Monday, March 26, 2018

PTAB finds claims directed to tissue volume movement monitoring not ineligible as law of nature, abstract idea

Takeaway: The applicants appealed subject-matter eligibility rejections made under 35 U.S.C. § 101, alleging that the tissue volume monitoring claims were directed to a law of nature and an abstract idea.  Persuaded by the appellants' improvement arguments, the PTAB reversed the rejections, holding that "while using generic and known tracking modalities (such as ultrasound and MRI), [the claimed invention] improves the internal tissue monitoring by using the slower rate modality to adjust parameters of the physical model to predict target volume location, which, in turn, is used to determine a tracking error for deciding when to turn off treatment."


Ex parte Vortman
Appeal No. 2017-003076; Application No. 13/226,060; Tech. Center 3700
Decided:  Feb. 16, 2018

The application on appeal described methods and systems for continuously monitoring movement of an internal volume of tissue during treatment.  A representative claim on appeal read:
1.     A method of continuously monitoring movement of an internal volume of tissue during treatment thereof, the method comprising the steps of:
        using a physical model of anticipated movement of an internal target volume to predict a target volume location as a function of time;
        continuously and directly tracking the internal target volume during treatment thereof using two tracking modalities, wherein
                the first tracking modality provides initial estimated target volume locations based directly on first image contents of the internal target volume obtained at a first information update rate, and
                the second tracking modality identifies subsequent estimated target locations of the internal target volume based directly on second image contents of the internal target volume obtained at a second information update rate lower than the first information update rate wherein the subsequent estimated target locations are more accurate than the initial estimated target volume locations;
        comparing the initial estimated target locations to the predicted target volume locations to determine a tracking error;
        if the tracking error exceeds a safety threshold, suspending treatment; and
        adjusting one or more parameters of the physical model based on the subsequent estimated target locations of the target volume.
(Emphasis added.)

The examiner found the claims to be directed to a law of nature because 
they contained "nothing more than 'well-understood, routine, conventional activity previously engaged in by researchers in the field."'  The examiner further found the claims to be directed to an abstract idea because "there is no clear transformation of the determination and/or image data," no machine was required to obtain the physical model recited in the claims, and all the steps could be "derived by mind or by hand with writing utensil and writing surface."

In the appeal brief, the appellants argued that the claims' "approach clearly does not occur in nature and has markedly different characteristics compared to any natural phenomenon. Indeed, the subject matter of claim 1 is not even remotely relevant to the concepts that courts have found to be laws of nature (such as an isolated DNA, a correlation that is the consequence of how a certain compound is metabolized by the body, electromagnetism to transmit signals, and the chemical principle underlying the union between fatty elements and water)."  The appellants asserted that the examiner had skipped to the second step of the Alice/Mayo framework without properly analyzing the claims under the first step, i.e., the examiner's attempt to characterize the claims as directed to a law of nature was improper in the first place.

As to the allegation that the claims were directed to an abstract idea, the appellants argued:
[N]o case has held, and the Office's guidelines do not state, that a transformation of image data is necessary for patent eligibility under § 101. Rather, to determine whether the claim contains a judicial exception, the Office's guidelines identify several categories of subject matter that represent "abstract ideas" within the scope of binding judicial precedent: fundamental economic practices, certain methods of organizing human activity, an idea "of itself," and mathematical relationships/formulas. Claim I of the present application recites a method of treatment involving target tracking, i.e., continuously monitoring movement of an internal volume of tissue during treatment using two tracking modalities; this hardly qualifies as an "abstract idea" that is merely being applied. It can hardly be characterized as a fundamental economic practice, a method of organizing human activity, an idea "of itself," or a mathematical relationships/formula, nor can it even be analogized to such concepts. . . . [W]hether or not image data is "transformed" in some way is not germane to the patentability of claim 1, because the claim is not limited to mere acquisition of image data, nor does it recite merely recognizing data within collected data sets or a mental process that "can be performed in the human mind, or by a human using a pen and paper."
The appellants further argued that the recitations of suspension of therapy if necessary and updating the basis on which target tracking occurs amounted to a transformation of the image data.  Finally, noting the criticality of "determin[ing] whether the target volume location during treatment significantly deviates from the predicted target location," appellants threw in a brief improvement argument: "this advantageously allows the treatment to be suspended before the healthy, non-target tissue is damaged. Accordingly, claim 1 provides safety improvements in treatment and contains real-world application" (emphasis added).

In the examiner's answer brief, the examiner argued again that the claims amounted to "nothing more than routine data collection and/or insignificant extra-solution activity."  The examiner alleged that "the abstract idea is a critical aspect of the claimed invention."  The examiner also addressed the improvement argument by arguing that it amounted to mere attorney argument and was not supported by evidence such as experimental data.

By the time of the reply brief, the CAFC had favorably decided the pure-software, "self-referential table" case of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).  The appellants were thus prompted to expand somewhat on their improvement argument, the germ of which had been included in their appeal brief:
[In Enfish,] the Court of Appeals for the Federal Circuit determined that a claimed invention qualified as patentable subject matter under step 1 of the Alice framework because the claims focused on an improvement to computer functionality.  Here, the claims focus on an improvement to medical imaging and require operations on image contents based on tracking modalities. If anything, the present claims recite specialized equipment with even greater specificity than in Enfish.
The appellants also challenged the examiner's assertion that experimental evidence was required to demonstrate that the claims were directed to an improvement:
Characterizing the claimed invention as an improvement for § 101 purposes requires no evidence because the proposition is, in fact, self-evident: paragraph [0006] of the specification explains the challenge encountered during tissue treatment; paragraph [0007] describes the drawbacks of conventional approaches; and paragraph [0009] sets forth an approach utilized in the present application to overcome the treatment challenge while avoiding the drawbacks of conventional approaches. . . . [T]o the extent evidence is needed, it is supplied by the present specification.
After finding that the claims amounted to "significantly more" under the second step of the Alice/Mayo framework, the Board further found the improvement argument to be sufficient to overcome the allegation of subject-matter ineligibility:
The holding in [Enfish] also supports the patent eligibility of the claims. . . . In this case, the claims improve the way the tracking modalities operate in determining the movement of tissue volume to determine when to suspend treatment.  Thus, the claimed subject matter is not merely an algorithm or natural phenomenon, but constitutes an improvement to how tracking systems operate, such as ultrasound and MRI, that improves their ability to monitor tissue movement during treatment.  Thus, unlike the claims in In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 610 (Fed. Cir. 2016), the claims include a sufficient inventive concept to satisfy § 101.
(Emphasis added.)

My two cents:

I don't want to say the Board got the outcome wrong.  It is my sense that the claims are not directed to an abstract idea under the framework established by the Supreme Court, as elaborated and expounded upon by the Federal Circuit.  But, I think, even if the Board arrived at the right answer, some of their reasoning gets it very wrong indeed.

In my last post, I highlighted the growing importance of improvement arguments, and provided a series of practice tips for successfully rebutting judicial-exception subject-matter eligibility rejections with improvement arguments.  In this and the next few posts, I'll look at recent PTAB decisions in which improvement arguments helped win reversals of Alice rejections.

It's worth noting that the application was filed on an 8-page specification without drawings.  There is no minimum specification length and no statutory requirement for a drawing so long as none are "necessary for the understanding of the subject matter sought to be patented."  35 U.S.C. § 113.  (It's an interesting question whether the absence of any drawing renders an application immune to the annoyance of objections lodged under Rule 83 ("[t]he drawing in a nonprovisional application must show every feature of the invention specified in the claims").  However, I note that 35 U.S.C. § 113 and Rule 81(c) appear to authorize the examiner to demand a drawing whenever the "subject matter admits of illustration.")  But a thin description may lead to trouble in prosecution, inasmuch as it can give the practitioner very little to lean on when the going gets tough.  In my last post, I discussed the desirability, when making improvement arguments, of underscoring with sufficient explanation the real-world benefits of the improvement (practice tip #5), providing evidence to support the improvement (practice tip #7), and carefully identifying the previous state of the technology field (practice tip #8).  Evidently, the specification was ample enough in this case to provide the needed explanations and evidence.  But if any of the information necessary to make the improvement argument had been culled from the spec in the drafting phase, it could have complicated matters for the prosecuting practitioners, who might have been challenged to provide documentary or testimonial evidence to support their arguments.

But there's a bigger problem here, one that was not addressed by any party or the Board on appeal.  The conditional clause near the end of claim 1, directing the suspending of treatment "if the tracking error exceeds a safety threshold," is properly afforded no patentable weight when considering the patentability of the claim, either under an eligibility rejection or an art-based one.  See MPEP § 2103(I)(C), 4th paragraph, 4th sentence: "Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation."  See also Ex parte Schulhauser, No. 2013-007847 (P.T.A.B. Apr. 26, 2016) (affirming obviousness rejections where a broadest reasonable reading of the claim excised method steps that only needed to be performed if certain conditions precedent are met, and holding that "[a] proper interpretation of claim language, under the broadest reasonable interpretation of a claim during prosecution, must construe the claim language in a way that at least encompasses the broadest interpretation of the claim language for purposes of infringement."); In re Johnston, 435 F.3d 1381 (Fed. Cir. 2006) (optional elements do not narrow claims as they can be omitted).

In the last post, I discussed the importance of the scope of the improvement argument matching the scope of the claim (practice tip #6).  Here, because the claim reads as much on a method that does not suspend treatment as one that does, and because the improvement argument leans heavily on the functionality of this clause that might as well be stricken from the claim (see, e.g., the boldfaced portions of the appellant argument and the decision on appeal, quoted above), there is a potentially crippling scope mismatch between what is actually claimed and what it is argued that is claimed.  Consequently, the applicability of the improvement argument might have been more limited than the examiner, appellants, and Board realized.

It is not clear whether, absent an effective improvement argument, the Board would have given the appellants the win based on their Alice step 2 arguments ("[W]e agree with Appellants that the claim as a whole is significantly more than the ineligible concepts.").  This is because the Board's step 2 analysis seems to rely on the appellants' improvement arguments: "We are persuaded that the claimed
method . . . improves the internal tissue monitoring" (emphasis in original).  As the Federal Circuit has held in various cases, improvement arguments are applicable at either step of the framework.

So, although an improvement argument won this case, perhaps it shouldn't have, at least not as argued and decided, and the Board likely erred in not realizing that a conditional limitation is no limitation.  Possibly, the appellants could have avoided this issue with more artful drafting; "based on the tracking error exceeding a safety threshold, suspending treatment" gets the job done without the complication of patentably weightless conditional claiming language.

1 comment:

  1. I follow the logic, but it appears to conflate "optional" with "conditional" and is very counter-intuitive (perhaps that's why no one addressed this issue). It makes more sense that the conditional language be given patentable weight since it positively recites how a step is performed, even if conditionally. If such a condition is not present in the prior art, then it should be novel over said prior art. In any case, Schulhauser makes an interesting distinction between the conditional method and apparatus claims:

    "Although claim 11 recites functions that are substantially similar to
    the steps recited in the method of claim 1, as noted supra, claim 11 is
    directed to a system. The broadest reasonable interpretation of a system
    claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur. This interpretation of the system claim differs from the method claim because the structure (i.e., a processor programmed to perform an algorithm for carrying out the recited function should the recited condition be met) is present in the system regardless of whether the condition is met and the function is actually performed. Unlike claim 1, which is written in a manner that does not require all of the steps to be performed should the condition precedent not be met, claim 11 is limited to the structure capable of performing all the recited functions. In other words, in this case, the system of claim 11 is narrower in scope than the method of claim 1." This logic could also be applied to method claims.