (“Sjogren”) US 2004/0002641 A1 Jan. 1, 2004 Sawyer US 2005/0041843 A1 Feb. 24, 2005 REJECTIONS Claims 1, 3-5, 7-12, 14-29, and 44-47 are rejected under 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Appeal 2021-004599 Application 12/375,430 3 Claims 1, 3-5, 7-9, 11, 12, 14-23, 25-27, 29, and 44-47 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sawyer and Kattan. Claims 10, 24, and 28 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sawyer, Kattan, and Sjogren. ANALYSIS The rejection of claims 1, 3-5, 7-12, 14-29, and 44-47 as failing to comply with the written description requirement Appellant argues these claims together. See Appeal Br. 5-13. We select claim 1 for review, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). The Examiner replicates all but the preamble of claim 1 and concludes that “the above functions are identified as specialized functions that require specialized algorithms or programming.” Final Act. 4. The Examiner explains that “a generic reference to hardware alone, such [as] a general purpose computer, or hardware with unidentified ‘software’ is not sufficient support for specialized functions.” Final Act. 4; see also Ans. 4-8. The Examiner finds that Appellant’s Specification “does not provide a sufficient explanation of how a claimed function is achieved . . . that would enable it to provide for the above functions.” Final Act. 5; Ans. 4. As a consequence, the Examiner concludes that “support is not found for what is required for the actual configuration of the processor to allow it to perform the above functions and thus the scope of the claim is unknown.” Final Act. 5; Ans. 4. Appellant does not dispute that a sufficient written description requires disclosure of both hardware and software describing how the claimed function is achieved and acknowledges that “examiners should determine whether the specification discloses the computer and the Appeal 2021-004599 Application 12/375,430 4 algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.” Appeal Br. 6. Appellant explains that an applicant “may ‘express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Appeal Br. 6 (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)) (italics added). Appellant argues that the Specification discloses adequate written description of the claimed invention because “the filed application shows a flow-chart of the sequence of a method, the instructions of which are executed by the processor, in Fig. 5.” Appeal Br. 8; see also id. at 10; Reply Br. 5, 6. Appellant’s referenced flow chart is identified as Figure 5, which is replicated, in its entirety, below. See Appeal Br. 8; Reply Br. 5. Appeal 2021-004599 Application 12/375,430 5 Appellant’s Specification states, “FIGURE 5 depicts a therapy method.” Spec. 4:7. In addition to referencing the above therapy method (not computer algorithm), Appellant also contends that “[b]y using a priori knowledge of suitable functional parameters,” the computation occurring in steps 504 and 506 can occur. Appeal Br. 8-10; Reply Br. 5-7. In other words, certain steps of the above therapy method are based upon knowledge not otherwise disclosed in Appellant’s Specification. MPEP § 2161.01(I) (9th ed. Rev. 10.2019, rev. June 2020) states, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (italics added). This section of the MPEP additionally states, “[t]he critical inquiry is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” (quoting Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015); see also Appeal Br. 6 (discussing Vasudevan noting that “the determination of the sufficiency of the disclosure will require an inquiry into the sufficiency of . . . ‘how [the claimed function] is achieved’”)); Ans. 3 (also discussing Vasudevan). MPEP § 2161.01(I) provides further guidance that [i]f the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made. Appeal 2021-004599 Application 12/375,430 6 Federal case law supports the above by providing instruction that “[c]laiming all [subject matter] that achieve[s] a result without defining what means will do so is not in compliance with the description requirement; it is an attempt to preempt the future before it has arrived.” Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993). Also, we have been instructed that written description is about whether the skilled reader of the patent disclosure can recognize that what was claimed corresponds to what was described; it is not about whether the patentee has proven to the skilled reader that the invention works, or how to make it work, which is an enablement issue. Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1191 (Fed. Cir. 2014). Appellant is not persuasive that the therapy method depicted in Figure 5 above (which, in turn, relies on unenumerated knowledge “of suitable functional parameters”), provides the requisite written description support. Appeal Br. 8. It is not explained “how [the claimed function] is achieved” as Appellant acknowledges is required. Appeal Br. 6. Instead, we are provided with steps 504 and 506 directed to computing or calculating without a discussion of the methodology by which these functions are to be achieved, or the particular “biological parameters” that are to be employed in such computing. We understand that Appellant contends that “the application, as filed discloses the interaction of a processor with instructions (i.e., code).” Appeal Br. 8; see also Reply Br. 4 (“the application as filed refers repeatedly to the use of a computer”), 5. However, the Examiner’s rejection is not premised on a lack of an interaction with a computer, but instead on the lack of adequate description of “how [the] claimed function is achieved” as well as any identification of “the way the inventor performs the function.” Final Appeal 2021-004599 Application 12/375,430 7 Act. 5; see also Ans. 4 (a skilled person “would not have the necessary details or proper means to configure the device as claimed, and/or know how to configure the device as claimed”), 5 (“these instructions . . . are not specialized codes with their special algorithms and don’t support the claimed limitations”), 6-8. Appellant also references “p. 9 of the filed application” as support for the claimed subject matter, but such passages describe “the desired therapy D” and “a condition which can be expected to be reached.” Appeal Br. 8; see also id. at 9. Consequently, the referenced passage is directed to an intended outcome or result, and does not describe how the outcome is achieved. Appellant also asks “what basis in law the Examiner is relying upon” but Appellant appears to have answered that question already by discussing (and quoting) from Vasudevan above, which, as noted, is also discussed in MPEP § 2161.01. Appeal Br. 10; see also id. at 5-6; Reply Br. 4, 7. The answer to Appellant’s question is self-evident. Appellant further states, in a footnote, that it “is entirely unclear why Fig. 5 is seemingly considered deficient to provide an algorithm, flow chart or block diagram to show the relationships between elements.” Appeal Br. 10 fn. 2. However, Appellant’s focus on “the relationships between elements” is not germane to the Examiner’s rejection which, instead, seeks an “explanation of how a claimed function is achieved.” Final Act. 5; see also Ans. 4-8. Thus, and based on the above, we agree with the Examiner’s conclusion that “[t]he claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one Appeal 2021-004599 Application 12/375,430 8 skilled in the relevant art that . . . for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.” Final Act. 2. In other words, we are not persuaded that the therapy method depicted in Figure 5 above can be said to teach a processor’s algorithm, and especially when steps 504 and 506 depicted therein rely upon a methodology that is admittedly not disclosed in Appellant’s Specification. We sustain the Examiner’s rejection of claims 1, 3-5, 7-12, 14-29, and 44-47 as failing to comply with the written description requirement. The rejection of claims 1, 3-5, 7-9, 11, 12, 14-23, 25-27, 29, and 44-47 as unpatentable over Sawyer and Kattan Appellant argues these claims together. See Appeal Br. 13-18. We select claim 1 for review, with the remaining claims standing or falling therewith. The Examiner primarily relies upon the teachings of Sawyer for many of the limitations of claim 1, but acknowledges that Sawyer does not “explicitly mention [a] computer processor.” Final Act. 6. The Examiner relies upon the teachings of Kattan for the missing limitations and provides a reason for their combination. See Final Act. 7. Appellant contends that after reviewing Sawyer, Appellant has “failed to uncover the disclosure of any biological parameter value” regarding “a proliferation of a tumor parameter.” Appeal Br. 14. We have reviewed Sawyer and while it may be correct that Sawyer fails to employ the term “biological parameter value,” Sawyer discloses the use of a biological parameter as recited because it discusses threshold levels that have a tumor parameter, and a tumor parameter is a biological parameter. See Sawyer ¶ 24 (discussing ascertaining an image “that will contrast the particular Appeal 2021-004599 Application 12/375,430 9 tumor with surrounding tissue or that measures a parameter that characterizes the tumor”). Additionally, when rejecting claim 1, the Examiner referenced paragraph 39 of Sawyer which discusses threshold levels “that have a tumor parameter.” See Final Act. 6. Paragraph 39 of Sawyer teaches that different threshold levels may be selected “to see the relationships between the target (pancreatic tumor) and critical radiosensitive structures, such as the duodenum.” See also Final Act. 6; Ans. 9, 11 (all addressing Sawyer’s disclosure of the limitation of “at least one biological parameter includes at least one biological parameter of the region of interest”). Appellant does not explain how ascertaining a relationship between a tumor and more sensitive duodenum tissue fails to teach or suggest the use of biological parameters. Appellant further explains that “in the context of the present teachings, proliferation connotes the rapid reproduction of a cell, part, or organism.” Appeal Br. 14. However, proliferation (i.e., spread over time) is discussed in paragraph 41 of Sawyer which addresses “the change in the tumor due to the last round of therapy.” See also Sawyer ¶ 24 (“using changes in isonumeric contours and contour relationships to predict the likelihood of lung cancer”). Nevertheless, Appellant contends that “[a] review of the captioned portion of Sawyer” finds “nothing about a biological parameter value indicative of proliferation of a tumor parameter as specifically recited in claim 1.” Appeal Br. 15; Reply Br. 9. As noted above, this contention is not persuasive that Sawyer fails to suggest use of a biological parameter to a skilled person upon reading the portions of Sawyer identified above. Appeal 2021-004599 Application 12/375,430 10 Appellant additionally contends that “the attempted combination of references is improper” and that “the motivation must exist in the prior art.” Appeal Br. 16, 17. Appellant’s understanding that the basis for the Examiner’s motivation must be found in the cited art is misplaced. Appeal Br. 17. A reason to modify a prior art reference may be found explicitly or implicitly in market forces, design incentives, the “interrelated teachings of multiple patents,” “any need or problem known in the field of endeavor at the time of invention and addressed by the patent,” “and the background knowledge, creativity, and common sense of the person of ordinary skill.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-21 (2007)). Hence, Appellant’s contention that the Examiner’s reason to combine “must exist in the prior art” is correct only if “prior art” is defined to encompasses the various categories enumerated above. Appellant does not explain how the Examiner’s reasoning is beyond the scope of these different categories. Furthermore, “Appellants respectfully submit the art as applied fails to disclose at least one feature of claim 1.” Appeal Br. 15; Reply Br. 9. As to any limitations discussed above, we are not persuaded that this is the case. However, should Appellant be referring to other limitations of claim 1, then we wish to convey that “[a] skeletal ‘argument’, really nothing more than an assertion, does not preserve a claim. . . . Judges are not like pigs, hunting for truffles buried in briefs.” United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991). Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claims 1, 3-5, 7-9, 11, 12, 14-23, 25-27, 29, and 44-47 as unpatentable over Sawyer and Kattan. Appeal 2021-004599 Application 12/375,430 11 The rejection of claims 10, 24, and 28 as unpatentable over Sawyer, Kattan, and Sjogren Appellant does not argue the rejection of these claims other than to state that “these claims are patentable over the art as applied for at least the same reasons as their respective independent claims.” Appeal Br. 18. We are not persuaded the Examiner erred in rejecting the “respective independent claims” for the above provided reasons. Accordingly, we likewise sustain the rejection of claims 10, 24, and 28 as unpatentable over Sawyer, Kattan, and Sjogren. CONCLUSION The Examiner’s decisions to reject claims 1, 3-5, 7-12, 14-29, and 44-47 are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-5, 7- 12, 14-29, 44-47 112 Written Description 1, 3-5, 7- 12, 14-29, 44-47 1, 3-5, 7- 9, 11, 12, 14-23, 25- 27, 29, 44- 47 103(a) Sawyer, Kattan 1, 3-5, 7- 9, 11, 12, 14-23, 25- 27, 29, 44- 47 10, 24, 28 103(a) Sawyer, Kattan, Sjogren 10, 24, 28 Overall Outcome 1, 3-5, 7- 12, 14-29, 44-47 Appeal 2021-004599 Application 12/375,430 12 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)(1)(iv) (2020). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED