DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 03/02/2026 has been entered.
Claim Objections
Claim(s) 19 & 43 is/are objected to because of the following informalities:
Claim 19 – The end of Line 3 is missing a comma or semi-colon.
Claim 43 – The second to last line states, “the a”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim(s) 19-25, 28-41 & 43 is/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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Applicant amended the claims to recite:
attaching a first marker device to a tibia of a patient (Claim 19)
attaching a second marker device to a femur of the patient (Claim 19)
detecting, by a marker detection device, a first marker and a second marker position (Claim 19)
detecting a first marker position associated with a first marker device disposed on a tibia of a patient (Claim 25)
determining a second marker position associated with a second marker device disposed on a femur of the patient (Claim 25)
a first marker device attached to a tibia of a patient (Claim 33)
a second marker device attached to a femur of the patient (Claim 33)
a marker detection device that detects a first marker position associated with the first marker device and a second marker position associated with the second marker device (Claim 33)
the registering the first and second markers and further limitations (Claim 43)
The Examiner reviewed the Disclosure as originally filed and notes:
It should be noted that the process of attaching a marker device to a bone or of registering a bone to a marker device, for example using a pointer, is not part of the present invention, but is performed before the range of motion is determined (Para 0020)
Attaching a marker device to a bone or registering a bone to a marker device is not however part of the present invention (Para 0033)
The above paragraph makes it clear that the steps of attaching and registering the markers is NOT part of the present invention. As a requirement of complying with the written description requirement the invention needs to be described in a way to reasonably convey to one of ordinary skill in the art that the inventors had at the time of filing possession of the claim invention. Para 0020 & 0033 of the Specification as originally filed explicitly states that attaching markers of Claim 19, 25 & 33 and registering markers of Claim 43 is not in the possession of the inventors.
Thus, the Examiner contends that the Disclosure as originally filed does not teach or support, any of the identified claim limitations as listed above.
Claim Rejections - 35 USC § 101
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim(s) 19-25 and 28-43 is/are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). The Claims recite the tibia and the femur and the patient directly. The recitations appear to directly claim the patient and the anatomy itself.
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 19-25 and 28-43 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Each of Claims 19-25 and 28-43 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 2A, Prong 1
Each of Claims 19-25 and 28-43 recites at least one step or instruction for predicting post-operative range of motion, which is grouped as a mental process under the 2019 PEG or a certain method of organizing human activity under the 2019 PEG. Briefly, Claims 19-25 and 28-43 involves an observation, judgement or evaluation as the claim limitation concepts can be performed in the human mind. Accordingly, each of Claims 19-25 and 28-43 recites an abstract idea.
Specifically, Claim 19 recites:
A method for predicting post-operative range of motion (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG), the method implemented with one or more medical navigation computing devices (additional element) and comprising:
attaching a first marker device (additional element) to a tibia of a patient (extra-solution activity or a field-of-use)
attaching a second marker device (additional element) to a femur of the patient (extra-solution activity or a field-of-use);
detecting, by a marker detection device (additional element), a first marker position and a second marker position (extra-solution activity or a field-of-use);
determining, by the one or more medical navigation computing devices (additional element), based on the first marker position and the second marker position (additional element) for each of a plurality of flexion angles of a knee joint of the patient (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG):
a first relative position of a tibia and a femur of the patient in response to the knee joint is under varus stress (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG); and
a second relative position of the tibia and the femur in response to the knee joint being under valgus stress (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
determining, by the one or more medical navigation computing devices (additional element), for each of the plurality of flexion angles, a change in a length of each of the medical ligament and a lateral ligament of the knee joint based on the first and second relative positions (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
determining, by the one or more medical navigation computing devices, (additional element) for each of the plurality of flexion angles, a varus angle and a valgus angle for an implant based on the change in the length of the medical ligament and the lateral ligament; (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG) and
outputting, by the one or more medical navigation computing devices (additional element), a range of motion of the knee joint across the plurality of flexion angles based on the determined varus angle and the determined valgus angle to facilitate implant selection for a subsequent knee arthroplasty to be performed on the patient (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 20/19 recites:
The method of claim 19, further comprising modifying the range of motion based on a received parameter for the implant, wherein the received parameter corresponds to a size or a position of the implant (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 21/19 recites:
The method of claim 19, further comprising generating one or more transformation matrices representing one or more of the first or second relative positions between the tibia and the femur (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 22/19 recites:
The method of claim 19, further comprising defining a tibial cutting plane, wherein change in the medial and lateral ligament lengths are determined in relation to the tibial cutting plane (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 23/22/19 recites:
The method of claim 22, wherein the tibial cutting plane is a virtual tibial plane defined within a generated surface model of the tibia (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 24/22/19 recites:
wherein the tibial cutting plane is defined based on a cut to an upper end of the tibia and the lateral and medial ligament lengths are measured perpendicular to the tibial cutting plane (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 25 recites:
A non-transitory computer readable medium (additional element) having stored thereon instructions for predicting post-operative range of motion comprising executable code that, when executed by one or more processors of a medical navigation computing device, causes the one or more processors (additional element) to:
determining a first marker position associated with a first marker device disposed on a tibia of a patient (extra-solution activity or a field-of-use);
detecting a second marker position associated with a second marker device disposed on a femur of the patient (extra-solution activity or a field-of-use);
determining, by the one or more processors (additional element), based on the first marker position and the second marker position for each of a plurality of flexion angles, a change in a length of each of a medial ligament and a lateral ligament of a knee joint of a patient based on a first relative position of a tibia and a femur in response to the knee joint of a patient being under varus stress and a second relative position the tibia and the femur in response to the knee joint being under valgus stress (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
determine, by the one or more processors (additional element), for each of the plurality of flexion angles, a varus angle and a valgus angle for an implant based on the change in the length of the medial ligament and the lateral ligament (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG); and
output, by the one or more processors (additional element), a range of motion of the knee joint across the plurality of flexion angles generated based on the valgus and varus angles to facilitate implant selection for a subsequent knee arthroplasty (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 28/25 recites:
The non-transitory computer readable medium of claim 25, wherein the executable code, when executed by the one or more processors (additional element), further causes the one or more processors (additional element) to determine the change in the length of each of the medial ligament and the lateral ligament based on a distance between a point on the femur at which the lateral or medial ligament, respectively, connects and a plane defined with respect to the tibia (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 29/25 recites:
The non-transitory computer readable medium of claim 25, wherein the executable code, when executed by the one or more processors (additional element), further causes the one or more processors (additional element) to, in order to determine the first or second relative position:
determine a contact position in which a lateral or medial condyle of the femur contacts the tibia (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG); and
rotate the femur about a point between the lateral or medial condyle and the tibia until an opposing one of the lateral or medial ligaments is stretched (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 30/29/25 recites:
The non-transitory computer readable medium of claim 29, wherein the executable code, when executed by the one or more processors (additional element), further causes the one or more processors (additional element) to rotate the femur when an axis of rotation is parallel to a plane defined with respect to the tibia (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 31/25 recites:
The non-transitory computer readable medium of claim 25, wherein the executable code, when executed by the one or more processors (additional element), further causes the one or more processors (additional element) to determine the valgus and varus angles using a surface model of the femur in which a lateral or medial condyle of the femur is modelled as one or more ellipses (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 32/25 recites:
The non-transitory computer readable medium of claim 25, wherein the executable code, when executed by the one or more processors (additional element), further causes the one or more processors (additional element) to determine the change in the length of each of the medial ligament and the lateral ligament from one or more transformation matrices that represent one or more relative positions between the femur and the tibia (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 33 recites:
A medical navigation computing device, comprising:
a display device (additional element);
a first marker device attached to a tibia of a patient (additional element);
a second marker device attached to a femur of the patient (additional element);
a marker detection device that detects a first marker position associated with the first marker device and a second marker position associated with the second marker device (additional element);
a non-transitory computer-readable data storage medium comprising program instructions stored thereon (additional element); and
one or more processors (additional element) coupled to the non-transitory computer-readable data storage medium (additional element) and configured to execute the stored program instructions to:
determine, based on the first marker position and the second marker position for each of a plurality of flexion angles, a change in a length of each of a medial ligament and a lateral ligament of a knee joint of a patient based on a first relative position of a tibia and a femur in response to the knee joint being under varus stress and a second relative position of the tibia and the femur in response to the knee joint being under valgus stress (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
determine, for each of the plurality of flexion angles, a varus angle and a valgus angle for an implant based on the change in the length of the ligament (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG); and
generate, and output to the display device (additional element), a range of motion of the knee joint across the plurality of flexion angles based on the determined varus angle and the determined valgus angle to facilitate implant selection for a subsequent knee arthroplasty to be performed on the patient (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 34/33 recites:
The medical navigation copmuting device of claim 33, wherein the one or more processors (additional element) are further configured to execute the stored program instructions to determine the valgus and varus angles using a surface model of the femur in which a representation of a lateral or medial condyle is based on a shape of the implant (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 35/33 recites:
The medical navigation computing device of claim 33, wherein the one or more processors (additional element) are further configured to execute the stored program instructions to generate a tibial plane based on a determined location of one or more markers attached to each of the femur and tibia, wherein the change in the length of each of the medial ligament and the lateral ligament is determined in relation to the tibial plane (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 36/35/33 recites:
The medical navigation computing device of claim 35, wherein the one or more processors (additional element) are further configured to execute the stored program instructions to determine the change in the length of each of the medial ligament and the lateral ligament perpendicular to the tibial plane (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 37/33 recites:
The medical navigation computing device of claim 33, wherein the one or more processors (additional element) are further configured to execute the stored program instructions to output to the display device an indication of the range of motion over the plurality of flexion angles along an axis (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 38/33 recites:
The medical navigation computing device of claim 33, wherein the range of motion is further based on a position of the implant relative to the femur or the tibia (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 39/33 recites:
The medical navigation computing device of claim 33, wherein the one or more processors (additional element) are further configured to execute the stored program instructions to output to the display device (additional element) a graphical indication of the range of motion comprising the plurality of flexion angles along a first axis and a plurality of implant angles along a second axis (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 40/39/33 recites:
The medical navigation computing device of claim 39, wherein the implant angles are based on one or more of the varus angle or the valgus angle at a corresponding one of the plurality of flexion angles (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 41/39/33 recites:
The medical navigation computing device of claim 39, wherein the implant angles are based on the varus angle and the valgus angle at a corresponding one of the plurality of flexion angles, the first axis comprises a horizontal axis, the second axis comprises a vertical axis, and the varus angles are presented in the graphical indication above the valgus angles for each of the corresponding ones of the plurality of flexion angles (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 42/19 recites:
The method of claim 19, wherein the detection device comprises a camera (additional element), the method further comprising:
capturing a first image including the first marker position and the second marker position in response to the knee joint being under varus stress (extra-solution activity or a field-of-use);
determining the first relative position of the tibia and femur of the patient based on the first marker position and the second marker position in the first image (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
capturing a second image including the first marker position and the second marker position in response to the knee joint being under valgus stress (extra-solution activity or a field-of-use); and
determining the second relative position of the tibia and femur of the patient based on the first marker position and the second marker position in the second image (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 42/19 recites:
The method of claim 19 comprising:
registering the first marker device to the tibia of the patient (extra-solution activity or a field-of-use);
registering the second marker device to the femur of the patient (extra-solution activity or a field-of-use);
sampling a plurality of the first relative positions and the second relative positions (extra-solution activity or a field-of-use);
representing each relative position of the tibia and femur of the patient by a transformation matrix based on the sampling (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
calculating the a maximum length of a medial ligament of the patient based on the transformation matrix (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Accordingly, as indicated above, each of the above-identified claims recites an abstract idea.
Further, dependent Claims 19-25 and 28-43 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Step 2A, Prong 2
The above-identified abstract idea in each of independent Claims 19, 25 & 33 (and their respective dependent Claims 20-24, 28-32 & 34-41) is not integrated into a practical application under 2019 PEG because the additional elements (identified above in independent Claims 19, 25 & 33), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of:
medical navigation computing devices
marker detection device
femoral or tibial implant
non-transitory computer readable medium
one or more processors
camera
display device
non-transitory computer-readable data storage medium or non-transitory computer readable medium
are generically recited computer elements in independent Claims 19, 25 & 33 (and their respective dependent claims) which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above in independent Claims 19, 25 & 33 (and their respective dependent claims) is not integrated into a practical application under 2019 PEG. Moreover, the above-identified abstract idea is not integrated into a practical application under 2019 PEG because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process and certain method of organizing human activity) using rules (e.g., computer instructions) executed by a computer (e.g., medical navigation computing devices, non-transitory computer readable medium, one or more processors, display device, non-transitory computer-readable data storage medium as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 19, 25 & 33 (and their respective dependent claims) is not integrated into a practical application under the 2019 PEG.
Claims 19, 25 & 33 recite the steps of attaching a first and second marker device to the patient. The identified steps do not impose meaningful limits on the judicial exception, and are extra-solution activities that amounts to necessary data gathering. MPEPE 2106.05(g)(3) describes the example of mere data gathering as performing clinical tests on individuals to obtain input for an equation (In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989)). Similarly performing the attachment of markers on individuals to obtain input for the equations of determining a range of motion of the knee joint across the plurality of flexion angles is mere data gathering. Thus, the steps of attaching first and second marker device to the patient is mere data gathering. Additionally the detecting by a marker detection device and using a camera to capture images follows a similar analysis as the detector is similarly part of the performing clinical tests aspect of data gathering.
Accordingly, independent Claims 19, 25 & 33 (and their respective dependent claims) are each directed to an abstract idea under 2019 PEG.
Step 2B
None of Claims 19-25 and 28-43 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
These claims require the additional elements of:
medical navigation computing devices
marker detection device
implant
camera
non-transitory computer readable medium
one or more processors
display device
non-transitory computer-readable data storage medium
The above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Per Applicant’s specification:
medical navigation computing devices (Para 0012 & 0026-0027)
implant (Para 0004-0005)
camera (Para 0028)
non-transitory computer readable medium (Para 0012 & 0026-0027)
one or more processors (Para 0012 & 0026-0027)
display device (Para 0012 & 0026-0027)
non-transitory computer-readable data storage medium or non-transitory computer readable medium (Para 0012 & 0026-0027)
The Specification of the Applicant discloses the above elements in a manner that either is 1) without structure or detailed drawings with regards to the computer components or 2) identified as a prior art system. Accordingly, in light of Applicant’s specification, the claimed term medical navigation computing devices, non-transitory computer readable medium, one or more processors, display device, non-transitory computer-readable data storage medium is reasonably construed as a generic computing device. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for the medical navigation computing devices, non-transitory computer readable medium, one or more processors, display device, non-transitory computer-readable data storage medium. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a) (see Berkheimer memo from April 19, 2018, (III)(A)(1) on page 3). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications).
The recitation of the above-identified additional limitations in Claims 19-25 and 28-43 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the method and device of Claims 19-25 and 28-43 are directed to applying an abstract idea (e.g., mental process or certain method of organizing human activity) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 19-25 and 28-43 provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 19, 25 & 33 (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. As such, the above-identified additional elements, when viewed as whole, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.
Thus, Claims 19-25 and 28-43 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, none of the Claims 19-25 and 28-43 amounts to significantly more than the abstract idea itself.
Accordingly, Claims 19-25 and 28-43 are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas implemented on a generic computer in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG.
Allowable Subject Matter
Claim(s) 19-25 and 28-43 lack a prior art rejection, but would be allowable if the claims were amended to address the pending 35 U.S.C. § 101 rejection and 35 USC § 112 rejection.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive. The Claim Set, from the Appeal Brief filed 09/25/2025, were determined to be properly rejected under 35 USC § 101 in Patent Board Decision, mailed 12/29/2025. The question regarding the application of the 35 USC § 101 rejection to the new claim limitations taken in part or in whole is under examination. The rejection above addresses the 35 USC § 101 analysis in view of the new claim limitations in part and as taken as a whole. The arguments are unconvincing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Leitner et al. (U.S. Patent Application 2006/0195048 A1) – Leitner teaches a method for determining the angle between the femur and the tibia in the implantation of a unicondylar knee prosthesis, in order to determine in advance the influence of the implantation position of the implant on the angle between the femur and the tibia, it is proposed that the position of the unaltered joint surface on the tibia and/or the femur be determined, that the position of a bearing surface for a unicondylar implant on the tibia and/or the femur be determined, and that the angle between the femur and the tibia be calculated using these position data and the geometrical data relating to the unicondylar implant.
Arata et al. (U.S. Patent Application 2008/0262812 A1) – Arata teaches surgical computer systems, including computer program products, and methods for implant planning using captured joint motion information. Data is captured representative of a range of motion of a joint associated with a particular individual, where the joint includes a first bone and a second bone. The first bone of the joint is represented and a first implant model is associated with the representation of the first bone. Based on the captured data, a relationship is determined between the first implant model and a representation of the second bone through at least a portion of the range of motion of the joint. Information is displayed representative of the determined relationship.
Van Vorhis et al. (U.S. Patent Application 2009/0209884 A1) – Van Vorhis teaches surgical computer systems, including computer program products, and methods for implant planning using corrected captured joint motion information. Data representative of a corrected limb pose at a plurality of poses within a range of motion of a joint associated with a particular individual is captured, the joint comprising a first bone and a second bone, while the first bone, the second bone, or both are subject to a corrective force aligning the first and second bones in a desired alignment. The first bone of the joint is represented. The second bone of the joint is represented. A first implant model is associated with the representation of the first bone. A second implant model is associated with the representation of the second bone. Based on the captured data, a relationship is determined between the first implant model and the second implant model at one or more poses of the plurality of poses within the range of motion of the joint. Information representative of the determined relationship is displayed.
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/Helene Bor/Examiner, Art Unit 3797
/CHRISTOPHER KOHARSKI/Supervisory Patent Examiner, Art Unit 3797