On December 29, 2016, the Patent Trial and Appeal Board (PTAB) issued a decision rejecting most claims of an application for an MRI machine patent, finding the claims directed toward an abstract idea and therefore patent-ineligible under § 101.
Inventors Hiroyuki Itagaki and Takashi Nishihara filed an appeal with the PTAB after a United States Patent and Trademark Office examiner rejected the claims as obvious under § 103. The panel of administrative law judges reversed the examiner's § 103 rejections. However, the PTAB found new grounds for rejecting the claims under § 101. The application discloses an MRI machine and image classification method wherein the MRI machine classifies and rearranges multiple images, making it easier for a user to compare images. In finding the claims abstract under § 101, the PTAB applied the two-step analytical framework outlined in the Supreme Court's decision in Alice v. CLS Bank.
The first step under Alice requires that the board examine whether the claims are directed toward a patent-ineligible concept, such as an abstract idea. Here, the claimed subject matter was directed toward image classification. The board reasoned that "[c]lassification is a building block of human ingenuity" and "[a]s such the classification concept is directed toward an abstract idea."
The second step under Alice involves "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." The PTAB held that merely applying the image classification concept to an MRI machine does not make the classification concept any less abstract, stating generally that "a recitation of practical application for an abstract idea is insufficient to transform an abstract idea into an inventive concept."
The PTAB noted that the multi-station MRI machine described by claim 1 was not otherwise patentably distinct from typical multi-station MRI machines available at the time the application was filed. The PTAB then considered the "classification processing unit," which was described as "a classification processing unit configured to classify the plurality of images by image types and station position, based on imaging condition including imaging parameters." The board held that, because the "unit" was described in general functional terms, the description "does little to patentably transform the classification abstract idea."
The PTAB concluded that "[c]lassifying images is not transformed into an inventive concept by simply applying it to the images a typical multi-station MRI necessarily produces." Accordingly, under the analytical methodology outlined by Alice, the PTAB found the clams patent-ineligible under § 101.
Ex Parte Itagaki, et al, Appeal No. 2015-002702 (PTAB Dec. 29, 2016). [Lorin (opinion), Mohanty and Meyers]
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