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 .
Procedural Summary
This is responsive to the claim amendments filed 4/16/2025.
Claims 1 & 4-23 are pending.
Applicant’s Remarks are addressed, infra.
Response to Arguments & Amendment
Applicant’s arguments filed 4/16/2025 have been fully considered and are persuasive to overcome the prior art rejection. However, Applicant’s arguments drawn to 35 USC §101 are not persuasive. Applicant argues that the claims recite more than conceptual “training” because the claims as amended recite specific steps. (Remarks, Pages 13-14.) Applicant argues that the claims now address technological challenges in reproducing complex anatomical situations. (Remarks, Page 14.) This specificity, Applicant contends, is a meaningful application as it results in in improved speed, accuracy, or realism in surgical applications. (Remarks, Page 14.)
Examiner respectfully disagrees. As pointed out above, the claimed electronic elements represent only generic and conventional devices in the art. That is, the claimed invention does not recite a technical improvement to the functioning of a computer or hardware device. Nor could it --- the Specifications make clear that generic computers are used to implement the invention.1 The efficiencies gained (speed, accuracy, realism), are the natural result of using a computer as a tool to implement the abstract idea. Indeed, virtually any abstract idea implemented with a computing device can be made more efficient. However, specificity and efficiency still fail to make the abstract idea any less abstract.
The amendments, while overcoming the prior art, only represent the manipulation of data to be displayed on a screen and not the type of technical improvement to the functioning of the computer, required to overcome the rejection.
For these reasons, the 35 USC §101 rejection is respectfully maintained.
Claim Rejections - 35 USC § 101
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 1 & 4-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
The claims are drawn to apparatus, process and CRM categories.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative claim 17, as amended, is the most comprehensive and analyzed below, with italicized limitations indicating recitations of an abstract idea:
“A surgery training system comprising: a medical information management server; and a surgery training device configured to communicate with the medical information management server via a network, wherein the medical information management server includes server circuitry configured to record at least a plurality of sets of operative procedures in a corresponding manner to a plurality of sets of simulation data containing data related at least to body tissues, and in a case where one of the plurality of sets of operative procedures 1s selected at a client side, send simulation data corresponding to the selected operative procedure to the client side, the surgery training device includes a display configured to display a simulation video based on the simulation data sent from the medical information management server, a medical apparatus configured to enable treatment with respect to a physical model of a subject, and detection circuitry configured to detect operation details of operation performed by an operator with respect to the medical apparatus on the physical model, and output, to the display, medical apparatus images, which are related to the medical apparatus as used on the physical model, on the simulation video, and based on the operation details detected, control display form of the medical apparatus images and the simulation video, wherein the simulation video is based on the set of simulation data and operations performed on the physical model on the client side, wherein the display form on the display reflects movement of the medical apparatus relative to the physical model on the client side.”
The italicized limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG2, namely, “Certain Methods Of Organizing Human Activity”; managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The claim(s) recite(s) a method for conducting medical training. This is an abstract idea because training is a method of organizing human activity.
As can readily be seen, claim 17 merely uses conventional components to manipulate data in a conventional manner. Claim 1, the components of which are included in claim 17, has a number of dependent claims that either specify the sources of the data to be manipulated, or that the users are charged for accessing the data. These are parts of the abstract idea. Claim 12 (also included in claim 17) has dependent claims that relate to the procedure for running the simulation. These are also part of the abstract idea because they are merely data manipulation steps. The other independent claims are different embodiments of these claims.
Currently, implementation of an abstract idea on generic computers is not patent-eligible without “significantly more.” Neither the abstract idea itself nor parts of the abstract idea can supply “significantly more” than the abstract idea. As written, current claims are drawn to an abstract idea with essentially the words “implement it” on a generic computer appended thereto. As such, the claims are not patent-eligible.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations drawn to networks, servers, memories, and displays; all generic computing devices.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional computer implementation and instructions for implementing the abstract idea on generic computing devices.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract process. However, these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, the prior art relied on in the prior obviousness rejection, shows the conventionality of computing devices and more broadly GUIs in the art of training for operative procedures.3 These elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Additionally, it is noted that Applicant’s Specifications acknowledge that generic devices are used to implement the claimed invention.4
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they merely recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit precedent controls5:
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Lewis whose telephone number is 571-272-7673. The examiner can normally be reached on M-F, generally 10am-3:30 pm.
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/DAVID L LEWIS/Supervisory Patent Examiner, Art Unit 3715
1 ¶¶ 25, 35, 47, 49, 28, 139
2 See MPEP 2106
3 U.S. Patent Pub. No.: 2019/0286652, e.g., Fig. 3.
4 ¶¶ 25, 35, 47, 49, 28, 139
5 : Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)