Ex parte Olson

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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. | CONEIRMATION NO. |
11/715,923 03/09/2007 Eric S. Olson 0G-042000US / 6172
82410-0161
55962 7590 03/25/2019
‘ . EXAMINER
Wiley Rein LLP | |
Patent Administration NGUYEN, HIEN NGOC
1776 K Street, NW
Washington, DC 20006 | ART UNIT | PAPER NUMBER |
3793
| NOTIFICATION DATE | DELIVERY MODE |
03/25/2019 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):

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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC S. OLSON, ERIC J. VOTH,
and JEFFREY A. SCHWEITZER
Appeal2017-006489
Application 11/715,9231
Technology Center 3777
Before JEFFREY N. FREDMAN, CHRISTOPHER G. PAULRAJ, and
JAMES A. WORTH, Administrative Patent Judges.
PAULRAJ,Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's non
final rejections of claims 7-13, 40, and 41 as set forth in a Non-Final Office
Action and modified in the Examiner's Answer. Non-Final Office Action
(Aug.24,2016) ("Non-Final Act."); Examiner's Answer (Jan.26,2017)
1 According to Appellants, the real party in interest is St. Jude Medical,
Atrial Fibrillation Division, Inc., the assignee of record. Appeal Brief
("Appeal Br.")2.

Appeal 2017-006489
Application 11/715,923

(“Ans.”); 37 C.F.R. § 41.31(a)(1).. We have jurisdiction under 35 U.S.C.
§ 6(b).

The Examiner rejected all of the pending claims under 35 U.S.C.
§ 101 on the basis that the claimed invention is patent-ineligible because it is
directed to a judicial exception without significantly more. Non-Final Act.
2. The Appellants argue that the claims are not directed to an abstract idea,
are directed to patent-eligible subject matter, and the Examiner’s rejection
should be reversed. Appeal Br. 12—16. For the reasons explained below, we
determine that the Examiner has not established that the claims are directed

to patent-ineligible subject matter. Thus, we reverse.

CLAIMED SUBJECT MATTER

The claims are directed to an improved “method and system for
locally deformable registration of a catheter navigation system to an external
model or external image data” such that the invention operates “to transform
the coordinate system of [a] catheter navigation system to the coordinate
system of [an] external model or external image data.” Specification
(“Spec.”) § 26. Claim 7, reproduced below, is illustrative of the claimed
subject matter:

7. A method of registering a catheter navigation system to a
three-dimensional image, comprising:

a) obtaining a three-dimensional image of at least a portion
of a heart, the three-dimensional image including position

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information for a plurality of location points on a surface of the
heart measured relative to a coordinate frame Y;

b) placing a tool on a surface location X; of the heart;

c) measuring position information for the surface location
X; relative to a coordinate frameX;

d) identifying a corresponding location Y; on the three-
dimensional image;

e) associating the position information for the surface
location X; as measured by the catheter navigation system
relative to coordinate frame X with position information for the
corresponding location Y; on the three-dimensional image
relative to coordinate frame Y as a fiducial pair (Xi, Yi); and

f) using at least two fiducial pairs (Xi, Y;) to generate a
mapping function f that transforms points within coordinate
frame X to coordinate frame Y such that, for each fiducial pair
(Xi, Y;), an error function f(X;) — Y; ~ 0, wherein the step of using
at least two fiducial pairs to generate a mapping function
comprises:

using a thin plate splines algorithm to generate the
mapping function,

wherein the thin plate splines algorithm comprises
summing a fixed number of weighted basis functions,

wherein the fixed number of weighted basis functions is
the same as a number of fiducial pairs that were associated, and

wherein the mapping function compensates for
inhomogeneities in the catheter navigation system such that, for
each fiducial pair (X;, Yi), the error function f(4;) ~ Y; ~ 0.

Appeal Br. Claims Appendix (“Appeal Br. Cl. Appx.”) 18.

Appeal 2017-006489
Application 11/715,923
REJECTION
Claims 7-13, 40, and 41 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Non-Final Act. 2.

ANALYSIS
Standard for Patent Ineligibility

In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept,” id. at 216-218, and, in this case, the inquiry
centers on whether the claims are directed to a judicial exception. If the
initial threshold is met, we then move to the second step, in which 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.” Jd. at 217 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78
(2012)). The Supreme Court describes the second step as a search for “an
‘inventive concept’—i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Jd. (quoting Mayo, 566
US. at 72-73).

The USPTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 20/9 Revised Patent

Appeal 2017-006489
Application 11/715,923

Subject Matter Eligibility Guidance (“Memorandum’’). Under that
guidance, we 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); and

(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a){c), (e Hh)).
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
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.

See Memorandum.
Examiner’s Findings and Conclusion
At the first step of the Alice inquiry, the Examiner determines claims
7-13 are directed to “a method of registering a catheter navigation system to
a three-dimensional image,” which is abstract because:

the claimed invention relies upon collecting and comparing
known information, comparing new and stored information and
using rules to identify options, organizing information through
mathematical correlations, which are considered an abstract idea,
or a concept similar to those found by the courts to be abstract,
as it involves an idea of itself or registering images using
mathematical algorithm such as splines.

Non-Final Act. 3; Ans. 2-3. The Examiner concludes that “(t]he claims
essentially cover[]| a general algorithm to be executed on a general purpose
computer that is cited with [a] generic catheter navigation system and

generic catheter/tool that are well-known, conventional systems/devices in

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the field of medical imaging” and contends that the Appellants do not “claim
any new and novel structures for the catheter and catheter navigation
system.” Ans. 5.

At the second step of the Alice inquiry, the Examiner determines the
claims do not recite elements sufficient to transform the abstract idea into a
patent-eligible invention. The Examiner states that the steps are merely:

insignificant post-solution activity and/or data gathering (e.g.
obtain 3d images, measuring position); routine and conventional
data processing steps (e.g. generate a mapping function that
transform points); conventional elements of a computing
environment (e.g. catheter navigation system etc.); and/or
applying the abstract idea in a computer environment according
to well-known, routine, and conventional techniques (e.g.
measuring position information and identifying a corresponding
location).

Non-Final Act. 3; Ans. 3. The Examiner finds that although “the claim(s)
result in the registration of a catheter to a 3D cardiac image,” it is not “a
meaningful limitation beyond generally linking the use of an abstract idea to
a particular technological environment.” Non-Final Act. 4; Ans. 3-4.
Additionally, the Examiner finds that “the claimed invention fails to
recite any specific machine for performing the apparent computational
steps,” which is problematic because “generic computer implementation is
not the sort of ‘additional feature’ that provides any ‘practical assurance that
the process is more than a drafting effort designed to monopolize the
[abstract idea] itself.’” /d. (citing Mayo, 566 U.S. at 77). The Examiner
further explains that the “localization, mapping, register and display catheter
tool[s]” are “well-known and conventional” and states that the “[c]atheter
tool and mapping function are conventional.” Non-Final Act. 6. Thus, the

Examiner concludes that the catheter navigation system is generic and “does

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not add significantly more to the general mapping function that is an
algorithm which in itself is an abstract idea.” Ans. 6.

The Examiner also finds that Appellants’ incorporation of a general
error function that is “approximately zero into the mapping function to
compensate for inhomogeneities in the catheter navigation system appears to
preempt many fields with the known desired result.” Ans. 5. Thus, the
Examiner concludes that Appellants have fail to show that the claims are
directed to an improvement in the technology at issue and that the
“technology or desired result already exists.” Id.

Appellants’ Contentions

At Alice step 1, Appellants argue that the claims are not directed to an
abstract idea and dispute the Examiner’s characterization of the claimed
invention as a “method of registering a catheter navigation system to a three-
dimensional image.” Appeal Br. 12. Rather, Appellants argue that the
claims are directed to “registering the coordinate system of specific
hardware (e.g., ‘a catheter navigation system’) to the coordinate system of a
medical image.” /d. (emphasis omitted). Appellants contend that the claims
are “focused ‘on an improvement to [catheter navigation system]
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity’” (citing Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336 (Fed. Cir. 2016)) and explain that the claims are “directed
to an improvement in how inhomogeneities in a specific medical device (‘a
catheter navigation system’) can be compensated for in order to utilize a

medical image, such as an MRI or CT image, during a medical procedure

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carried out using the catheter navigation system.” Jd. at 13; Reply Brief
(“Reply Br.”) 4.

Further, Appellants argue that the recited system is not used for its
plain and ordinary use as a mere tool in the claimed invention, but it is a
“specific improvement in the system itself that facilitates its use with
external imagery.” Appeal Br. 13. Appellants further argue that the instant
appeal is similar to McRO in that the Examiner “oversimplified” specific
requirements found in the claims. /d. at 13 (citing McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (“We
have previously cautioned that courts ‘must be careful to avoid
oversimplifying the claims’ by looking at them generally and failing to
account for the specific requirements of the claims.”)). Appellants contend
that “the instant claims require specific characteristics — specific types of
user inputs and the use of specific warping algorithms that result in specific
mapping functions that achieve specific results.” /d. Appellants assert that
“the claimed invention effects a specific improvement in the performance of
this technology” and “a claim need not recite ‘new and novel structures’ to
be considered not abstract.” Reply Br. 4-5 (emphasis omitted), n.1 (citing
Enfish, 822 F.3d at 1335 (“Software can make non-abstract improvements to
computer technology just as hardware improvements can, and sometimes the
improvements can be accomplished through either route.’’)).

At Alice step 2, Appellants argue that even if the claims are found to
be directed to an abstract idea, “it is clear that the claims as a whole ‘clearly
do[] not seek to tie up any judicial exception such that others cannot practice
it.” Appeal Br. 14. (emphasis omitted) (citing 2014 Interim Guidance, 79
Fed. Reg. at 74625). Appellants argue that the Examiner does not address

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the claim elements as a whole and only addresses them in isolation. Reply
Br. 5. Appellants maintain that the claims are patent-eligible because they:

require the use of specific hardware (e.g., “a catheter navigation

system”), the collection of specific inputs (e.g., position

information for multiple surface locations relative to both a

coordinate frame X and a coordinate frame Y), and the creation

of a specific mapping function (e.g., one that, for each fiducial

pair, yields an error function of about zero).

Id.; Appeal Br. 14.

Appellants also argue that the claims “‘recite a specific application of
the mathematical algorithm that improves the functioning’ of the medical
system itself” and that both the individual claims and ordered combination
of the claims solve the problem of a “need to ensure that medical images []
can be utilized in connection with a catheter navigation system (e.g., an
electrical impedance-based navigation system) in a manner that compensates
for non-linearities and other inhomogeneities in the catheter navigation
system itself’ and “the claimed solution ‘is tethered to the technology that
created the problem.’” /d. at 14—15.

Our Review

Applying the guidance set forth in the Memorandum, we conclude the
Examiner erred in rejecting the claims as being directed to patent-ineligible
subject matter. The Memorandum instructs us first to determine whether
any judicial exception to patent eligibility is recited in the claim. The
guidance identifies three judicially-excepted groupings: (1) mathematical

concepts; (2) certain methods of organizing human behavior such as

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fundamental economic practices; and (3) mental processes. We focus here
on the first grouping—mathematical concepts.

Claim 7 recites the following limitations: “using at least two fiducial
pairs (Xi, Yi) to generate a mapping function /that transforms points within []
X to [] Y such that, for each fiducial pair[], an error function /(X;) — Y; ~ 0”;
and:

using a thin plate splines algorithm to generate the mapping

function, wherein the thin plate splines algorithm comprises

summing a fixed number of weighted basis functions . . . [that]

is the same as a number of fiducial pairs that were associated,

and wherein the mapping function compensates for

inhomogeneities in the catheter navigation system such that, for

each fiducial pair (X;, Yi), the error function f (Xi) — Y; ~ 0.
Appeal Br. Cl. Appx. 18. These limitations, under their broadest reasonable
interpretation, recite the mathematical relationships between coordinate
frames X and Y, the mathematical formula for the error function, f(Xi) — Yi ~
0, and the mathematical calculation using a thin plate splines algorithm to
generate the mapping function by summing a fixed number of weighted
basis functions. Thus, like the use of mathematical equations to determine
the optimal cure time for rubber in a mold or to determine the orientation of
an object relative to a moving reference frame, Appellants’ claims use
mathematical equations to register a catheter navigation system to a three-
dimensional image. See Diamond v. Diehr, 450 U.S. 175, 177-179 (1981);
Thales Visionix Inc. v. United States, 850 F.3d 1343, 1347-1348 (2017).
Accordingly, we conclude under Step 2A, Prong | of the Memorandum that
the claims recite the judicial exception of a mathematical concept.

Nonetheless, that is not the end of our analysis. Having determined

that the claims “recite” a judicial exception, our analysis under Step 2A,

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Prong 2 of the Memorandum now turns whether there are “additional
elements that integrate the judicial exception into a practical application.”
See MPEP § 2106.05(a){c), (e}-(h). Here, Appellants’ claim 7 recites
additional limitations which focus on addressing problems arising in the
context of registering a catheter navigation system to a three-dimensional
image in connection with cardiac procedures. Spec. J] 26, 28. These
limitations include (1) “placing a tool on a surface location X; of the heart”;
(2) “measuring position information for []_X; relative to a coordinate frame
X”; (3) “identifying a corresponding location Y; on the three-dimensional
image”; and (4) “associating the position information for []_X; as measured
by the catheter navigation system relative to []_X with position information
for [] Y; on the three-dimensional image relative to [] Y as a fiducial pair (Xi,
Y;).” Appeal Br. Cl. Appx. 18.

We conclude that these limitations integrate the recited judicial
exception of mathematical concepts into a practical application. These
additional elements apply the thin plate splines algorithm, weighted basis
functions, and error functions recited in the claims in a meaningful way,
such that it is more than a drafting effort designed to monopolize the
mathematical concepts exception. See MPEP § 2106.05(e). In particular,
these limitations apply the recited mathematical calculations to improve
registration of a catheter navigation system to a three-dimensional image of
a heart by accounting for non-linearities and inhomogeneities in the catheter
navigation system and reduce errors in the localization field. Spec. {Jj 5—8.
As further explained in the Specification, the claimed method “generate[s] a
mapping function that transforms points within the catheter navigation

system to the three-dimensional image such that, for each fiducial pair (Xi,

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Y;), an error function measures a mapping error of about zero.” Spec. 49.
Thus, the claimed transformation avoids errors introduced in the prior art,
such as those introduced when an affine transformation is used. Jd. 5.

We also find this to be similar to the claims at issue in Diehr and
Thales, in which mathematical concepts were used to improve particular
technology. See Diehr, 450 U.S. at 187 (concluding that when “computer
use incorporated in the process patent significantly lessens the possibility of
‘overcuring’ or ‘undercuring,’ the process as a whole does not thereby
become unpatentable subject matter”); Thales, 850 F.3d at 1348-1349
(finding patent-eligibility upon considering “claims directed to a new and
useful technique for using sensors to more efficiently track an object on a
moving platform”); see also MPEP § 2106.05(a)(II) (“The courts have also
found that improvements in technology beyond computer functionality may
demonstrate patent eligibility”).

We also conclude that the claimed limitations apply the mathematical
concepts with a particular machine, 1.e., the catheter navigation system. As
with the GPS receiver in SiRF’, the catheter navigation system recited in the
present claims is a particular machine that “is integral to each of the claims
at issue.” SiRF Tech., Inc. v. Int’] Trade Com’n, 601 F.3d 1319, 1332
(2010). Claim 7 is expressly directed in its preamble to “[a] method of
registering a catheter navigation system to a three-dimensional image,” and
further recites “placing a tool on a surface location X7 of the heart.” Appeal
Br. Cl. Appx. 18. It also refers to “associating the position information for
the surface location X; as measured by the catheter navigation system” and
“wherein the mapping function compensates for inhomogeneities in the

catheter navigation system.” /d. Further, claim 7 relies on the catheter

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navigation system to measure “the position information for the surface
location X;” of the heart, and the position information for the surface
location can exist only with respect to a particular catheter navigation system
that connected to the tool on a surface location of the heart. See SiRF, 601
F.3d at 1332 (concluding that the claim required “‘pseudoranges’ that
estimate the distance from “the GPS receiver to a plurality of GPS satellites”
and that pseudoranges “can exist only with respect to a particular GPS
receiver that receives the satellite signals”). Thus, as in SiRF, “the methods
at issue could not be performed without the use of a [catheter navigation
system].” Jd.; see also MPEP § 2106.05(b) (“When determining whether a
claim recites significantly more than a judicial exception, examiners should
consider whether the judicial exception is applied with, or by use of, a
particular machine.”).

Accordingly, we conclude the claimed invention is integrated into a
practical application, and under the guidance provided in the Memorandum,
the claims have not been shown to be patent-ineligible because they are not

“directed to” a judicial exception.

DECISION
We reverse the Examiner’s rejection of claims 7-13, 40, and 41.
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).

REVERSED

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