DETAILED ACTION
This action is made FINAL in response to the amendments filed on 2/13/2026.
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, 4-11, 20, 21, and 23 - 30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As to claims 1,
Step 2A, Prong One
The claim recites in part:
the DNN control unit changes parameters of the DNN model based on the control information
the DNN control unit changes at least one of an input image size and a filter size of the DNN model,
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human can easily change the parameters of a computer program. As per MPEP 2106.04(a)(2)(III)(C)), a claim that requires a computer may still recite a mental process. In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of:
a DNN control unit configured to receive control information generated based on evaluation information of a result of the execution of the DNN and change the DNN model based on the control information,
which amounts to extra-solution activity of gathering data for use in the claimed process. As described in MPEP 2106.05(g), limitations that amount to merely adding insignificant extra-solution activity to a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.
The claim further recites:
a Deep Neural Network (DNN) processor configured to execute a DNN for an input image based on a DNN model;
the DNN processor executes the DNN using a first image data of the input image, a second image data of the input image and a third image data of the input image, the second image data being having a different aspect ratio from the first image data, and the third image data being obtained by applying noise to the first image data.
which is recited at a high-level of generality with no detail of the training process and amounts to no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea (See MPEP 2106.05(f))
The claim further recites a endoscopic operation system, solid-state image capturing device, camera control unit (CCU), DNN processor, DNN control unit, and endoscope which are recited at a high-level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)).
In addition, the recitation of DNN, input image, control information, evaluation information, DNN model, parameters, filter value, filter weight, learning, image data, and aspect ratio amounts to generally linking the use of the judicial exception to a particular environment of field of use (See MPEP 2106.05(h)). As such, the claim does not integrate the judicial exception into a practical application.
Accordingly, at Step 2A, Prong Two, the additional elements individually or in combination do no integrate the judicial exception into a practical application.
Step 2B
In accordance with Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more that the judicial exception. As discussed above, the additional elements of:
a DNN control unit configured to receive control information generated based on evaluation information of a result of the execution of the DNN and change the DNN model based on the control information,
are recited at a high level of generality and amounts to extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process. The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory").
The claim further recites:
the Deep Neural Network (DNN) control unit changes parameters of the DNN model based on the control information,
the DNN processor executes the DNN using a first image data of the input image, a second image data of the input image and a third image data of the input image, the second image data being having a different aspect ratio from the first image data, and the third image data being obtained by applying noise to the first image data.
which is recited at a high-level of generality with no detail of the training process and amounts to no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea (See MPEP 2106.05(f))
The a endoscopic operation system, solid-state image capturing device, camera control unit (CCU), DNN processor, DNN control unit, and endoscope are recited at a high-level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)).
The recitation of DNN, input image, control information, evaluation information, DNN model, parameters, filter value, filter weight, learning, image data, and aspect ratio amounts to generally linking the use of the judicial exception to a particular environment of field of use (See MPEP 2106.05(h)).
Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception.
As to claims 4,
Step 2A, Prong One
The claim does not recite an abstract idea or any other judicial exception and therefore passes Step 2A, Prong One of the Alice/Mayo analysis.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of:
a memory configured to store at least one DNN model executed by the DNN processor
which amounts to extra-solution activity of gathering data for use in the claimed process. As described in MPEP 2106.05(g), limitations that amount to merely adding insignificant extra-solution activity to a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.
Accordingly, at Step 2A, Prong Two, the additional elements individually or in combination do no integrate the judicial exception into a practical application.
Step 2B
In accordance with Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more that the judicial exception. As discussed above, the additional elements of:
a memory configured to store at least one DNN model executed by the DNN processor
are recited at a high level of generality and amounts to extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process. The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory").
Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception.
As to claims 5,
Step 2A, Prong One
The claim does not recite an abstract idea or any other judicial exception and therefore passes Step 2A, Prong One of the Alice/Mayo analysis.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of:
wherein the memory stores learning data for the DNN processor
which amounts to extra-solution activity of gathering data for use in the claimed process. As described in MPEP 2106.05(g), limitations that amount to merely adding insignificant extra-solution activity to a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.
Accordingly, at Step 2A, Prong Two, the additional elements individually or in combination do no integrate the judicial exception into a practical application.
Step 2B
In accordance with Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more that the judicial exception. As discussed above, the additional elements of:
wherein the memory stores learning data for the DNN processor
are recited at a high level of generality and amounts to extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process. The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory").
Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception.
As to claim 6,
Step 2A, Prong One
The claim recites in part:
wherein the DNN control unit switches, based on the control information, the executed DNN model to the DNN model stored in the memory
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human can easily switch between two modes of a computer program. As per MPEP 2106.04(a)(2)(III)(C)), a claim that requires a computer may still recite a mental process. In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 7,
Step 2A, Prong One
The claim recites in part:
an evaluation unit configured to generate evaluation information by evaluating the result of the execution of the DNN
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human has been evaluating results before computers where ever invented.
The evaluation unit is recited at a high-level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)).
The recitation of evaluation information amounts to generally linking the use of the judicial exception to a particular environment of field of use (See MPEP 2106.05(h)).
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
Further the claim does not include additional elements that integrate this abstract idea into a practical application. “Evaluation” is performed using generic computer components performing their typical functions and does not provide a meaningful technological improvement.
The evaluation unit is recited at a high-level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)).
The recitation of evaluation information amounts to generally linking the use of the judicial exception to a particular environment of field of use (See MPEP 2106.05(h)).
Accordingly, at Step 2A, Prong Two, the additional elements individually or in combination do no integrate the judicial exception into a practical application.
Step 2B
Nothing in the claim adds “significantly more” beyond generic computing.
The evaluation unit is recited at a high-level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)).
The recitation of evaluation information amounts to generally linking the use of the judicial exception to a particular environment of field of use (See MPEP 2106.05(h)).
Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception.
As to claim 8,
Step 2A, Prong One
The claim recites in part:
wherein the DNN control unit changes the DNN model based on the correct-answer data
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human has been evaluating results before computers where ever invented.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 9,
Step 2A, Prong One
The claim recites in part:
wherein the evaluation unit generates the evaluation information by evaluating a processing situation at inference and learning of the DNN processor
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human has been evaluating results before computers where ever invented.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 10,
Step 2A, Prong One
The claim recites in part:
wherein the DNN control unit changes the DNN model based on the correct-answer data
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human can easily change a computer program with different data. As per MPEP 2106.04(a)(2)(III)(C)), a claim that requires a computer may still recite a mental process. In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 8,
Step 2A, Prong One
The claim recites in part:
wherein the DNN control unit changes the DNN model based on the correct-answer data
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human has been evaluating results before computers where ever invented.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 11,
Step 2A, Prong One
The claim recites in part:
wherein the evaluation information includes information related to a result of recognition of the DNN
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human has been evaluating results before computers where ever invented.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
Claim 20 has similar limitations as claim 1. Therefore, the claim is rejected for the same reasons as above.
The claim further recites a non-transitory computer readable medium are recited at a high-level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)).
As to claim 21,
Step 2A, Prong One
The claim does not recite an abstract idea or any other judicial exception and therefore passes Step 2A, Prong One of the Alice/Mayo analysis.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of:
the DNN processor respectively outputs a first recognition result, a second recognition result, and a third recognition result as recognition results of the first image data, the second image data, and the third image data
the DNN processor determines an object position in the first recognition result, the second recognition result and the third recognition result, and
the DNN processor produces a fourth recognition result by overlaying the first recognition result, the second recognition result and the third recognition result according to the determined object position.
which is recited at a high-level of generality with no detail of the training process and amounts to no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea (See MPEP 2106.05(f))
Accordingly, at Step 2A, Prong Two, the additional elements individually or in combination do no integrate the judicial exception into a practical application.
Step 2B
In accordance with Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more that the judicial exception. As discussed above, the additional elements of:
the DNN processor respectively outputs a first recognition result, a second recognition result, and a third recognition result as recognition results of the first image data, the second image data, and the third image data
the DNN processor determines an object position in the first recognition result, the second recognition result and the third recognition result, and
the DNN processor produces a fourth recognition result by overlaying the first recognition result, the second recognition result and the third recognition result according to the determined object position.
which is recited at a high-level of generality with no detail of the training process and amounts to no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea (See MPEP 2106.05(f))
Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception.
Claim 23 has similar limitations as claim 21. Therefore, the claim is rejected for the same reasons as above.
As to claim 24,
Step 2A, Prong One
The claim recites in part:
the camera control unit adjusts at least one image-capturing parameter of the endoscope according to the execution of the DNN, and
the image-capturing parameter comprises at least one of an exposure value, a frame rate, or a magnification.
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human can easily change the parameters of a computer program. As per MPEP 2106.04(a)(2)(III)(C)), a claim that requires a computer may still recite a mental process. In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 25,
Step 2A, Prong One
The claim recites in part:
Changing parameters of the DNN model includes updating at least one of a stride number, a padding number, a bias value, a learning rate, or a batch size.
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human can easily change the parameters of a computer program. As per MPEP 2106.04(a)(2)(III)(C)), a claim that requires a computer may still recite a mental process. In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 26,
Step 2A, Prong One
The claim recites in part:
the second image data is generated by changing an aspect ratio of the first image data using geometric transformation processing
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human can easily change the parameters of a computer program. As per MPEP 2106.04(a)(2)(III)(C)), a claim that requires a computer may still recite a mental process. In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 27,
Step 2A, Prong One
The claim recites in part:
the evaluation unit generates correct-answer data by calculating an average or a weighted average of recognition results obtained from the first image data, the second image data, and the third image data.
As drafted and under its broadest reasonable interpretation, this limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. A human can easily change the parameters of a computer program. As per MPEP 2106.04(a)(2)(III)(C)), a claim that requires a computer may still recite a mental process. In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
Claim 28 has similar limitations as claim 24. Therefore, the claim is rejected for the same reasons as above.
Claim 29 has similar limitations as claim 25. Therefore, the claim is rejected for the same reasons as above.
Claim 30 has similar limitations as claim 26. Therefore, the claim is rejected for the same reasons as above.
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but they are not persuasive.
Claim Rejections - 35 USC § 101
The 101 Rejection still has not been overcome. The claims are abstract and the steps in the claims can be completed with a mental process and/or generic computer components. Additionally, the steps in the claims do not describe an improvement of technology in any way.
The applicant argues:
I. Introduction
The Action maintains that Applicant's claim 1 (and claims 4-11, 20-21, 23) are "directed to an abstract idea" (mathematical/mental process) and lack "significantly more," asserting that elements such as changing DNN parameters, varying input image size and filter size, using
multi-variant input images, and CCU control are generic and high-level.
Applicant respectfully submits that Step 2A has been misapplied in this regard, in a fashion that is in tension with current USPTO guidance for AI related inventions. As shown below, the pending claims (1) do not recite a "mental process" under Prong One, (2) in any event integrate any
alleged exception into a practical application under Prong Two, and (3) recite significantly more (Step 2B) tied to concrete model-level control and medical device hardware control.
II. The Office's Current Eligibility Guidance for AI Matters
Since mid-2025, the Office has emphasized that Actions should not overextend the "mental process" category to operations that cannot practically be performed in the human mind, should distinguish "recites" vs. "merely involves" a judicial exception, should evaluate the claim as a
whole under Prong Two, and should credit technical improvements to computer technology or other technical fields, even when they are expressed as logical structures and processes rather than new
physical boxes.
Further, in Ex parte Desjardins, an Appeals Review Panel (ARP) of the USPTP Patent Trial and Appeal Board (PTAB) vacated a § 101 ineligibility determination regarding an AI related invention, and expressly affirmed that AI related inventions can be non-abstract when they improve
how the computer/AI system itself operates. It was further indicated that § 102/103/112 should be the primary examination tools for scope. The PTAB has since echoed Desjardins (e.g., Ex parte Carmody), reversing a rejection under § 101 based on Step 2A, Prong Two where AI claims recited a practical application improving the AI system's operation.
The examiner disagrees. The limitations are process steps that cover mental processes including an observation, evaluation, judgment or opinion that could be performed in the human mind or with the aid of pencil and paper. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas. The additional elements amount to no more than mere instructions to apply the exception using generic components which does not provide an inventive concept (See MPEP 2106.05(f)).
The applicant mentions ‘Ex parte Desjardins’ as an example but the Applicant does not explain how the cited example is relevant to the presently claimed invention. The example is not tied to the claimed features, nor is any comparison provided demonstrating how it supports patent eligibility. It is unclear why the Applicant relies on this example.
The applicant argues:
III. Step 2A, Prong One: The Claims Do Not Recite a "Mental Process"
The Office states that elements like "the DNN control unit changes parameters," "changes an input image size and a filter size," "uses second image data with a different aspect ratio," and "third image data obtained by applying noise," could be done "in the mind" or "with pencil and paper."
Applicant respectfully submits that this approach is not consistent with the USPTO's AI memo and with the claim's actual text.
The claim requires execution of a DNN for endoscopic imagery by a DNN processor, not mental contemplation. For example, the claim recites "a DNN processor configured to execute a DNN for an input image based on a DNN model."
The claim also requires concrete, model-level modifications, namely parameter changes, input image size and filter size changes, as well as usage of multiple input variants (different aspect ratio; noise-perturbed) in the execution flow. These features are machine-precision, tensor-level transformations over large image arrays, not practicable in a human mind. Specifically, the claim
recites "changes an input image size and a filter size of the DNN model executes the DNN using second image data having a different aspect ratio and third image data obtained by applying noise."
Further, the claim couples the AI execution to device control, in reciting that "the CCU controls the endoscope according to the execution of the DNN."
The USPTO memo of August 4, 2025 cautions that mental process grouping does not apply to limitations that cannot practically be performed in the human mind, including complex neural network operations and high-dimensional matrix computations. Applicant respectfully submits that this is precisely one of the issues at hand.
Accordingly, claim 1 does not "recite" a mental process under Prong One.
Claim 20 includes similar features, and the remaining claims incorporate the features of either claim 1 or claim 20, and further recite features of non-mental DNN execution and model control within an endoscopic system.
The examiner disagrees. Under reasonable interpretation, the claimed steps of “modifying parameters, adjusting image and filter sizes, adjusting aspect ratios, and applying noise” are just data manipulations that can be performed mentally. The recitation of a DNN or a processor merely invokes a generic computer and as per MPEP 2106.04(a)(2)(III)(C)), a claim that requires a computer may still recite a mental process. In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
The claims do not recite any specific technological improvement to the DNN or its operation and controlling the endoscope based on the DNN output constitutes insignificant extra-solution activity.
The applicant argues.
IV. Step 2A, Prong Two: Even If a Judicial Exception Were Implicated, the Claims Integrate It Into a Practical Application
Even arguendo, the claims integrate any alleged abstract idea into a practical application that improves Al/vision model deployment and device operation in endoscopy:
Model-level technical controls, not mere "apply it"
Applicant's claim 1 recites specific model-level controls that materially affect how the AI system operates. Specifically, "the DNN control unit changes parameters of the DNN model changes an input image size and a filter size of the DNN model executes the DNN using a second image data having a different aspect ratio and a third image data obtained by applying noise."
These features extend well beyond an "apply it" to a computer scenario. They address how the model is adapted and executed, such as controlling receptive fields, scaling behavior, robustness to aspect-ratio variation, and noise tolerance during inference/learning. These are the types of logical structures and processes recognized as non-abstract improvements in computer technology, including as set forth in Desjardins.
By way of example, Applicant's specification explicitly frames these controls as enabling on-device learning/inference, evaluation-driven model changes, and robust recognition under different image transforms, which are core technical outcomes for constrained medical imaging pipelines. See, e.g., US Pub. No. 2021/0195128 A1, at [0056]-[0069] (image preprocessing, extension and normalization; model execution), [0073]-[0088] (model info; parameter, input-size, filter-size changes; switching models), [0111]-[0119] (multi-variant inputs; generation of correct-answer data; learning) and [0152]-[0184] (endoscope system deployment; CCU cooperation).
Tying AI execution to real-world device control
Moreover, Applicant's claim 1 does not merely address classification. The claim also expressly ties AI execution to CCU control of the endoscope, in reciting that "the CCU controls the endoscope according to the execution of the DNN." Applicant's specification also reinforces that this reduces end-to-action latency and improves operational performance of the endoscope system. See US Pub. No. 2021/0195128 A1, e.g., [0184] (improved dynamic range, easier object recognition in high-contrast scenes; "fast operation reduction of a time taken for operation from object sensing to control of the camera head"), and [0177]-[0181] (CCU control, display, recognition support).
Applicant respectfully submits that these are device-level improvement that integrate any exception into a practical medical application.
Under Step 2A, Prong Two, such claim-as-a-whole integration constitutes a practical application that is consistent with the Office's memo regarding AI related inventions, as well as the Desjardins framework.
The examiner disagrees. The applicant’s arguments fail to demonstrate that the claims integrate the alleged abstract idea into a practical application. The recited “model-level technical controls” (i.e. adjusting input image size, filter size, or applying noise) merely reflect generic data manipulation and parameter tuning inherent to conventional machine learning techniques, which do not improve the functioning of the computer or the model. Rather these steps constitute the application of an abstract idea using routine and well-understood techniques.
The examiner respectfully disagrees with the applicant’s position, as the arguments presented rely on limitations that are neither explicitly recited in the claims nor reasonably inferred from them. At no point in the pending claims does the applicant assert, describe, or even suggest the limitation of “as controlling receptive fields, scaling behavior, robustness to aspect-ratio variation, and noise tolerance during inference/learning.” Rather, the applicant appears to have introduced this language as part of the argument, but such a limitation cannot be read into the claims when it is not supported by the actual claim language.
Further, the alleged linkage to endoscope control via a CCU does not impose a meaningful limit on the claims, as it merely uses the results of the abstract processing to control a device. The claims do not recite any specific technological improvement to the endoscope. CCU, or underlying computing system, but instead rely on generic implementation. Accordingly, the claims do not integrate the judicial exception into a practical application.
The applicant argues.
Step 2B: The Claims Recite "Significantly More" Than Any Alleged Abstract Idea
The Office characterizes the limitations as "high-level," "extra-solution" data handling, or generic computing.
Applicant respectfully disagrees. This conclusion does not account for the interplay of the concrete elements. For example, concrete AI mechanics of parameter changes, input-image sizing, filter sizing, and multi-variant inputs are used in the DNN execution path to generate recognition that then drives CCU control. Applicant respectfully submits that this is not merely "receiving/storing/transmitting data," but rather extends to engineering the model's operating point and data pipeline for more robust recognition in challenging endoscopic scenes.
The endoscope and CCU architecture and the explicit control loop ("CCU controls the endoscope according to the execution of the DNN") go well beyond a computer "as a tool." The claimed loop changes how the system operates (e.g., camera head control decisions, image capture parameters) in response to AI-generated recognition, which is significantly more than an abstract idea.
The Desjardins precedent and USPTO notices also support that where claims improve how AI systems operate or how technology functions, §101 should not be used as a broad filter. The appropriate limits on breadth are §§102/103/112, which are not at issue here.
The examiner disagrees. The so-called “concrete AI mechanics,” including parameter changes, input-image sizing, filter sizing, and multi-variant input, amount to routine data manipulation and conventional optimization techniques performed within a generic DNN. These elements are well-understood, routine, and conventional in the field of machine learning and do not constitute an inventive concept.
Additionally, the recited endoscope/CCU control loop uses the output of the abstract idea to drive a device, which constitutes insignificant extra solution activity. The claims do not provide any specific improvements to the functioning of the endoscope or the CCU, but instead rely on generic components performing their ordinary functions.
The claims merely implement the abstract idea on generic computer components without any inventive concept. Accordingly, the clams do not amount to significantly more than the judicial exception.
Conclusion
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 BRANDON S COLE whose telephone number is (571)270-5075. The examiner can normally be reached Mon - Fri 7:30pm - 5pm EST (Alternate Friday's Off).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Omar Fernandez can be reached on 571-272-2589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRANDON S COLE/ Primary Examiner, Art Unit 2128
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