Ex parte Fautz

OCR transcription for search; preserved printed pages are authoritative

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. |
14/326,661 07/09/2014 Hans-Peter Fautz P14,0066 (26965-5045) 1065
26574 7590 05/15/2019
. EXAMINER
SCHIFF HARDIN, LLP - Chicago | |
PATENT DEPARTMENT DALBO, MICHAEL J
233 S. Wacker Drive-Suite 7100
CHICAGO, IL 60606-6473 | ART UNIT | PAPER NUMBER |
2865
| NOTIFICATION DATE | DELIVERY MODE |
05/15/2019 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):

patents-CH @schiffhardin.com
jbombien @schiffhardin.com

PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-PETER PAUTZ
Appeal 2019-000106
Application 14/326,661
Technology Center 2800
Before MELISSA A. RAAPALA, Acting Vice ChiefAdministrative Patent
Judge, ALLEN R. MacDONALD and JASON M. REPKO, Administrative
Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1 -	9. App. Br. 4.2 We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
1 According to Appellant, the real party in interest is Siemens
Aktiengesellschaft. App. Br. 1.
2 Throughout this opinion, we refer to the Final Office Action ("Final Act."),
mailed July 26, 2017; the Appeal Brief ("App. Br."), filed February 20,
2018; the Examiner's Answer ("Ans."), mailed August 3, 2018; and the
Reply Brief ("Reply Br."), filed October 3, 2018.

Appeal 2019-000106
Application 14/326,661

THE INVENTION

Appellant’s invention generally relates to magnetic resonance (MR)
tomography. Spec. 1. An MR tomography device performs slice-imaging
MR tomography. /d. These devices use reception coils to receive signals
generated while scanning a subject. /d. The described invention optimizes
the signal-to-noise ratio (SNR) from the reception coils. /d. at 3.

Claims 1, 8, and 9 are independent. Claim 8, reproduced below, is
exemplary:

8. A magnetic resonance (MR) tomography apparatus
comprising:

an MR data acquisition unit comprising a radio frequency
(RF) transmission system comprising a number n of
single RF coils Ej with which reception signals I; are
respectively acquired, withi=1,...,n;

a processor provided with or configured to determine, for
each single coil Ei, an individual reception
sensitivity profile in the spatial domain r B1; (1):

B1y (4) = lay()] «eh HO
with amplitude a;(r) and phase ¢;(r);

said processor being configured to operate the MR
tomography apparatus to scan an examination
subject introduced into the MR _ tomography
apparatus to acquire reception signals I,(k) in the
frequency domain with wave number k via the n
reception coils Ej;

said processor being configured to determine Fourier-
transformed signals IF;(r) from the reception
signals I;(k), wherein:

IF,(r) = p(r): e!® - B17 (rF) + N

with N:= noise term, p(r)e!?“ := proton density;

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Application 14/326,661

said processor being configured to determine complexly
corrected signals IF,(r) on the basis of the signals
IF;(r) and the individual reception sensitivity
profiles B1; (1);

said processor being configured to determine a sum signal
MR(r) via complex addition of the corrected signals
IF,(r):

MR(r) = >. IF,(r) ; and

said processor being configured to reconstruct image data
of the examination subject on the basis of the sum signal MR(r),
and to make the image data available at an output of the processor
as an electronic data file.

Amendments to the Claims, filed May 12, 2017, p. 4.

THE REJECTION
Claims 1—9 stand rejected under 35 U.S.C. § 101 as directed to patent-

ineligible subject matter.* Final Act. 1—5.

> The claim listing in the Appeal Brief was defective. See Notification of
Non-Compliant Appeal Brief, Paper No. 20180309-1, mailed March 13,
2018. Appellant then filed a Supplemental Appeal Brief with a replacement
claim listing. Supplemental Appeal Brief, filed April 6, 2018. But the
replacement claim listing contains extraneous text. See, e.g., id. at 5
(showing claim 1 with references to page and line numbers such as “(p.9,
1.1-3)”). In this decision, we refer to the last-entered claims, which are the
claims on appeal.

* We note that claim 1 uses italics inconsistently (e.g., claim | recites a;(r)
and ai(r)). Amendments to the Claims, filed May 12, 2017, p. 2. Also,
several terms are italicized in claim | but not in its dependent claims. Claim
1 as originally filed does not contain the italicized versions of these terms,
and we find no entered amendment that changes these terms. Claims, filed
July 9, 2014. Thus, we treat all italicizations as typographical errors and, for
example, interpret a;(r) and aj(r) as the same term.

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Appeal 2019-000106
Application 14/326,661

ANALYSIS
I. Principles of Law

Section 101 defines patent-eligible subject matter as “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. But courts have long
held that laws of nature, natural phenomena, and abstract ideas are not
patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 70-71 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)).
These ineligible concepts are implicit exceptions to the statutory categories.
Id. at 71.

The Supreme Court articulated a two-step subject-matter eligibility
test in Mayo and Alice Corp. v. CLS Bank International, 573 U.S. 208
(2014). Alice/Mayo step one asks whether a claim is “directed to” a judicial
exception. Alice, 573 U.S. at 217. In Alice/Mayo step two, 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.” /d. (quoting Mayo, 566 U.S. at 79,
78). Step two is described as a search for an “inventive concept.” Jd.

The USPTO recently published revised guidance on patent subject
matter eligibility. 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Guidance”). Step 1 of the
USPTO’s eligibility analysis asks whether the claimed subject matter falls
within the four statutory categories of invention. /d. at 53-54. Under Step
2A, Prong One of the Guidance, we determine if the claim recites a judicial

exception, including particular groupings of abstract ideas (1.e.,

Appeal 2019-000106
Application 14/326,661
mathematical concepts, certain methods of organizing human activity, or
mental processes). /d. at 52-53. If so, we then analyze the claim to
determine whether the recited judicial exception is integrated into a practical
application of that exception under Step 2A, Prong Two of the Guidance.
Id. at 53-55; MPEP 8§ 2106.05(a){c), (e}+{h) (9th ed. Rev. 08.2017, Jan.
2018). Only if the claim is directed to the judicial exception, do we then
look to whether the claim adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional activity in the
field” (see MPEP § 2106.05(d)) or whether the claim simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 56.
II. The Examiner’s Rejection and Appellant’s Arguments

According to the Examiner, the claims are directed to an abstract idea.
Final Act. 1. The Examiner determines that the claims are similar to abstract
ideas relating to mathematical formulas and “collecting information,
analyzing it, and displaying certain results of the collection and analysis.”
Id. at 3 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d
1344 (Fed. Cir. 2014); Classen Immunotherapies, Inc. v. Biogen IDEC, 659
F.3d 1057 (Fed. Cir. 2011); In re Grams, 888 F.2d 835 (Fed. Cir. 1989)).
Also, the Examiner finds that the MR tomography apparatus is an additional
element that is well-understood, routine, and conventional in the art. Ans. 4.
According to the Examiner, the processor does not meaningfully limit the

abstract idea beyond generally linking the method’s use to a computer. /d.

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The Examiner finds that the data collection and display are insignificant
extra-solution activity. /d. at 6-8.

Appellant argues that the claims are patent eligible because they
provide a technical solution to a problem in the field of MR tomography.
App. Br. 6—7. In Appellant’s view, a processor analyzes signals from the
MR tomography device and its reception coils in a specific way.

Reply Br. 2. Appellant points out that the “physical properties of those
reception coils, namely the reception sensitivity profiles, are used in the
analysis.” Id.

III, Does the claim recite a judicial exception?

Under Step 2A, Prong One of the Guidance, we first consider whether
the claim recites a judicial exception. Guidance, 84 Fed. Reg. at 51. The
Guidance organizes the abstract-idea exception into the following subject-
matter groupings: mathematical concepts, certain methods of organizing
human activity (e.g., a fundamental economic practice), and mental
processes. /d. at 52. The mathematical-concept grouping includes
mathematical relationships, calculations, equations, and formulas. Jd.

Here, the independent claims? recite three mathematical formulas:

(1) B1; (1) = lay) * eh HM,

(2) IF,(r) = p(r)- e?® - B17 (r) +N, and

> The three independent claims in this appeal recite substantially similar
functions as a method (claim 1), an apparatus (claim 8), and a medium
(claim 9). In particular, claim 8 recites an apparatus with a processor that
performs the steps recited in claim 1’s method. Likewise, claim 9 recites a
computer-readable data-storage medium encoded with programming
instructions causing a control and processing system to perform claim 1’s
method. We refer to claims 1, 8, and 9 collectively as the independent
claims.

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(3) MR(r) = Yi lFi(r).

The recited processor uses the first formula, B1; (r), for the individual
reception-sensitivity profiles of the device’s coil array. The MR tomography
system then scans the examination subject to acquire frequency-domain
signals, IF;(r). From these signals, the processor uses the second formula to
determine the corresponding Fourier-transformed signals. Next, the
processor determines the complexly corrected signals from the results of the
first two formulas. Last, the processor sums the complexly corrected signals
in the third formula to obtain sum signal MR(r) for image reconstruction. In
summary, the independent claims recite three mathematical formulas and
four calculations that use those formulas.

The Examiner identifies these limitations as an abstract idea.

Final Act. 2 (reproducing the limitations with bold formatting). As to this
identified concept only, we conclude that, under Step 2A, Prong One of the
Guidance, the independent claims recite an abstract idea: a mathematical
concept.

IV. Is the claim directed to the recited judicial exception?

Because the claims recite an abstract idea, we now proceed to
determine, under Step 2A, Prong Two of the Guidance, whether the recited
judicial exception is integrated into a practical application. Guidance, 84
Fed. Reg. at 51. 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. Jd.

To the extent that the Examiner regards the MR tomography device’s
operation to be abstract, we disagree. See Final Act. 3 (discussing scanning

an examination subject and reconstructing image data). As we explain in

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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.

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)(D(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.” /d. The claimed system eliminated “many ‘complications’
inherent in previous solutions” for determining an object’s position and
orientation. /d. 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 Parker v. Flook, the claim used a

° 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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mathematical formula to calculate a numerical limit on a process variable in
the catalytic chemical conversion of hydrocarbons. 437 U.S. 584, 586
(1978), 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. /d. at 589-91. Reflecting on this case,
the Supreme Court in Bilski v. Kappos commented that “Flook established
that limiting an abstract idea to one field of use or adding token postsolution
components did not make the concept patentable.” 561 U.S. 593, 612
(2010).

We disagree with the Examiner that the recited data collection is a
field of use or merely adds token components to the mathematical equations.
See Final Act. 3; Ans. 6-8. Here, as in Thales, the independent claims solve
a technical problem. We agree with Appellant that the MR tomography
device in the claimed solution is neither a token addition nor an abstract
concept. App. Br. 6—7.

Specifically, the invention involves surface coils used in MR
tomography. See Spec. 1-3. Modern MR tomography systems have both

volume and surface coils. /d. at 1. Typically, volume coils act as a

9

transmitter, and surface coils are “reception coils”—1.e., they receive signals
generated during a scan of an examined subject. /d. Because the surface
coils are flexible and small, they are particularly suited for imaging surface-
proximate structures. /d. But surface coils have a small measurement depth
and a reduced field of view. /d. Also, the coil’s sensitivity decreases with
distance. /d. at 2. So the surface coils have an inhomogeneous image
exposure. /d. at 1-2. These properties may cause an undesirable intensity

decline in the resulting image. /d. at 2.

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Application 14/326,661

Appellant is concerned with solving the technical problem of
improving sensitivity correction in MR tomography devices. See id. at 3.
Appellant’s described solution overcomes the limitations of existing
approaches. See id. at 2-4.

For example, one existing approach is the prescan-normalize method.
Id. at 3. The prescan-normalize method creates a spatial-correction map
using values from both the surface-coil array and the volume coil. /d. But
this method cannot be used with high-field devices available at the time of
the invention, because these devices lack a volume coil with a homogeneous
reception sensitivity. /d. Unlike the prescan-normalize method, the claimed
invention, as explained below, can be used in high-field systems because it
does not use a volume coil as a reference. /d. at 6.

Another approach is the adaptive-combine method. /d. at 3. This
method combines the reception coil’s signals, but its SNR is sub-optimal.
Id. The claimed invention, though, combines the signals in a way that
optimizes SNR through the complex correction of the individual reception
signals I;(k). /d. at 5.

Appellant’s described technical solution is required by the
independent claims. For instance, the independent claims recite determining
each single coil’s reception sensitivities, B1; (r), with the relative phases
and amplitudes. This addresses the shortcomings of the prescan-normalize
method, which does not determine the reception sensitivities of individual
channels. /d. Also, the recited complex correction of the individual
reception signals I;(k) allows the direct addition with optimal SNR. /d.
This is an improvement over methods that combine measurement signals by

calculating the absolute value, which prevents signal cancelations but does

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not deliver optimal SNR. /d. at 3. The independent claims recite a practical

application of these results because the claimed method, device, and medium
improve the output by reconstructing “image data of the examination subject
on the basis of the sum signal.” See Claims 1, 8, and 9.

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.” 850 F.3d at 1349. The mathematical calculations recited in the
independent claims are “‘a consequence of the arrangement of” the device’s
coils and how they receive signals during the scan. See id. For instance,
Appellant points out that the reception coil’s physical properties—.e., the
reception-sensitivity profiles—are used in the analysis. Reply Br. 2. This
analysis results in an improved reconstructed image. /d. For all these
reasons, the claimed invention uses the recited mathematical equations to
improve the imaging system. See id.

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’).

Thus, we do not sustain the rejection of independent claims 1, 8, and
9. For the same reasons, we also do not sustain the rejection of dependent

claims 2—7, which are rejected under the same rationale. See Final Act. 4—5.

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DECISION

We reverse the Examiner’s decision to reject claims 1-9.

REVERSED

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