DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
2. 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.
3. Claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
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 Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “laws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step 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 the 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.”). For example, 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, Appeal 2018-002948 Application 13/009,053 594-95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
Specifically, claim(s) 1-20 are directed toward at least one judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea), without significantly more. In accordance with the 2019 PEG, the rationale for this determination is explained below.
Step 1 Statutory Categories (streamlined analysis):
Establishing the broadest reasonable interpretation of the claim as a whole, does it fall under one of the four patentable categories of 35 U.S.C. § 101:
(1) process;
(2) machine;
(3) manufacture;
(4) composition of matter.
Step 1:
Representative claim 1 is directed toward a method, which is a statutory category of invention.
Representative claim 9 is directed toward a method, which is a statutory category of invention.
The claim(s) recite(s) the mental process for executing a depicting, which is an “abstract idea,” without significantly more.
Revised Step 2A; Prong One of Two Prong Inquiry:
Although claim 1 recite a method/apparatus that falls within one of the four patentable categories of 35 U.S.C. § 101, the Supreme Court has "long held that this provision contains an important implicit exception" that "laws of nature, natural phenomena, and abstract ideas are not patentable." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quotation omitted). To determine patentable subject matter a revised determination will be made using the 2019 PEG.
"First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts" of "laws of nature, natural phenomena, and abstract ideas." Alice Corp. v. CLS Bank int'l, 134 S. Ct. 2347, 2355 (2014). "The inquiry often is whether the claims are directed to 'a specific means or method’ for improving technology or whether they are simply directed to an abstract end-result.". To determine if the claim “recites” and “abstract idea,” the Examiner identifies the specific limitations in the claim under examination the Examiner believes recites an “abstract idea” and determines whether the identified limitation(s) fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG.
The grouping of abstract ideas, as recited in the 2019 PEG, comprises:
(1) Mathematical Concepts/Formulas;
a. mathematical relationships;
b. a mathematical formula or equation;
c. a mathematical calculation;
d. formula;
(2) Mental Processes; and
a. concepts performed by the human mind or by pen and paper (e.g. observation, evaluation, judgement, opinion);
(3) Certain Methods of Organizing Human Activity (e.g. fundamental economic practice);
a. fundamental economic principles or practices (e.g. hedging, insurance, mitigating risk);
b. commercial or legal interactions (e.g. contracts, legal obligations, business relations, advertising;
c. managing personal behavior or relationships;
d. interactions between people (e.g. social activities, teaching);
Claim Analysis:
(a) Identifying the specific limitation(s) in the claim that recites an abstract idea (note: abstract idea is highlighted bold);
Claim 9. A computer-implemented method for training a neural network for determining at least one characteristic of adipose tissue, the computer-implemented method comprising:
obtaining one or more training computed tomography images depicting an anatomical structure including the adipose tissue;
segmenting each of the one or more training computed tomography images to determine a contour of the adipose tissue;
determining, based on the one or more segmented training computed tomography images, at least one predicted characteristic of the adipose tissue using the neural network; and
updating parameter values of the neural network based on a comparison between each of the at least one predicted characteristic and a corresponding reference characteristic of the adipose tissue.
(b) Determine whether the identified specific limitation(s) falls within at least one of the groupings of abstract ideas enumerated in 2019 PEG;
Claim Analysis:
The claim recites the limitation(s):
obtaining one or more training computed tomography images depicting an anatomical structure including the adipose tissue;
segmenting each of the one or more training computed tomography images to determine a contour of the adipose tissue;
determining, based on the one or more segmented training computed tomography images, at least one predicted characteristic of the adipose tissue using the neural network; and
updating parameter values of the neural network based on a comparison between each of the at least one predicted characteristic and a corresponding reference characteristic of the adipose tissue.
Thus, the limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer (i.e., processor, storage) components. That is, other than reciting “processor,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “processor” language, the claim encompasses the user manually processing information. The mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process.
The Examiner identifies that the Applicant’s claim limitations full under 2019 PEG group(s) of abstract idea is/are: (2) Mental Processes; (3) Certain Methods of Organizing Human Activity;
Because the claims are directed to the mental process for executing a depicting, which is an abstract idea. Since the identified limitations(s) fall within any of the groupings of abstract ides enumerated in the 2019 PEG, the analysis should proceed to Revised Step 2A, Prong Two.
We must now 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. A claim that recites an “abstract idea” must include “additional features” to ensure the claim is more than a drafting effort designed to monopolize the “abstract idea.”
Revised Step 2A, Prong Two of Two Prong Inquiry:
The Examiner then makes a determination if there are there any additional element(s) or a combination of elements that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception. Therefore, the additional element(s) or a combination of elements, recited in the claim, is beyond the judicial exception(s), and
Does the claim recite additional elements that integrate the judicial exception into a “practical application” of the exception? Requires an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
Because the Examiner has found that the claims are directed to abstract ideas/judicial exception, the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself.
The relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea...on a generic computer.
Claim Analysis:
(a) Identifying the specific limitation(s) in the claim that recites additional element(s) or a combination of elements:
obtaining one or more training computed tomography images depicting an anatomical structure including the adipose tissue;
segmenting each of the one or more training computed tomography images to determine a contour of the adipose tissue;
determining, based on the one or more segmented training computed tomography images, at least one predicted characteristic of the adipose tissue using the neural network; and
updating parameter values of the neural network based on a comparison between each of the at least one predicted characteristic and a corresponding reference characteristic of the adipose tissue.
(b) Does the claim as a whole integrates the mental process into a practical application?
Examples of limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for disease or medical condition;
Applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b); Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c); and Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception;
The Examiner considers whether the claimed invention pertains to an improvement in:
(1) The functioning of the computer itself; or
(2) Any other technology or technical field.
This is also referred to as a technological solution to a technological problem.
Determine, by the Examiner, that there is a technical explanation as to how to implement the invention in the Specification and the claim itself reflects the
improvement in technology. In determining to identify the “improvement” the Examiner searches both:
(1) The Specification; and
(2) The Claims;
The Specification must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as pertaining to an improvement in technology. For example, the Specification could identify a technical problem and explain how the Specification provides a technical solution.
As to the claims, after the Examiner has consulted the Specification and determined the disclosed invention pertains to an improvement in technology, the claim must be evaluated to ensure the claim itself reflects the improvement in technology. It must be determined whether the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.
Under a “particular machine” consideration, a claim limitation can integrate a judicial exception by implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim. This consideration is discussed in MPEP 2106.05(b).
A claim to add a generic computer or generic computer components and asserts that the claim integrates a judicial exception because the generic computer is 'specially programmed, or is a ‘particular machine, the Examiner should look at whether the added elements integrate the judicial exception. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection.
Under a “particular transformation’ consideration, a claim limitation can integrate a judicial exception by effecting a transformation or reduction of a particular article to a different state or thing. This consideration is discussed in MPEP 2106.05(c).
Under “other meaningful limitations” consideration, a claim limitation can integrate a judicial exception by applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. This consideration is discussed in MPEP 2106.05(e).
Examples of limitations that are “NOT” indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f);
Generally linking the use of the judicial exception to a particular technological environment or field of use, as discussed in MPEP 2106.05(h).
Result of Claim Analysis:
The claim recites the additional element(s): a computer (i.e., a processor), the “processor” in the step(s) is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to the abstract idea.
Thus, the exception is not integrated into a “practical application,” then the claim is “directed to” the exception, proceed to Step 2B.
Analysis Step 2B:
Because we determine the claims are directed to an abstract idea, we analyze the claims under step 2B of Alice to determine if there are additional limitations that individually, or as an ordered combination, ensure the claims amount to "significantly more" than the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 76- 77)). Does the claim provide an inventive concept i.e., does the claim recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception (e.g. abstract idea) in the claim?
Because the Examiner has found that the claims are directed to abstract ideas/judicial exception, the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself.
The relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea...on a generic computer.
Step 2B includes evaluation of the same considerations as revised Step 2A Prong Two, plus two additional considerations:
whether the additional elements amount to significantly more than the exception itself;
Claim Analysis:
obtaining one or more training computed tomography images depicting an anatomical structure including the adipose tissue;
segmenting each of the one or more training computed tomography images to determine a contour of the adipose tissue;
determining, based on the one or more segmented training computed tomography images, at least one predicted characteristic of the adipose tissue using the neural network; and
updating parameter values of the neural network based on a comparison between each of the at least one predicted characteristic and a corresponding reference characteristic of the adipose tissue.
Claim Analysis Result:
Thus, taken alone, the additional elements do not amount to significantly more than the above identified judicial exception (the “abstract idea”). Looking at the limitations as an ordered combination, as a whole, adds nothing that is not already present when looking at the elements individually. There is no indication that the combination of elements, the ordered combination of the elements as a whole, improves the functioning of a computer or improves any other technology.
The additional elements of claim(s) 9 do not change the analysis as claim(s) 9 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because alone, the elements do not amount to significantly more than the abstract idea. The additional elements of claim(s) 9 taken together, as an ordered combination, as a whole, also do not amount to significantly more than the abstract idea. The additional elements of claim(s) 9 include:
A computer-implemented method for training a neural network for determining characteristic of adipose tissue,
Applicants “additional elements” disclose generic computer components performing generic computer functions which alone, do not amount to significantly more than the judicial exception. Within claim(s) 9, they are recited at a high level of generality and are functioning and processing instructions in a conventional manner known in the industry. Courts have held computer-implemented processes not to be significantly more than an “abstract idea” (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an “abstract idea,” such as an idea that could be done by human analog (i.e. by hand or by merely thinking). This is the central issue with the claimed invention as the computer elements are merely used as a tool to carry out the “abstract idea,” to perform functions, such as:
obtaining one or more training computed tomography images depicting an anatomical structure including the adipose tissue;
segmenting each of the one or more training computed tomography images to determine a contour of the adipose tissue;
determining, based on the one or more segmented training computed tomography images, at least one predicted characteristic of the adipose tissue using the neural network; and
updating parameter values of the neural network based on a comparison between each of the at least one predicted characteristic and a corresponding reference characteristic of the adipose tissue.
which are well-understood and conventional to the industry. Thus taken alone, the additional elements do not amount to significantly more than the above identified judicial exception (the “abstract idea”). Looking at the limitations as an ordered combination, as a whole, adds nothing that is not already present when looking at the elements individually. There is no indication that the combination of elements, the ordered combination of the elements as a whole, improves the functioning of a computer or improves any other technology.
Their collective functions merely provide conventional computer implementation as the Specification, which merely indicate generic and conventional computing components, used as a tool to implement the “abstract idea, without specifically identifying improvements to the technology utilized, rather indicating technology is merely utilized as a tool to implement the “abstract idea.”
Applicant's limitations are represent instructions for the “abstract idea” and/or insignificant post-solution activity. Moreover, these limitations do not constitute significantly more because they are simply an attempt to limit the “abstract idea” to a particular technological environment. Viewing these limitations in combination with the elements that set forth the “abstract idea,” the claim(s) 9 merely instruct the process of
obtaining one or more training computed tomography images depicting an anatomical structure including the adipose tissue;
segmenting each of the one or more training computed tomography images to determine a contour of the adipose tissue;
determining, based on the one or more segmented training computed tomography images, at least one predicted characteristic of the adipose tissue using the neural network; and
updating parameter values of the neural network based on a comparison between each of the at least one predicted characteristic and a corresponding reference characteristic of the adipose tissue.
which are instructions to implement the “abstract idea.”
Furthermore, the limitations whish set forth the “abstract idea” do not appear to be sufficiently supported by the required algorithm(s) necessary to carry out their claimed function in a specific, limiting manner, thereby indicating a high level or preemption.
Conclusion
Thus, when all of the limitations of the claims are considered, both individually and as an ordered combination as outlined above, the Examiner concludes that the claim is not directed to a patent-eligible subject matter under 35 USC 101 because it does not amount to significantly more than the “abstract idea.”
Additionally, the Examiner would additionally point out the following:
“The method claims do not, for example, purport to improve the functioning of the computer itself. See ibid. (“There is no specific or limiting recitation of ... improved computer technology …”); Brief for United States as Amicus Curiae 28-30. Nor do they effect an improvement in any other technology or technical field. See, e.g., Diehr, 450 U. S., at 177-178. Instead, the claims at issue amount to “nothing significantly more” than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.”
Also, the Examiner would like to point out that “claims for which computers are invoked merely as a tool...use of a computer as a tool — economic task, or method of conducting business, the computer acts as a device to move and hold data, but the computer is used merely in its ordinary capacity of routine computerization of bookkeeping functions are not tied to a technological advance.” “Furthermore, merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, 855 F.3d at 1327 (“Adding one abstract idea (math) to another abstract idea ... does not render the claim non-abstract.”); see also FairWarning IP, LLC v. latric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas).”
Also, the Examiner would like to point out that “an inventive concept that transforms the “abstract idea”’ into a patent-eligible invention must be significantly more than the “abstract idea” itself, and cannot simply be an instruction to implement or apply the “abstract idea” on a computer.”
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Dependent claim(s) 2-8, 17-18 and 10-16, 19-20 when analyzed as a whole are held to be patent ineligible under 35 USC 101 because the additional recited limitations only refine the abstract idea further.
For instance, in claim(s) 2-8, 17-18 and 10-16, 19-20 the steps, under the broadest reasonable interpretation, are further refinements of [organizing human activities, mental process, mathematical concepts/formulas] because these steps further describe the intermediary steps of the underlying process.
In all the dependent claim(s), the judicial exception is not integrated into a practical application because the limitations are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. This is because the claim(s) do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; the claims do not affect a transformation or reduction of a particular article to a different state or thing; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment. In addition, the dependent claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Thus, the claims as a whole, do not amount to significantly more than the
abstract idea itself. For these reasons, the dependent claim(s) also are not patent eligible.
Claim(s) 1 contains similar language or like deficiencies found in claim 9.
Dependent claim(s) 2-8, 17-18 and 10-16, 19-20 do not add any limitations that would remedy the deficiencies outlined above and are rejected accordingly.
Cited Art
4. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CHENNUBHOTLA et al. (US 2018/0204085) discloses a method of identifying regions of interest in a hematoxylin and eosin (H&E) stained tissue image, comprising: receiving image data representing the H&E stained tissue image; quantifying local spatial statistics for the H&E stained tissue image based on the received image data; identifying histological structures within the H&E stained tissue image based on the local spatial statistics; and generating a segmented H&E stained tissue image using the received image data and the identified histological structures, wherein the image data is normalized image data created from opponent color space data, and wherein the opponent color space data is generated by transforming original RGB data representing the H&E stained tissue image into an opponent color space.
UDUPA et al. (US 2023/0129957) discloses a method, comprising: receiving imaging data associated with a patient; causing the imaging data to be input into a convolutional neural network stored on one or more computing devices; determining, based on output data resulting from inputting the imaging data into the convolutional neural network, body composition information; and causing output of the body composition information, wherein the convolutional neural network comprises a filter that outputs a probability that a portion of the imaging data is indicative of subcutaneous adipose tissue, a probability that a portion of the imaging data is indicative of visceral adipose tissue, a probability that a portion of the imaging data is indicative of muscle tissue, and a probability that a portion of the imaging data is indicative of skeletal tissue.
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLEN H NGUYEN whose telephone number is (571)270-1229. The examiner can normally be reached M-F 7 am-4 pm.
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/ALLEN H NGUYEN/ Primary Examiner, Art Unit 2683