Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/16/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
Drawings submitted on 6/16/2023 are accepted.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Procedure of extracting in claim 7 [CPU 11];
Procedure of deriving in claim 7 [CPU 11];
Procedure of determining in claim 7 [CPU 11].
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process without significantly more. The claim(s) recite(s) limitations that can be performed in the human mind with no additional limitations. This judicial exception is not integrated into a practical application because the limitations can be wholly contained within the mind. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the mental process is not integrated into a practical application.
To distinguish ineligible claims that merely recite a judicial exception from eligible claims that require an implementation of judicial exception, the Supreme Court uses a two-step framework: Step One (Step 2A), determine whether the claims at issue are directed to one of those patent-ineligible concepts; and Step Two (Step 2B), if so, ask “what else is there in the claims?” to determine whether the additional elements transform the nature of the claim into a patent eligible application.
Under the 2019 Revised Patent Subject Matter Eligibility Guidance, the first step / Prong One of Step One (Step 2A) to determine patent eligibility requires the determination of whether the claims at issue are directed to an enumerated patent ineligible concept.
Prong (1) requires the determination of (a) the specific limitations in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea and (b) determining whether the identified limitations falls within the subject matter groupings of abstract ideas enumerated.
The enumerated patent ineligible concepts comprising:
(a) Mathematical Concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity – fundamental economic principles / practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules / instructions) and
(c) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Prong (2) asks does the claim recite additional elements that integrate the judicial exception into a practical application? For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981.
The second step (Step 2B) is to determine whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
Claim 1 is directed to an image processing apparatus:
A - at least one processor, wherein the processor extracts a region of a target organ from a medical image,
B - extracts a region of at least one peripheral organ that is present in a periphery of the target organ from the medical image,
C - derives a positional relationship between the target organ and the peripheral organ, and
D - determines whether or not the target organ is compressed by the peripheral organ based on the positional relationship.
Steps A and B can be accomplished in the human mind by observing an image. Step C can be accomplished in the human mind by evaluating the position of the observations made in steps A and B. Step D can be accomplished in the human mind though judgment and opinion of step C.
Step 1 – yes, the claim is directed to a statutory category of an apparatus (machine).
Step 2A Prong 1 – yes, the claim is directed to an abstract idea. The mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping.
Step 2A Prong 2 – no, there are no additional elements that integrate the abstract idea into a practical application.
Step 2B – no, the claim does not recite additional elements that amount to an inventive concept more than the recited judicial exceptions.
Claim 2 is directed to the apparatus of claim 1:
that recites: wherein the processor further determines presence or absence of atrophy of the target organ.
The limitation of claim 2 can be performed in the human mind through observation and judgment of step C.
Step 1 – yes, the claim is directed to a statutory category of an apparatus (machine).
Step 2A Prong 1 – yes, the claim is directed to an abstract idea. The mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping.
Step 2A Prong 2 – no, there are no additional elements that integrate the abstract idea into a practical application.
Step 2B – no, the claim does not recite additional elements that amount to an inventive concept more than the recited judicial exceptions.
Claim 3 is directed to the apparatus of claim 2:
that recites: wherein the processor determines whether or not the target organ is compressed by the peripheral organ in a case in which it is determined that the target organ has the atrophy.
The limitation of claim 3 can be performed in the human mind through observation and judgment of step C.
Step 1 – yes, the claim is directed to a statutory category of an apparatus (machine).
Step 2A Prong 1 – yes, the claim is directed to an abstract idea. The mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping.
Step 2A Prong 2 – no, there are no additional elements that integrate the abstract idea into a practical application.
Step 2B – no, the claim does not recite additional elements that amount to an inventive concept more than the recited judicial exceptions.
Claim 4 is directed to the apparatus of claim 3:
that recites: wherein the processor determines that the target organ has no abnormality in a case in which it is determined that the target organ has no atrophy, determines that the target organ has no abnormality in a case in which the target organ has the atrophy and the target organ is compressed by the peripheral organ, and determines that the target organ has the abnormality in a case in which the target organ has the atrophy and the target organ is not compressed by the peripheral organ.
The limitation of claim 4 can be performed in the human mind through observation and judgment of step C.
Step 1 – yes, the claim is directed to a statutory category of an apparatus (machine).
Step 2A Prong 1 – yes, the claim is directed to an abstract idea. The mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping.
Step 2A Prong 2 – no, there are no additional elements that integrate the abstract idea into a practical application.
Step 2B – no, the claim does not recite additional elements that amount to an inventive concept more than the recited judicial exceptions.
Claim 5 is directed to the apparatus of claim 1:
that recites: wherein the processor determines whether or not the target organ is compressed by the peripheral organ based also on the medical image in addition to the positional relationship.
The limitation of claim 5 can be performed in the human mind through observation and judgment of step C.
Step 1 – yes, the claim is directed to a statutory category of an apparatus (machine).
Step 2A Prong 1 – yes, the claim is directed to an abstract idea. The mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping.
Step 2A Prong 2 – no, there are no additional elements that integrate the abstract idea into a practical application.
Step 2B – no, the claim does not recite additional elements that amount to an inventive concept more than the recited judicial exceptions.
Claims 6 and 7 recite similar corresponding limitations and are therefore rejected likewise to claim 1 above.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsutaoka (US Pub No. 20210219941).
Claim 1: Tsutaoka discloses an image processing apparatus comprising:
at least one processor, wherein the processor extracts a region of a target organ from a medical image [in Step S2, the bladder extraction unit 18 performs image analysis on the ultrasound image acquired in Step S1, and thereby performs processing of extracting the bladder from the ultrasound image, p0054 & p0058],
extracts a region of at least one peripheral organ that is present in a periphery of the target organ from the medical image [Step S4, the prostate extraction unit 19 performs processing of extracting the prostate based on the ultrasound image from which the bladder is extracted in Step S2, p0060],
derives a positional relationship between the target organ and the peripheral organ [Step S5, determination is made whether or not the prostate is extracted from the ultrasound image in Step S4. In Step S5, in a case where determination is made that the prostate is extracted, the process proceeds to Step S6. In Step S6, the region-of-interest setting unit 20 sets a region of interest in which the rectum is assumed to be present, based on the position of the prostate extracted in Step S4, p0061-0062], and
determines whether or not the target organ is compressed by the peripheral organ based on the positional relationship [in a case where the prostate C is enlarged, the enlarged prostate C pushes the bladder B up toward the shallow side [i.e., bladder is compressed out of position] and the rectum down toward the deep side, p0076 – interpretation based on specification p0052 as filed].
Claim 2: Tsutaoka discloses the image processing apparatus according to claim 1, wherein the processor further determines presence or absence of atrophy of the target organ [in a case where the prostate C is enlarged, the enlarged prostate C pushes the bladder B [i.e., interpreted as absence of atrophy determination because no condition of the bladder is discussed being similarly disclosed as the prostate] up toward the shallow side and the rectum down toward the deep side, p0076].
Claim 3: Tsutaoka discloses the image processing apparatus according to claim 2, wherein the processor determines whether or not the target organ is compressed by the peripheral organ in a case in which it is determined that the target organ has the atrophy [p0054 - NOTE: this is a contingent limitation. When the “case” does not happen, then the remainder of the contingency does not happen either. The first determination limitation is only executed if the second determination limitation is true. Since claim 2, from which this claim depends, was not true, i.e., atrophy present determined, then the limitation of claim 3 is not executed. The cited reference includes sufficient structure to perform the function should the “case” occur. See MPEP 2111.04(II)].
Claim 4: Tsutaoka discloses the image processing apparatus according to claim 3, wherein the processor determines that the target organ has no abnormality in a case in which it is determined that the target organ has no atrophy [in a case where the prostate C is enlarged, the enlarged prostate C pushes the bladder B [i.e., interpreted as absence of atrophy determination because no condition of the bladder is discussed being similarly disclosed as the prostate] up toward the shallow side and the rectum down toward the deep side, p0076], determines that the target organ has no abnormality in a case in which the target organ has the atrophy and the target organ is compressed by the peripheral organ [p0054 - NOTE: this is a contingent limitation. When the “case” does not happen, then the remainder of the contingency does not happen either. The first determination limitation is only executed if “in a case” limitation is true. Since claim 2, from which this claim ultimately depends, was not true, i.e., atrophy present determined, then the limitation of claim 4 is not executed. The cited reference includes sufficient structure to perform the function should the “case” occur. See MPEP 2111.04(II)), and determines that the target organ has the abnormality in a case in which the target organ has the atrophy and the target organ is not compressed by the peripheral organ [p0054 - NOTE: this is a contingent limitation. When the “case” does not happen, then the remainder of the contingency does not happen either. The first determination limitation is only executed if the second determination limitation is true. Since claim 2, from which this claim depends, was not true, i.e., atrophy present determined, then the limitation of claim 3 is not executed. The cited reference includes sufficient structure to perform the function should the “case” occur. See MPEP 2111.04(II)).
Claim 5: Tsutaoka discloses the image processing apparatus according to claim 1, wherein the processor determines whether or not the target organ is compressed by the peripheral organ based also on the medical image in addition to the positional relationship [e.g., ultrasound image, p0057 & p0075-0076].
Claims 6 and 7: the method and program herein have been executed or performed by the apparatus of claim 1 and are therefore likewise rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Davatzikos et al, US Pub No. 20160239969, is directed to an automated abnormality detection in a medical image.
Jake St. Peter’s Post via Facebook, 3/3/2016, is directed to the visual discernment of organ compression by surrounding organ structures or non-compression by surrounding organ structures.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BARBARA D REINIER whose telephone number is (571)270-5082. The examiner can normally be reached M-Tu 10am - 6pm.
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/BARBARA D REINIER/Primary Examiner, Art Unit 2682