DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 07/15/2025 has been entered.
3. Claims 9, 11-13 have been amended; claims 1-8, 16-29, 33 and 40 have been canceled; and new claims 43 and 44 have been added. Therefore, claims 9-15, 30-33, 35-39 and 41-44 are currently pending in this application.
Claim Rejections - 35 USC § 101
4. Non-Statutory (Directed to a Judicial Exception without an Inventive Concept/Significantly More)
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 99-15, 30-33, 35-39 and 41-44 are rejected under 35 U.S.C.101 because the claimed invention is directed to an abstract idea without significantly more.
(Step 1)
The current claims fall within one of the four statutory categories of invention (MPEP 2106.03).
(Step 2A) [Wingdings font/0xE0] Prong (i):
The claim(s) recite a judicial exception, namely an abstract idea, as shown below:
— Considering claim 9 as a representative claim, the following claimed limitations recite an abstract idea:
[collect] a plurality of facial images, wherein each image of the plurality of facial images is marked with a point identifying an anatomical feature, and [draft] a baseline [template]; receive inputs relating to an atomy of a patient; a first input comprising one or more facial images of the patient; [create] a patient-specific [template] from the baseline [template] and one or more facial images; identify, from the patient-specific [template], a facial anatomical feature of the patient; receive at least a second input relating to the ethnicity information of the patient; apply one or more ethnicity-specific filters to [a] patient model; receive [information regarding] a plurality of ethnicity-specific injection techniques and/or products based on the second input; [determine] an outcome for each of the plurality of ethnicity-specific injection techniques and/or products, the outcome comprising phi ratio calculations using the patient-specific [template]; recommend at least one of the plurality of ethnicity-specific injection techniques and/or products for the patient to improve one or more phi ratios; receive [information] indicative of at least one of the recommended ethnicity-specific injection techniques and/or products; and [demonstrate] the effect.
Thus, the limitations identified above recite an abstract idea since the limitations correspond to certain methods of organizing human activity, which is part of the enumerated groupings of abstract ideas identified according to the current eligibility standard (see MPEP 2106.04(a)). For instance, the current claims correspond to managing personal behavior, such as teaching, wherein one or more inputs related to a user are collected (e.g., one or more facial images related to the user, the user’s ethnicity data, data regarding the user’s anatomy, desired procedure and/or product, etc.); and wherein, based on the analysis of (i) a plurality of facial images that are utilized to form a bassline template and (ii) a user-specific template created based on the above baseline template and the user’s facial image(s), a recommendation is presented to the user regarding the procedure or a product, including a visual information (e.g., a simulated result) that depicts the expected outcome of the procedure/product on the user’s anatomy, etc.
(Step 2A) [Wingdings font/0xE0] Prong (ii)
The claim(s) recite additional elements, wherein a computing system, which comprises a processor, a memory, a display, etc., is utilized to perform the recited functions regarding: training an algorithm (“train on a plurality of facial images . . . wherein the training outputs a baseline point-mask”); receiving inputs (“receive and process inputs relating to an anatomy of a patient”; “receive and process a first input comprising one or more facial images of the patient”); processing the received inputs to determine one or more results (“generate a patient-specific point mask from the baseline point-mask and one or more facial images; identify, from the patient-specific point mask, a facial anatomical feature of the patient”); receiving additional input and performing further analysis (“receive at least a second input relating to ethnicity information of the patient; apply one or more ethnicity-specific filters to the virtual patient model”; “receive a plurality of ethnicity-specific injection techniques and/or products based on the second input; simulate an outcome for each of the plurality of ethnicity-specific injection techniques and/or products, the outcome comprising phi ratio calculations using the patient-specific point mask”); generating a recommendation and receive further input (“recommend at least one of the plurality of ethnicity-specific injection techniques and/or products for the patient to improve one or more phi ratios; receive a user input indicative of an injection comprising the at least one of the recommended ethnicity-specific injection techniques and/or products”); and displaying a visual result (“output the virtual patient model with a simulated effect . . . on a display device”), etc.
The observations above demonstrate that the claimed additional elements fail to integrate the abstract idea into a practical application since the additional elements are utilized merely as a tool to facilitate the abstract idea. Thus, when each claim is considered as a whole, the additional elements fail to integrate the abstract idea into a patent-eligible practical application since they fail to impose meaningful limits on practicing the abstract idea. For instance, when each of the claims is considered as a whole, none of the claims provides an improvement over the relevant existing technology.
The observations above confirm that the claims are indeed directed to an abstract idea.
(Step 2B)
Accordingly, when the claim(s) is considered as a whole (i.e., considering all claim elements both individually and in combination), the claimed additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to “significantly more” than the abstract idea itself (also see MPEP 2106). The claimed additional elements
are directed to conventional computer elements, which are serving merely to perform conventional computer functions. Accordingly, none of the current claims recites an element—or a combination of elements—directed to an inventive concept.
Note also that, per the original disclosure, the current claimed invention is directed to a conventional and generic arrangement of the additional elements. For instance, the disclosure describes the implementation of one or more commercially available computing devices (e.g., a computer, a tablet, a smartphone, etc.), which run a training application that allows a user (e.g., a doctor, a patient, etc.) to learn different injection techniques (e.g., see [0070] of the specification).
Although the specification also contemplates the process of training the processor of the computer system, the training is not directed to an improvement over the relevant existing technology; rather, it relates to a routine practice in the art where the processor is trained using manually marked images—such as, images of faces manually marked with points to show certain anatomical features (e.g. the nose, the eyes, the lips, etc.), so that the processor utilizes such data as a baseline to generate a patient-specific point mask (see [0093]).
It is worth to note that the use an artificial intelligence algorithm, including training the algorithm based facial images that include one or more markings that identify facial features, etc., is already part of the conventional computer/network technology (e.g., see US 2003/0063801: [0035], [0037] to [0041], [0050], [0051], [0072], [0075]; also see US 2003/0065578 and US 2014/0099029).
The evidence above confirms that the claimed system does not provide a technological improvement over the conventional computer/network technology. Instead, it is still utilizing the conventional technology—merely as a tool—to facilitate the recommendation of an injection or a product to a user.
Of course, it is further worth to note that that the use of the conventional computer and/or network technology to facilitate the presentation of training and/or recommendations to a user, including the process of generating one or more simulation results based on the analysis of information collected from the user, etc., is already directed to a well-understood, routine or conventional activity in the art (e.g., see
US 2007/0150247; US 2009/0262988; US 2001/0037191; US 2003/0065278, etc.).
The observations above confirm that the current claimed invention fails to amount to “significantly more” than an abstract idea.
It is worth noting that the above analysis already encompasses each of the current dependent claims (i.e., claims 10-15, 30-33, 35-39 and 41-44). Particularly, each of the dependent claims also fails to amount to “significantly more” than the abstract idea since each dependent claim is directed to a further abstract idea, and/or a further conventional computer element(s) utilized to facilitate the abstract idea. Accordingly, none of the current claims implements an element—or a combination of elements—that provides an inventive concept (e.g., none of the current claims implements a claim element—or a combination of claim elements—that provides an improvement over the conventional technology, etc.).
► Applicant’s arguments directed to section §101 have been fully considered (the arguments filed on 07/15/2025).
Firstly, while citing MPEP 2106.04(a)(2(II), Applicant asserts that “[a]lthough the MPEP does not provide specific examples of what constitutes ‘teaching’ under the sub-grouping of managing personal behavior, the claimed invention is not directed to presenting a ‘recommendation . . . to the user regarding a procedure or a product, including a visual information (e.g., a simulated result) that depicts the expected outcome of the procedure/product on the user's anatomy.’ Rather, the claimed invention provides a specific solution to solve a problem in selecting a treatment plan based on patient expectations. As disclosed in the present application, e.g., at paragraphs [0007]-[0008]” (emphasis added).
However, unlike Applicant’s speculation, the MPEP is not necessarily required to provide any specific example regarding “what constitutes” teaching since the term “teaching” is already self-explanatory. Note that the MPEP is not necessarily required to provide definition regarding such basic terminology.
Moreover, the claimed system is being utilized as a tool to provide teaching. In particular, besides providing a recommendation—i.e., teaching the user—regarding injection techniques and/or products relevant to the user (e.g., based on the user’s ethnicity), the platform is also educating the user regarding the different types of injection techniques and/or products, including the effect that such techniques and/or products have on the user’s appearance. Consequently, Applicant’s assertion above is inaccurate.
Applicant is further asserting that the claimed platform is providing “a specific solution to solve a problem in selecting a treatment plan based on patient expectations” (emphasis added). Accordingly, Applicant appears to admit that the claimed platform is once again a tool, which is utilized to teach the user regarding a possible solution to solve the user’s cosmetic or appearance issues. Thus, Applicant is effectively admitting that the claim does recite an abstract idea; namely, managing personal behavior, under the group certain method of organizing human activity. Note also that none of the paragraphs from the specification, including the ones that Applicant has cited ([0007], [0008]), negates the fact above.
In addition, Applicant is relying on the claimed computer-elements to challenge the Office’s findings presented under prong-one of Step 2A. For instance, Applicant is asserting that “the amended claims here recite a computing system configured to generate a patient-specific point mask . . . Claim 9, as a whole, is not directed to the abstract idea of teaching” (emphasis modified). However, unlike Applicant’s assertion above, prong-one of Step 2A (i) does not consider the claimed computer-elements, and furthermore (ii) does not consider the claims as a whole. Instead, it requires one merely to identify the judicial exception (e.g., the abstract idea) as recited in the claims (see MPEP 2106.07(a), emphasis added),
For Step 2A Prong One, the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception. For example, if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it is an abstract idea.
Consequently, Applicant’s attempt to challenge prong-one of Step 2A, while relying on the claimed computer-elements and/or the claim as a whole, is not accurate.
Applicant has also listed some examples from the MPEP that correspond to managing personal behavior; however, it is important to note that the examples do not necessarily represent a complete list.
Applicant has also attempted to distinguish the current claims from one of the nonprecedential cases; namely Brown (per the October update of the 2019 PEG). However, Applicant fails to provide any proper rationale. Instead, Applicant appears to list a bunch of limitations. For instance, Applicant does not provide the reason (if any) why a patient-specific point mask—such as a patient-specific facial sketch—cannot be created, using a pen and paper, from a baseline point mask—e.g., a standard/generic facial sketch. Nevertheless, Applicant’s arguments are still irrelevant to challenge the Office’s finding presented under prong-one of Step 2A. Although the current claims may overlap the abstract idea group mental processes, the Office is identifying the group certain method of organizing human activity, as the most relevant abstract idea group concerning the current claims.
Secondly, regarding prong-two of Step 2A, Applicant is once again relying of the same paragraphs from the specification (i.e., [0007] and [0008]) in order to substantiate the assertion that the claims “integrate the abstract idea into a practical application that imposes a meaningful limitation on the claim . . . the practical application of improvement of injection outcomes by providing at least one injection technique/product that would better match the patient's expectations (e.g., improving phi ratios) without a patient having to go through trial and error on their face . . . a computing system configured to simulate an outcome for each of a plurality of ethnicity-specific injection techniques and/or products, the outcome comprising phi ratio calculations using the patient-specific point mask, and recommend one or more techniques and/or products to a user to improve phi ratios of the patient” (emphasis added).
However, except for the attempt made to describe the benefits that the claimed platform is providing to the patient, and/or the information that the platform collects and analyzes in order to provide the results (e.g., the recommendation of a procedure and/or product, and/or the simulation of the outcome of a procedure/product), Applicant still does not demonstrate a technological improvement (if any) that the claimed platform is providing over the relevant existing technology. Given the structural and functional features that the current claims are reciting, the claimed platform is a computer-based online service provider. Thus, if one assumes that the claimed platform integrates the abstract idea into a patent-eligible practical application, then one has to demonstrate at least one claim element—or a combination of claim elements—that provides a technological improvement over the existing computer/network technology. In contrast, the alleged benefits that the platform is providing to the user, and/or the type of information that the platform is collecting and analyzing to generate the simulation and/or the recommendations, etc., do not necessarily constitute a technological improvement. Thus, Applicant’s arguments directed to prong-two of Step 2A are also not persuasive.
Thirdly, regarding Step 2B, Applicant is asserting that “[a]s described in the Specification, ‘[t]he application can display the injection sites that are unique to a certain ethnicity so that the user can learn the techniques that have an improved outcome on that ethnicity.’ Specification at paragraph [0079]. Claim 9, as amended, recites ‘receive a plurality of ethnicity-specific injection techniques and/or products based on the second input.’ The claims are directed to the improvement of injection outcomes by providing at least one ethnicity-specific injection technique and/or product that would better match the patient's expectations without a patient having to go through trial and error on her face. Accordingly, Claim 9, as amended, recites a particular type of injection techniques and/or products, which adds a specific limitation other than what is well-understood, routine, conventional activity in the field, or adds unconventional steps that confine the claim to a particular useful application” (emphasis added).
However, unlike Applicant’s assertion, the claimed platform does not improve injection outcomes. Instead, based on inputs received from the patient (e.g., input specifying the ethnicity), it provides to the patient a simulation that illustrates the effect of a particular injection/product, including a recommendation to the patient regarding injection techniques/products. Thus, the above does not constitute an improvement of injection outcomes (e.g., no actual injection is performed with respect to the patient, much less one that improves the outcome). Instead, the claimed platform is being used, merely as a tool, to teach the user regarding the effect of injection techniques/products, and/or a recommended injection technique/product.
In addition, Applicant appears to misapply the test for determining whether a given claim is directed to a well-understood, routine, conventional activity (hereinafter WRCA). Note that the WRCA test applies to the underlying technology, but not necessarily to the particular objective—or intended use—of the claimed platform, which Applicant is implying above (e.g., providing at least one ethnicity-specific injection technique and/or product that would better match the patient's expectations without a patient having to go through trial and error on her face). In particular, when each of the current claims is considered as a whole, each claim is directed to the conventional and generic arrangement of the additional elements. This is because the claimed platform relies on the conventional computer/network technology in order to provide, based on the analysis of information gathered from the user, recommendations and/or simulation regarding injection techniques and/or products. Thus, given the lack of technological improvement, none of the current claims—when considered as a whole—implements an inventive concept that amounts to “significantly more” than an abstract idea. Consequently, Applicant’s arguments are not persuasive.
Note that the same is true regarding the generic summary, which Applicant has attempted to make regarding the alleged eligibility of the claims, “[t]he claims . . . directed to specific, practical applications that improve the patient-treatment field. Moreover, even if the claims were directed to the alleged abstract idea, the claims recite additional elements that amount to significantly more than the alleged abstract idea” (emphasis added). In particular, none of the claims provides any improvement in patient treatment field since no actual treatment is taking place. Applicant is mistaking the information, which the claimed platform is providing in the form of recommendation/simulation, for an actual treatment. Moreover, the discussion presented above already demonstrates that the claimed platform is utilizing the conventional computer/network technology to provide pertinent information to the user, based on the analysis of information gathered from the user (see the discussion above). This confirms that none of the claims, when considered as a whole, recites additional elements that amount to “significantly more” than an abstract idea. Consequently, Applicant’s arguments are still not persuasive.
Thus, at least for the reasons discussed above, the Office concludes the current claims fail to comply with section §101.
Claim Rejections - 35 USC § 112
5. The following is a quotation of the first paragraph of 35 U.S.C.112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C.112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
● Claims 9-15, 30-33, 35-39 and 41-44 are rejected under 35 U.S.C.112(a) or 35 U.S.C.112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 recites, “receive at least a second input relating to ethnicity information of the patient . . . receive a plurality of ethnicity-specific injection techniques and/or products based on the second input; simulate an outcome for each of the plurality of ethnicity-specific injection techniques and/or products, the outcome comprising phi ratio calculations using the patient-specific point mask” (emphasis added).
However, the original specification does not have any written description regarding such process of receiving “a plurality of ethnicity-specific injection techniques and/or products” based merely on the “second input” that relates to the “ethnicity information” of the patient; and further simulate “an outcome for each of the plurality of ethnicity-specific injection techniques and/or products . . .”.
6. The following is a quotation of 35 U.S.C.112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C.112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
● Claims 9-15, 30-33, 35-39 and 41-44 are rejected under 35 U.S.C.112(b), or second paragraph (pre-AIA ), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 9 recites, “receive a user input indicative of an injection comprising the at least one of the recommended ethnicity-specific injection techniques and/or products; and output the virtual patient model with a simulated effect of the injection for display on a display device” (emphasis added).
However, it is unclear what is implied regarding “receiving a user input”, which is considered to be an “indicative of an injection”, since no actual injection is being received. In addition, it is unclear how the input, which is considered to be an indicative of “an injection”, represents the “products” implied.
It is worth to note that the information received regarding the “ethnicity-specific injection technique” is not necessarily the same as the information received (if any) regarding “the ethnicity-specific products” (see lines 23-24 of claim 9). Thus, the current claims are ambiguous at least for the reason above.
Prior Art
● Considering claim 9 as a whole (including the respective dependent claims), the prior art does not teach or suggest the current claims (regarding the state of the prior art, see the office-action dated 01/15/2025).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUK A GEBREMICHAEL whose telephone number is (571) 270-3079. The examiner can normally be reached on 7:00AM-3:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID LEWIS can be reached on (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRUK A GEBREMICHAEL/Primary Examiner, Art Unit 3715