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 .
Status of Claims
Claims 1-4, 7-11, and 14-17, as recited in an RCE filed on May 21, 2025, were subject to a non-final office action filed on June 9, 2025 (the “June 9, 2025 Non-Final Office Action”). On August 29, 2025, Applicant submitted further amendments to claims 1-4, 7-11, and 14-17 and added new claims 20 and 21 (the “August 29, 2025 Amendment”). As such, claims 1-4, 7-11, 14-17, 20, and 21, as recited in the August 29, 2025 Amendment, are currently pending and subject to the final office action below.
Response to Applicant’s Remarks
Response to Applicant’s Remarks Concerning Rejections under 35 U.S.C. § 101
Applicant’s arguments, see Applicant’s Remarks, pp. 9-12, Rejections Under 35 U.S.C. § 101 Section, filed August 29, 2025, with respect to rejections of claim 1-4, 7-11, and 14-17 under 35 U.S.C. § 101 have been fully considered, but they are not persuasive. Further, in light of the 2019 Revised Patent Subject Matter Eligibility Guidance (available at MPEP § 2106) (the “2019 Revised PEG”), the § 101 rejections of claims 1-4, 7-11, and 14-17 are maintained and the rejections of new claims 20 and 21 under § 101 are added in this office action.
First, Applicant argues that amended claims provide an improvement in technology related to automatically controlling a surgical device during a surgical procedure, because “claim 1 requires automatically controlling a surgical device during a surgical procedure at an outlier medical facility location that is associated with inferior surgical outcomes”. See Applicant’s Remarks, at p. 9. Examiner respectfully disagrees with this assertion. A similar argument was also addressed in previous office actions. See the pp. 4-6 of the Final Office Action filed on March 4, 2025 and the June 9, 2025 Non-Final Office Action, at pp. 4-6. When evaluating whether claims recite an improvement to the functioning of a computer or a technical field, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. MPEP § 2106.05(a). The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Id. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. Id. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. Id.
For example, in the McRO, Inc. v. Bandai Namco Games Am. Inc. case, the Federal Circuit relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea. Id. Conversely, the Federal Circuit has held claims which merely record, transmit, and archive data by use of conventional or generic technology in a nascent but well-known environment, without any assertion that the invention reflects an inventive solution to any problem may not be sufficient to show an improvement in computer-functionality. See MPEP § 2106.05(a) (citing the TLI Communications LLC v. AV Auto case). Further, gathering and analyzing information using conventional techniques, was also determined to be insufficient to show an improvement in computer-functionality. See MPEP § 2106.05(a) (also citing the TLI Communications case).
In the present case, Applicant’s claims and specification do not have a detailed discussion of prior art systems and how the invention improves the way medical facility resource management systems and methods improve upon medical usage practices. Similar to the TLI Communications case, Applicant’s claims merely implement existing techniques for collecting, analyzing, and transmitting medical usage data, namely by receiving medical usage; generating a regional efficiency model based on the medical usage data; identifying an outlier medical facility location based on the regional efficiency model, where the outlier medical facility location is associated with inferior surgical outcomes when compared to other medical facility locations; determining modified device parameters for a surgical device at the outlier medical facility location; and transmitting an updated control program to a surgical hub at the outlier medical facility location. It is important to keep in mind that an improvement to an abstract idea itself is not an improvement in technology. See MPEP § 2106.05(a)(II). The Examiner notes that the Applicant did not claim a new algorithm or process for analyzing the medical usage data and determining modified device parameters. Rather, Applicant’s claims merely apply the existing processes of receiving data; generating a model based on the received data; identifying an outlier (the outlier medical facility); determining modified device parameters; and transmitting an updated control program to the outlier medical facility location using a generic computer (i.e., the central server and processor). In fact, the Applicant has not described the generated regional efficiency model with sufficient detail (i.e., what is the regional efficiency model). Therefore, the identifying step is deemed to be part of the abstract mental process, because a person could reasonably compare data and mentally/manually identify data that the user deems to be “inferior”. Further, transmitting an updated control program to cause the surgical devices at the outlier medical facility to be controlled according to modified device parameters is merely the equivalent of receiving and transmitting data over a network. As such, the claims are insufficient to show an improvement in medical resource management systems and methods. For at least these reasons this argument is not persuasive.
Next, Applicant generally argues that the additional elements of claim 1 integrate any alleged abstract idea into a practical application in a manner that is analogous to the additional elements of claim 2 in Example 25 of the USPTO’s subject matter eligibility guidance examples. See Applicant’s Remarks, at p. 10. Examiner respectfully disagrees with this assertion. Claim 2 of Example 25 was deemed to be eligible, because the totality of the steps provided software that improved the field of precision rubber molding, through the controlling the operation of the mold by initiating a signal to control the press to open when a comparison indicated the molded product was cured (determining equivalence specifically using the Arrhenius equation and elapsed time). Further, claim 2 of Example 25 added meaningful limitations on the use of the Arrhenius equation by specifying the types of variables used (temperature and time), how they are selected (their relationship to the time), how the process uses the variables in rubber molding, and how the result is employed to improve the operation of the press. Conversely, Applicant’s claims do not describe the generated model, the medical usage data, the outcome data, or the modified device parameters with any type of detail. The claim language is claimed at a high level of generality and merely describes the idea of a solution or outcome, namely determining modified device parameters for surgical devices at an outlier medical facility and transmitting an updated control program with the modifier device parameters to a surgical hub at the outlier medical facility. For example, the claims and specification do not describe the regional efficiency model with any specific details (i.e., what is the model or what is the relationship between the outcome data and the operational settings used at the medical facility locations?). Therefore, Applicant’s claims are not deemed to be analogous to the additional elements in claim 2 of Example 25, and this argument is not persuasive for these reasons.
As such, the rejections of claims 1-4, 7-11, and 14-17 under 35 U.S.C. § 101 are maintained and the rejections of new claims 20 and 21 are similarly added in this office action. Please see the amended rejections under the Claim Rejections – 35 U.S.C. § 101 Section below, for further clarification and complete analysis.
Claim Objections
Claim 7 is objected to because of the following informalities:
- Claim 7 recites the word "the" twice, back-to-back in the last three lines of the claim (i.e., the limitation directed to "wherein the the surgical hub at the outlier medical facility location is configured to display the notification via an output display"). This appears to be a minor typographical error following the amendments. Examiner suggests that Applicant delete one of the recitations of "the" in this limitation (e.g., "wherein . Appropriate correction is required.
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, 7-11, 14-17, 20, and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. See MPEP § 2106 (hereinafter referred to as the “2019 Revised PEG”).
Step 1 of the Alice/Mayo Test
Following Step 1 of the Alice/Mayo Test, claims 1-4, 7, 20, and 21 are directed to a medical facility resource management system, which is within one of the four statutory categories (i.e., a machine or apparatus). See MPEP § 2106.03. Claims 8-11 are directed to a method for medical facility resource management in a cloud network, which is also within one of the four statutory categories (i.e., a process). See id. Claims 14-17 are directed to a non-transitory computer readable medium, which is also within one of the four statutory categories (i.e., an article of manufacture). See id.
Step 2A of the 2019 Revised PEG - Prong One
Following Prong One of Step 2A of the 2019 PEG, the claim limitations are to be analyzed to determine whether they “recite” a judicial exception or in other words whether a judicial exception is “set forth” or “described” in the claims. See MPEP §2106.04. An “abstract idea” judicial exception is subject matter that falls within at least one of the following groupings: (1) Mathematical Concepts; (2) Certain Methods of Organizing Human Activity, and (3) Mental Processes. See MPEP § 2106.04(a).
Claims 1-4, 7-11, 14-17, 20, and 21 are rejected under 35 U.S.C. § 101, because the claimed invention is directed to an abstract idea without significantly more. Representative independent claims 1, 8, and 14 include limitations that recite an abstract idea. Note that independent claim 1 is a system claim, while claims 8 covers the matching method claim and claim 14 covers the matching non-transitory computer readable medium claim. Specifically, independent claim 1 recites (and claims 8 and 14 substantially recite) the following limitations:
A medical facility resource management system comprising:
a central server communicably coupled to a plurality of surgical hubs remotely located at a plurality of medical facility locations, wherein the central server is configured to:
receive medical usage data from the surgical hubs, wherein the medical usage data comprises:
operational settings used to control a plurality of surgical devices during a plurality of surgical procedures;
outcome data corresponding to surgical outcomes associated with the surgical procedures; and
metadata corresponding to the medical facility locations associated with the surgical procedures;
generate a regional efficiency model based on the medical usage data, wherein the regional efficiency model correlates the outcome data with the operational settings used at each of the medical facility locations;
identify an outlier medical facility location of the medical facility locations based on the regional efficiency model, wherein the outlier medical facility location is associated with inferior surgical outcomes compared to other of the medical facility locations;
determine modified device parameters for a surgical device at the outlier medical facility location based on the regional efficiency model;
transmit an updated control program to a surgical hub at the outlier medical facility location, wherein transmitting the updated control program automatically causes the surgical device at the outlier medical facility location to be controlled according the modified device parameters during a surgical procedure; and
code a plurality of serial numbers of to the plurality of surgical devices, wherein coding the serial numbers enables the updated control program to be transmitted to the surgical device at the outlier medical facility location.
However, the Examiner submits that the foregoing underlined limitations constitute a process that, under its broadest reasonable interpretation, falls within the “Mental Processes” grouping of abstract ideas. See 2019 Revised PEG. The Mental Processes category covers concepts which are capable of being performed in the human mind or encompasses a human performing the step(s) mentally with the aid of a pen and paper (including an observation, evaluation, judgment, or opinion) (i.e., a method for medical resource management, comprising: generating a regional efficiency model for a medical facility based on the medical usage data; identifying an outlier medical facility location based on the regional efficiency model, where the outlier medical facility location is associated with inferior surgical outcomes compared to other of the medical facility locations; determining modified device parameters for a surgical device at the outlier medical facility location; and coding serial numbers for the surgical devices). That is, other than reciting some computer components and functions (the foregoing limitations in claims 1, 8, and 14 which are not underlined), the context of claims 1, 8, and 14 encompass concepts that are capable of being performed in the human mind or encompasses a human performing the step(s) mentally with the aid of a pen and paper (including an observation, evaluation, judgment, and/or opinion) (i.e., a method for medical resource management, comprising: generating a regional efficiency model for a medical facility based on the medical usage data; identifying an outlier medical facility location based on the regional efficiency model, where the outlier medical facility location is associated with inferior surgical outcomes compared to other of the medical facility locations; determining modified device parameters for a surgical device at the outlier medical facility location; and coding serial numbers for the surgical devices).
The aforementioned claim limitations described in claims 1, 8, and 14 are analogous to claim limitations directed toward concepts which are capable of being performed in the human mind or encompasses a human performing the step(s) mentally with the aid of a pen and paper, because they merely recite limitations which encompasses a person mentally and/or manually following instructions in order to: (1) generate a regional efficiency model based on the medical usage data (i.e., a type of observation, evaluation, judgment, and/or opinion where a person could mentally review the various medical usage data and develop a list of efficient/best practices regarding the use of the surgical devices/equipment); (2) identify an outlier medical facility location based on the regional efficiency model, where the outlier medical facility location is associated with inferior surgical outcomes compared to other of the medical facility locations (i.e., a type of observation, evaluation, judgment, and/or opinion where a person could mentally and/or manually compare efficiency metrics from one medical location with another medical location and identify which location is performing at an inferior rate); and (3) determine modified device parameters for a surgical device at the outlier medical facility location (i.e., another type of observation, evaluation, judgment, and/or opinion where a person could mentally and/or manually come up with modified device parameters for a surgical device at the outlier medical facility based on the comparison); and (4) coding a plurality of serial numbers (another type of observation, evaluation, judgment, and/or opinion where a person could mentally and/or manually create serial numbers/identifiers for the surgical devices). Therefore, the aforementioned underlined claim limitations may reasonably be interpreted as mental/manual observations, evaluations, judgments, and/or opinions made by a person. If a claim limitation, under its broadest reasonable interpretation, covers concepts which are capable of being performed in the human mind or encompasses a human performing the step(s) mentally with the aid of a pen and paper, then it falls within the “Mental Processes” grouping of abstract ideas. See 2019 Revised PEG. Accordingly, claims 1, 8, and 14 recite an abstract idea that falls within the Mental Processes category.
Furthermore, Examiner notes that dependent claims 2-4, 7, 9-11, 15, 17, 20, and 21 further define the at least one abstract idea (and thus fail to make the abstract idea any less abstract) as set forth below. Examiner notes that: (1) dependent claim 3, 7, 10, 16, 20, and 21 include limitations that are deemed to be additional elements, and require further analysis under Prong Two of Step 2A; and (2) dependent claims 2, 4, 9, 11, 15, and 17 do not provide any limitations that are deemed to be additional elements which require further analysis under Prong Two of Step 2A. For example, claims 2, 4, 9, 11, 15, and 17 merely recite different types of data that are used to make the determinations and recommendations for efficiency metrics (i.e., these steps are deemed to be reasonably performed mentally or manually using a pen and paper, because they modify the data that is used for the observations, evaluations, judgments, and/or opinions encompassing the abstract idea).
Step 2A of the 2019 Revised PEG - Prong Two
Regarding Prong Two of Step 2A of the 2019 Revised PEG, it must be determined whether the claim as a whole integrates the abstract idea into a practical application. As noted in the 2019 Revised PEG, it must be determined whether any additional elements in the claims are indicative of integrating the abstract idea into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.” See MPEP §§ 2106.05(f)-(h).
Following Prong Two of Step 2A of the 2019 Revised PEG, this judicial exception is not integrated into a practical application because they do not impose any meaningful limits on practicing the abstract idea. In the present case, for representative independent claim 1 (similar to claims 8 and 14), the additional limitations beyond the above-noted at least one abstract idea are as follows (where the bolded portions are the “additional limitations” while the underlined portions continue to represent the at least one “abstract idea”):
A medical facility resource management system (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)) comprising:
a central server communicably coupled to a plurality of surgical hubs remotely located at a plurality of medical facility locations (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)), and wherein the central server is configured to:
receive medical usage data from the surgical hubs, wherein the medical usage data comprises: operational settings used to control a plurality of surgical devices during a plurality of surgical procedures; outcome data corresponding to surgical outcomes associated with the surgical procedures; and metadata corresponding to the medical facility locations associated with the surgical procedures (adding insignificant extra-solution activity as noted below, see MPEP § 2106.05(g); the Examiner further submits that such steps are not unconventional as they merely consist of receiving data over a network, as evidenced by the Intellectual Ventures v. Symantec case, as noted below in the Step 2B Analysis Section, see MPEP § 2106.05(d));
generate a regional efficiency model based on the medical usage data, wherein the regional efficiency model correlates the outcome data with the operational settings used at each of the medical facility locations;
identify an outlier medical facility location of the medical facility locations based on the regional efficiency model, wherein the outlier medical facility location is associated with inferior surgical outcomes compared to other of the medical facility locations;
determine modified device parameters for a surgical device at the outlier medical facility location based on the regional efficiency model;
transmit an updated control program to a surgical hub at the outlier medical facility location (adding insignificant extra-solution activity as noted below, see MPEP § 2106.05(g); the Examiner further submits that such steps are not unconventional as they merely consist of receiving data over a network, as evidenced by the Intellectual Ventures v. Symantec case, as noted below in the Step 2B Analysis Section, see MPEP § 2106.05(d)), wherein transmitting the updated control program automatically causes the surgical device at the outlier medical facility location to be controlled according the modified device parameters during a surgical procedure (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)); and
code a plurality of serial numbers of to the plurality of surgical devices, wherein coding the serial numbers enables the updated control program to be transmitted to the surgical device at the outlier medical facility location (adding insignificant extra-solution activity as noted below, see MPEP § 2106.05(g); the Examiner further submits that such steps are not unconventional as they merely consist of receiving data over a network, as evidenced by the Intellectual Ventures v. Symantec case, as noted below in the Step 2B Analysis Section, see MPEP § 2106.05(d)); and
a cloud network (as described in claim 8) (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)); a non-transitory computer readable medium comprising instructions stored thereon (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)), when executed by one or more processors (as described in claim 14) (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)). However, the recitation of these generic computer components and functions in claims 1, 8, and 14 are recited at a high-level of generality (i.e., using generic computer devices to perform the abstract idea of: generating a regional efficiency model for a medical facility based on the medical usage data; identifying an outlier medical facility location based on the regional efficiency model, where the outlier medical facility location is associated with inferior surgical outcomes compared to other of the medical facility locations; determining modified device parameters for a surgical device at the outlier medical facility location; and coding serial numbers for the surgical devices), such that it amounts to no more than: (1) adding the words “apply it” (or is the equivalent of) with the judicial exception; mere instructions to implement an abstract idea on a computer; or merely uses a computer as a tool to perform an abstract idea; and (2) adding insignificant extra-solution activity to the judicial exception. See MPEP §§ 2106.05(f), (g). For the following reasons, the Examiner submits that the above identified additional limitations do not integrate the above-noted at least one abstract idea into a practical application.
- The following are examples of court decisions that demonstrate merely applying instructions by reciting the computer structure as a tool to implement the claimed limitations (e.g., see MPEP § 2106.05(f)):
- A commonplace business method or mathematical algorithm being applied on a general purpose computer, e.g., see Alice Corp. Pty. Ltd. v. CLS Bank Int’l – similarly, the current invention implements the commonplace medical business method of determining recommendations for medical facilities applied on a general purpose computer (i.e., the Examiner submits that the additional elements directed to the system comprising the central server, one or more surgical hubs, and surgical device; cloud network; non-transitory computer readable medium; and one or more processors, are generic computer devices).; and
- Requiring the use of software to tailor information and provide it to the user on a generic computer, e.g., see Intellectual Ventures I LLC v. Capital One Bank (USA) – similarly, the current inventions requires the use of instructions stored on the non-transitory computer readable medium to perform the aforementioned identified abstract idea.
- The following are examples of an insignificant extra-solution activity (e.g., see MPEP § 2106.05(g)):
- Examples of Mere Data Gathering/Mere Data Outputting:
- Obtaining information about transactions using the Internet to verify credit card transactions, e.g., see CyberSource v. Retail Decisions, Inc. – similarly, the steps directed to “receiving the medical usage data from the surgical hubs”; and “enabling the updated control program to be transmitted to the surgical device at the outlier medical facility location”, described in claims 1, 8, and 14, are the equivalent of obtaining and transmitting information related to the medical usage data and a device setting.
Thus, the additional elements in independent claims 1, 8, and 14 are not indicative of integrating the judicial exception into a practical application. Similarly, dependent claims 2, 4, 9, 11, 15, and 17 do not recite any additional elements outside of those identified as being directed to the abstract idea described above. Examiner notes that dependent claims 3, 7, 10, 16, 20, and 21 recite the following additional elements in bold font below (with limitations deemed to be part of the above identified abstract idea identified in underlined font):
wherein the regional efficiency model is normalized according to one or more medical facility parameters of the metadata (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)), and wherein the one or more medical facility parameters comprises at least one of: geographic similarity, number of patients in a predetermined period of time, type of patients, type of procedures performed at the corresponding medical facility location, and type of medical equipment at the corresponding medical facility location (as described in claims 3, 10, and 16);
further comprising the surgical hub at the outlier medical facility location (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)), wherein the central server is configured to transmit a notification to the surgical hub at the outlier medical facility location based on transmitting the control program update (adding insignificant extra-solution activity as noted below, see MPEP § 2106.05(g); the Examiner further submits that such steps are not unconventional as they merely consist of receiving data over a network, as evidenced by the Intellectual Ventures v. Symantec case, as noted below in the Step 2B Analysis Section, see MPEP § 2106.05(d)), and wherein the the surgical hub at the outlier medical facility location is configured to display the notification (adding insignificant extra-solution activity as noted below, see MPEP § 2106.05(g); the Examiner further submits that such steps are not unconventional as they merely consist of receiving data over a network, as evidenced by the Intellectual Ventures v. Symantec case, as noted below in the Step 2B Analysis Section, see MPEP § 2106.05(d)) via an output display (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)) (as described in claim 7);
wherein the surgical device at the outlier medical facility location comprises an end effector actuatable to alter patient tissue (the Examiner submits that this additional element amounts to generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP § 2106.05(h)), and wherein the modified device parameters comprise an end effector actuation parameter for controlling an actuation of the end effector (as described in claim 20); and
wherein the surgical device comprises a surgical stapler (the Examiner submits that this additional element amounts to generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP § 2106.05(h)), and wherein the end effector actuation parameter for controlling the actuation of the end effector comprises a tissue clamping parameter (as described in claim 21).
As such, the additional elements in dependent claims 3, 7, 10, 16, 20, and 21 are not indicative of integrating the judicial exception into a practical application. Looking at the additional limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. For instance, unlike the claims that have been held as a whole to be directed to an improvement or otherwise directed to something more than the abstract idea, claims 1-4, 7-11, 14-17, 20, and 21: (1) are not directed to improvements to the functioning of a computer, or to any other technology or technical field similar to the Enfish, LLC v. Microsoft Corp. case (see MPEP § 2106.05(a)); (2) do not apply or use a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see MPEP § 2106.04(d)(2)); (3) do not apply the judicial exception with, or by use of, a particular machine (see MPEP § 2106.05(b)); (4) do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP § 2106.05(c)); nor do they (5) apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as whole is more than a drafting effort designed to monopolize the exception (see MPEP § 2106.05(e) and MPEP § 2106.04(d)(2)). For these reasons, claims 1-4, 7-11, 14-17, 20, and 21 do not recite additional elements that integrate the judicial exception into a practical application.
Step 2B of the 2019 Revised PEG
Regarding Step 2B of the 2019 Revised PEG, claims 1-4, 7-11, 14-17, 20, and 21 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, with respect to integration of abstract idea into a practical application, the additional elements of claims 1-4, 7-11, 14-17, 20, and 21 amount to no more than: (1) adding the words “apply it” (or is the equivalent of) with the judicial exception; mere instructions to implement an abstract idea on a computer; or merely uses a computer as a tool to perform an abstract idea; and (2) adding insignificant extra-solution activity to the judicial exception. See MPEP §§ 2106.05(f), (g). Further the additional elements, other than the abstract idea per se, when considered both individually and as an ordered combination, amount to no more than limitations consistent with what the courts recognize, or those having ordinary skill in the art would recognize, to be well-understood, routine, and conventional computer components. See MPEP § 2106.05 (d).
Specifically, the Examiner submits that the additional elements of claims 1-4, 7-11, 14-17, 20, and 21, as recited, the medical facility resource management system, comprising the central server, one or more surgical hubs, and surgical device; cloud network; non-transitory computer readable medium; one or more processors; an output display; and the steps directed to: “receiving medical usage data from the surgical hubs, wherein the medical usage data comprises: operational settings used to control a plurality of surgical devices during a plurality of surgical procedures; outcome data corresponding to surgical outcomes associated with the surgical procedures; and metadata corresponding to the medical facility locations associated with the surgical procedures”; “transmitting an updated control program to a surgical hub at the outlier medical facility location, wherein transmitting the updated control program automatically causes the surgical device at the outlier medical facility location to be controlled according the modified device parameters during a surgical procedure”; “wherein coding the serial numbers enables the updated control program to be transmitted to the surgical device at the outlier medical facility location”; “wherein the regional efficiency model is normalized according to one or more medical facility parameters of the metadata”; “further comprising the surgical hub at the outlier medical facility location”; “wherein the central server is configured to transmit a notification to the surgical hub at the outlier medical facility location based on transmitting the control program update”; “wherein the the surgical hub at the outlier medical facility location is configured to display the notification via an output display”; “wherein the surgical device at the outlier medical facility location comprises an end effector actuatable to alter patient tissue”; and “wherein the surgical device comprises a surgical stapler”, are well-understood, routine, and conventional functions. See MPEP § 2106.05(d)(II).
- In regard to the medical facility resource management system, comprising the central server, one or more surgical hubs, and surgical device; cloud network; non-transitory computer readable medium; one or more processors; an output display; and the step directed to: “wherein the regional efficiency model is normalized according to one or more medical facility parameters of the metadata”; further comprising the surgical hub at the outlier medical facility location”; “wherein the surgical device at the outlier medical facility location comprises an end effector actuatable to alter patient tissue”; and “wherein the surgical device comprises a surgical stapler”, the Examiner submits that these amount to well-understood, routine, and conventional computer devices and functions for the following reasons.
- Applicant’s generally describes these devices as being embodied by well-understood, routine, and conventional computer devices. For example, Applicant discloses that the computer system that implements its claimed invention may be embodied by “electrical circuitry forming a general purpose computing device configured by a computer program (e.g., a general purpose computer configured by a computer program which at least partially carries out processes and/or devices described herein)”. See Applicant’s specification as filed on March 31, 2021, paragraph [0362]. These devices are generic computer devices which are well-understood, routine, and conventional computer devices in the medical industry. Therefore, Applicant’s disclosure shows that the medical facility resource management system, comprising the central server, one or more surgical hubs, and surgical device; cloud network; non-transitory computer readable medium; one or more processors; an output display, and the step directed to “wherein the efficiency model is normalized according to the one or more medical facility parameters of the metadata”, may be embodied by generic computer devices and functions which are well-understood, routine, and conventional in the medical industry.
- The Examiner submits that these limitations amount to merely using a computer or other machinery as tools for performing their typical functionality in conjunction with performing the above-noted at least one abstract idea (see MPEP § 2106.05(f) and analysis of these limitations under Step 2A, Prong Two above).
- The Examiner submits that these limitations generally link the use of the judicial exception to a particular technological environment or field of use – for example, the limitations directed to: blockchain network; and the steps directed to: “wherein the surgical device at the outlier medical facility location comprises an end effector actuatable to alter patient tissue”; and “wherein the surgical device comprises a surgical stapler”, amount to limiting the abstract idea to the fields of particular surgical devices (see MPEP § 2106.05(h) and analysis of these limitations under Step 2A, Prong Two above).
Therefore, these limitations are also deemed to be well-understood, routine, and conventional under Step 2B for similar reasons since they are claimed in a generic manner.
- Regarding the steps and features directed to: “receiving medical usage data from the surgical hubs, wherein the medical usage data comprises: operational settings used to control a plurality of surgical devices during a plurality of surgical procedures; outcome data corresponding to surgical outcomes associated with the surgical procedures; and metadata corresponding to the medical facility locations associated with the surgical procedures”; “transmitting an updated control program to a surgical hub at the outlier medical facility location, wherein transmitting the updated control program automatically causes the surgical device at the outlier medical facility location to be controlled according the modified device parameters during a surgical procedure”; “wherein coding the serial numbers enables the updated control program to be transmitted to the surgical device at the outlier medical facility location”; “wherein the central server is configured to transmit a notification to the surgical hub at the outlier medical facility location based on transmitting the control program update”; and “wherein the the surgical hub at the outlier medical facility location is configured to display the notification via an output display” - The following represents an example that courts have identified to be well-understood, routine, and conventional activities (e.g., see MPEP § 2106.05(d)):
- Receiving or transmitting data over a network, e.g., see Intellectual Ventures v. Symantec – the aforementioned limitations directed to: “receiving medical usage data from the surgical hubs, wherein the medical usage data comprises: operational settings used to control a plurality of surgical devices during a plurality of surgical procedures; outcome data corresponding to surgical outcomes associated with the surgical procedures; and metadata corresponding to the medical facility locations associated with the surgical procedures”; “transmitting an updated control program to a surgical hub at the outlier medical facility location, wherein transmitting the updated control program automatically causes the surgical device at the outlier medical facility location to be controlled according the modified device parameters during a surgical procedure”; “wherein coding the serial numbers enables the updated control program to be transmitted to the surgical device at the outlier medical facility location”; “wherein the central server is configured to transmit a notification to the surgical hub at the outlier medical facility location based on transmitting the control program update”; and “wherein the the surgical hub at the outlier medical facility location is configured to display the notification via an output display”, are similarly deemed to be well-understood, routine, and conventional activity in the medical field, because they also represent mere collection and transmission of data over a network (i.e., “receiving the medical usage data”; “transmitting an updated control program to a surgical hub at the outlier medical facility location”; “enabling the updated control program to be transmitted to the surgical device at the outlier medical facility location”; transmitting a notification to the surgical hub at the outlier medical facility location; and displaying the notification via an output display, are the all deemed to be the equivalents of transmitting information over a network).
Therefore, the additional described in claims 1, 3, 7, 8, 10, 14, 16, 20, and 21 are deemed to be additional elements which do not amount to significantly more than the abstract idea identified above.
Thus, taken alone, the additional elements of claims 1, 3, 7, 8, 10, 14, 16, 20, and 21 do not amount to significantly more than the above-identified judicial exception (the abstract idea). Furthermore, 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 functionality of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation. Therefore, whether taken individually or as an ordered combination, claims 1, 3, 7, 8, 10, 14, 16, 20, and 21 are nonetheless rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Additionally, dependent claims 2, 4, 9, 11, 15, and 17 (which depend on claims 1, 8, and 14 due to their respective chains of dependency), do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Examiner notes that claims 2, 4, 9, 11, 15, and 17 do not include any additional elements beyond those identified as well-understood, routine, and conventional components as described above in the subject matter eligibility rejections of independent claims 1, 8, and 14. Dependent claims 2, 4, 9, 11, 15, and 17 merely add limitations that further narrow the abstract idea described in independent claims 1, 8, and 14. Therefore, claims 1-4, 7-11, 14-17, 20, and 21 are also nonetheless rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/N.A.A./Examiner, Art Unit 3686
/JONATHON A. SZUMNY/Primary Examiner, Art Unit 3686