DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/27/2026 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
light receiving device configured to receive light, see e.g. claim 1
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. After review of the specification the examiner notes:
The light receiving device is defined to be a fiber end face, a lens, or any other equivalent structures as per the speciation at [0009] (citing PGPUB US 20220061673 A1; hereafter merely the specification).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 7 is objected to because of the following informalities: in line 2, the term “multiple” should be added before “transmission curve models”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7, 11-13, and 16-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1 the claim recites both “a contamination (V)” in lines 18-19 and “a plurality of different contaminations (V)” in line 26. This raises two issues of indefiniteness. First, the same term, (V), is defined in multiple points which is prima facie confusing and renders unclear which the applicant is referring to in all subsequent statements. Second, the plurality of contaminations is not defined to contain the “a contamination” so it is unclear how or if these contaminations relate to each other. For compact prosecution purposes the examiner will presume that the latter citation is redrafted as “a plurality of different contaminations including the contamination (V)”.
In claim 1 the claim recites both “at least one tissue characteristic (G)” in line 13 and “a plurality of different tissue characteristics” in line 27. In this instance it cannot be discerned how or if these characteristics relate to each other (e.g. in lines 28-31) which renders the scope of the claims unclear. For compact prosecution purposes the examiner will presume that the latter citation is redrafted as “a plurality of different tissue characteristics including the at least on tissue characteristic (G)”.
Claim 16 recites that “the assignment device withholds indication to the user” which raises multiple issues of indefiniteness. First, this renders the scope of the claims stating “the tissue analysis device according to claim 1” unclear given that claim 1 recites “a display … operable to display to a user … the tissue characteristic (G)” wherein these two limitations appear to be incompatible and thus are prima facie confusing. Secondly, neither claim 1 nor claim 16 asserts that the assignment device (structurally only a processor), has any ability to provide indication to any user such that it is unclear whether or not the applicant is intending to redefine the term “assignment device” or redefine the term “processor” or otherwise whether or not the claimed limitation has any examinable meaning given that the assignment device does not appear to be capable of providing any indication in any circumstance as drafted. For compact prosecution purposes it will be presumed that it is the display that withholds displaying of this characteristic.
Claims 17 recites that “the assignment device causes an optical or acoustic notification”; however, it is unclear how or if this scope of function could be accomplished by the processor which constitutes the assignment device. This renders the claim scope unclear as it cannot be discerned whether or not the applicant is attempting to redefine the structure of the assignment device or the processor or if this claim limitation is instead a desideratum or miss-attributed limitation. For compact prosecution purposes it will be presumed that the optical notification is a function of the display and that the invention can further comprise a speaker for providing an acoustic notification.
Claims 2-7 and 11-13 are each also similarly affected by one or more of the foregoing issues, at least by virtue of dependency from an affected claim.
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 1-7, 11-13, and 16-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to and Abstract idea without significantly more.
Before diving into the analysis in detail, the examiner finds it useful to establish the following: In reviewing abstractness the examiner will be referring to the applicant’s Fig. 2 in perpetuity as it is the closest depiction to the claims and thus the best source of clarifying examples. Likewise for clarity of examples the examiner notes that the spectra (e.g. 27, 28) used therein consist of three spectral lines which are exemplary only and that this could be less or more (see e.g. [0036]) but for simplicities sake will be taken at face value and will be assumed to be RGB lines when used in the examples below unless otherwise noted. In referring to steps of the eligibility analysis the examiner is referring to the steps set forth in the flowcharts found in MPEP 2106(III) and 2106.04(II)(A) (i.e. revised step 2A). The “evaluation device”, “assignment device”, and “test device” will not be referred to or regarded separately by the examiner as they are each implemented by the same processor, rather the examiner will refer to the processor directly. With that established, the examiner notes the following about Claim 1:
Step 1: the claim is directed to a product/machine (tissue analysis device) and has structures recited therein, and thus step 1 is YES.
Step 2A prong 1: the claim contains four steps performed by a processor, three of which are considerable as abstract. Therefore step 2A prong 1 is a YES as elaborated on below.
More specifically, despite the somewhat verbose wording of the claim only three things are determined by the processor and they are: 1) the at least one tissue characteristic (G), 2) the contamination (V) of the light source, and 3) the reliability (R). Each of these can be addressed and shown to be abstract in turn as follows:
Regarding determining the at least one tissue characteristic, the claim only recites that “the processor … configured to determine at least one tissue characteristic (G) of the tissue (11) being acted upon by the electrical spark or plasma based on the signals characterizing the light intensities”. The phrase “of the tissue (11) being acted upon by the electrical spark or plasma” is expressly intended use and describes how the applicant intends to the light the spectrometer sees to be generated. As such it has no bearing on this or any analysis as it is a desideratum holding no patentable weight. Likewise, the “the signals characterizing the light intensities” are merely the output of the spectrometer as previously established in the claim. Therefore, the only scope under examination is to characterize the tissue, in any way and using any form of decision making without limitation, that uses the spectral data. Given the breadth of this sort of limitation this could fall under any of the interpretations of Abstract Idea set forth in MPEP 2106.04(a)(2)(I) or MPEP 2106.04(a)(2)(III). That is this is rote decision making in any way the user sees fit if read directly; e.g. the mental process of any of: evaluation, judgement, or even opinion as set fort in MPEP 2106.04(a) because the claims do not require a particular way of making the determination.
However, and more practically this is also interpretable as a mathematical operation. For example, the simplest way to characterize the tissue, and the most relevant given that the applicant’s disclosure identifies that the spark or plasma comes from an ablation operation, is to simple take one spectral line, the red value (see note on Fig. 2 above), and compare it to a threshold. That is, anyone of even rudimentary skill in the ablation art would readily understand that healthy tissue is perfused with blood and thus has a strong return signal and ablated tissue does not have blood flow and the majority of the red blood cells/hemoglobin that were contained therein are denatured due to the heat, reducing the red component of the signal. This simple comparison of a single value to a single threshold can be used to determine the tissue characteristic of is healthy vs. is ablated (or, is ablated vs. is not ablated etc.) and it would fall under MPEP 2106.04(a)(2)(I) as a rote mathematical relationship or calculation. The examiner has gone to these lengths to describe such an application, despite not featuring in the claims which are generic to any way of determining the characteristic from the spectral data is to show express examples that allow one to readily understand that many ways in which this can be done are so simple as to be both clearly abstract and clearly practicable in one’s head or by hand, e.g. on paper.
Regarding the determination of the contamination, the claims have to alternative options for doing this.
First the claims recite “the contamination (V) of the light receiving device is determined by one of: … a test device (30), wherein the test device (30) is implemented by the processor”. This is entirely unbound to any limitation whatsoever it can use any data in any way for any reason so long as a determination is made. As such one could e.g. presume that the light receiving device starts out clean and therefore that contamination is 0 for the first 15 minutes of operation and presume that the usage of the device for prolonged time contaminates it and therefore that the contamination is 100% after 15 minutes. This is an example that is fully compliant with the claim limitation as drafted and which is so broad that it qualifies as abstract under each of 2106.04(a)(2)(I), MPEP 2106.04(a)(2)(II), and MPEP 2106.04(a)(2)(III) and can even be considered mere observation (e.g. watching a clock or counting the time) yet still read on the broad claim language. As such it is prima facie apparent that this is both abstract and practicable in one’s head or by hand, e.g. on paper.
Second the claim recites “the contamination (V) of the light receiving device is determined by one of: the assignment device (23), wherein the assignment device (23) is configured to carry out classification of the contamination (V) based on the light intensities determined by the spectrometer”. In this instance this second option is abstract in exactly the same way as the determination of the tissue characteristic as it has no other limitation except that it uses the same spectral data. See above. For compact prosecution purposes the examiner will provide hypothetical ways to make the determination to show that many of the options are practicable in one’s head or by hand. First the examiner notes that continuing with just the red spectral line, one can determine whether or not the light receiving device is covered in blood as the signal will decrease due and thus a simple threshold of this single spectral line is a viable way to determine as much. Likewise, and possibly more realistically, the examiner notes that when the light receiving device is coated in anything (and in particularly with char) the light of all channels will decrease. As such one could instead sum the RGB channels and compare that single value to a single threshold and classify whether or not, or if multiple thresholds are used could classify a type/extent of, contamination present using either mere judgment or mere math of the sort addressed above.
Regarding the determination of the reliability value, the claim is very verbose in this regard but has still has an extremely broad scope of the sort that clarifies how this can be abstract and readily practicable in one’s head or by hand. More specifically, the claim recites that the processor does each of:
“determination of a reliability value (R) corresponding to the at least one tissue characteristic (G) based on contamination (V) of the light receiving device”
“wherein the [processor] comprises multiple transmission curve models (26) that are characteristic for a plurality of different contaminations (V) and comprise reliability values (R) for a plurality of different tissue characteristics”
“wherein the [processor] selects a transmission curve model (26) of the multiple transmission curve models (26) corresponding to the determined contamination and selects the reliability value (R) of the selected transmission curve model (26) that corresponds to the determined at least one tissue characteristic”
Translating the first of these into simple English, the processor requires that the data used for making the determination corresponds to the tissue characteristic and contamination. This is a broad set of data that could simply be the spectra itself as both the characteristic and contamination are derived therefrom, or it could be those two values themselves (e.g. to continue the previously used examples, this could be a line envisaged in one’s head or drawn by hand about the RGB peaks of 27,28 giving a curve based on three values; or, it could be the intensity of the red spectral line and the contamination value plotted next to each other, etc.).
The second of these limitations merely iterates that there is some database of curves that relate the input to the reliability. The claims do not address or require anything that might be considered as mentally complex deriving the relationship between reliability and the data from first principle nor do the claims even iterate something repetitive but simple like generation of a large number of curves, rather this is just a limitation that the user/processor has access to such curves. In this regard while one could simply memorize a small set of curves and could regard this is being done in one’s head or, more realistically, this is best addressed as being done by hand in light of MPEP 2106.004(a)(2)(III)(B) noting that having access to (e.g. on a printout or looked up in a book) or generating (e.g. a written out set of) curves is simply an aid of the sort that does not cause the concept to be non-abstract and/or see MPEP 2106.05(g) noting that “selecting a particular source or type of data to be manipulated” is an express example of something insignificant in the context of determining whether or not something is abstract and/or see MPEP 2106.04(a)(2)(III)(C) noting examples 2-3 therein where accessing a database is just using the computer’s memory instead of one’s own or using the computer as a tool for data storage and retrieval is just like using pen and paper and thus does not cause this sort of limitation to rise to more than an abstract idea.
The third of these limitations merely iterates that a comparison (e.g. a best match) between the test curve and the database curves should be performed to actually make the determination and is the only three of these limitations that is a step/action. However, the examiner notes that this is rote pattern/template matching of the sort that is not only easily practicable in one’s head directly (or by hand if lining up a printout/written set of the curves next to each other) but also clearly covered by MPEP 2106.04(a)(2)(III)’s statement that observations, evaluations, and judgement are core mental processes.
To tie this together into a single statement and fit this to the examples above, all three of these cited limitations/the determination of the reliability value could be accomplished simply by envisaging or drawing a curve between the relevant data points (i.e. the spectra itself or the values for the characteristic and contamination already determined) and picking the best batch between that curve and the set of known/pre-generated curves. As such it is clear that this is a simple activity of the sort that is both abstract and could be done in one’s head or by hand.
Therefore and for the foregoing reasons it can be seen that claim 1 requires three steps that are abstract ideas.
Regarding step 2A prong 2 and step 2B together, it can be seen that the only remaining features of the claim to address are the structural limitations of the light receiving device, the spectrometer, the processor, and the display and the processing step of “receive the signals characterizing the light intensities transmitted by the spectrometer” not addressed above.
This step or receiving the spectral data is one that anyone and everyone who has ever implemented image/data processing has done, making it a mere field of use limitation, and additionally it is also specifically excepted based on MPEP 2106.05(g) as this is also a textbook mere data gathering limitation. As such this does not amount to significantly more nor integrate the abstract ideas into a practical exception for reasons clearly and expressly addressed in the MPEP.
Regarding the structure of the light receiving device and spectrometer together. The examiner notes that there are not physical limitations on either structure in the claim, nor are any specific functional limitations placed on these structures (e.g. the spectrometer could output a single spectral line/sense a single wavelength and still comport with the broad claim language). Likewise, and acknowledging that the light receiving device is a 112(f) limitation but to that end the examiner notes that it is broadly specified and open-ended in its drafting and appears to cover effectively any optics either directly through mention or because they are equivalents for the function (which is to merely receive/pass light) with the applicant also helpfully giving various examples in their 02/27/2026 remarks (page 6) showing this breadth in part. As such the claimed scope of any optics used with any spectrometer to gather a spectra is merely a data gathering structure of the sort expressly addressed under MPEP 2106.05(g) with no specific limitations that could cause the examiner to further evaluate it under 2106.05(b). As such this does not amount to significantly more nor integrate the abstract ideas into a practical exception for reasons clearly and expressly addressed in the MPEP.
Regarding the processor the examiner notes that no physical limitation of the processor is presented in the claims or specification. This is therefore a textbook case of mere application of an idea to a computer of the sort covered by MPEP 2106.04(a)(2)(III)(C-D) and/or merely links the idea to a computer in a way that can be interpreted as mere instructions to apply the otherwise abstract ideas on the computer in the manner addressed in MPEP 2106.05(f). For the latter of these two (i.e. for MPEP 2106.05(f) analysis) this is based in part on the step 2A prong 1 analysis and the specific examples of how generic/simple mental activities can read on the claims and therefore this analysis in incorporated herein by reference to show that a computer is fundamentally not necessary for the practice of the invention but rather is placed in the claims merely as a means to execute the otherwise abstract steps.
Regarding the display, the examiner notes that for the step 2B portion of the analysis one only needs to consider whether or not the display itself is a specific enough structure to be an additional element that made the claims significantly more than the exception. In this instance the examiner again notes that there is not a single physical feature of the display in the claims nor in the specification. As such it is clear that this is merely a device for outputting data that is presented at only a high level of generality just as the other physical structure and therefore falls squarely within the guidance provided by MPEP 2106.05(g) for post solution/output structures. Therefore, and after considering all claimed structures step 2B is NO and the claims are ineligible.
More interesting to consider is the display’s relationship to the step 2A prong 2 analysis. In this instance it is important to establish up front that there is a difference between the broadest reasonable interpretation of the display’s functional limitation and the applicant’s arguments made to date regarding the display. Specifically, the examiner notes that the functional limitation “the display operable to display to a user of the surgical instrument the tissue characteristic (g) of the tissue currently being acted upon by the electrical spark or plasma and the reliability value (R)” does not require that anything is ever displayed. Rather this just that the display is “operable to” (i.e. “allows for” or is “capable of”) outputting information. As such and for a first reason the display cannot fundamentally cause this abstract idea to be integrated into anything practical or anything at all given the current claim drafting. Also, and to fully clarify that this is not merely a semantic issue the examiner notes that newly added dependent claim 16 expressly requires, as best understood, that the display not output the relevant information. While claim 16 has some issues of definiteness under 112(b), the drafting of claim 16 it unambiguously clarifies that the optional nature of the display in claim 1 is intended by the applicant to expressly not be mandatory/required. Therefore the system has no required output whatsoever (i.e. the system does not comprise the tool, much less control it; nor does the system comprise the user, much less control them; nor does the invention even control the light source required for its function, as the spark is provided by the operation of the tool for which the invention is for use with) and could not therefore, under any interpretation, ever be considered as requiring integration of the abstract idea into anything at all.
For compact prosecution the examiner notes that while the foregoing step 2A prong 2 analysis is full and complete as is, that it is reliant in part on the current claim drafting and therefore that it may compact prosecution to further elaborate on how a required display of data (arguendo, as this is not drafted into the claim currently) would still not cause the invention to be integrated into a practical application. To that end, the examiner notes that surgical procedures are well known practical applications of diagnostic data, see MPEP 2106.04(d)(2), but that these require positive actions to be taken based on the abstract idea/diagnostic information. That is, providing information to the user, even very useful information that they may choose to use to alter the patient’s treatment does not necessarily cause any treatment or prophylaxis and is even specifically addressed in MPEP 2106.04(d) which states explicitly that:
“Examiners should keep in mind that in order to qualify as a "treatment" or "prophylaxis" limitation for purposes of this consideration, the claim limitation in question must affirmatively recite an action that effects a particular treatment or prophylaxis for a disease or medical condition. An example of such a limitation is a step of "administering amazonic acid to a patient" or a step of "administering a course of plasmapheresis to a patient." If the limitation does not actually provide a treatment or prophylaxis, e.g., it is merely an intended use of the claimed invention or a field of use limitation, then it cannot integrate a judicial exception under the "treatment or prophylaxis" consideration. For example, a step of "prescribing a topical steroid to a patient with eczema" is not a positive limitation because it does not require that the steroid actually be used by or on the patient, and a recitation that a claimed product is a "pharmaceutical composition" or that a "feed dispenser is operable to dispense a mineral supplement" are not affirmative limitations because they are merely indicating how the claimed invention might be used.”
With underlining used for emphasis for a particularly relevant example (i.e. providing the data to the user does not actually mean that the user acts according to the data, they may have other considerations etc., but in any event a positive linkage between the abstract idea and a treatment step is expressly required and mere output meant to guide treatment cannot provide this linkage as demonstrated in the citation).
Therefore step 2A prong 2 is also NO and, having addressed step 2B above, Claim 1 is conclusively are not patent eligible.
Turning to the dependent claims, the examiner notes the following:
Dependent claims 2-3 only add that the assignment device or test device respectively is the device implemented by the processor which carries out the step of determining the classification. Since both the assignment device and test device are implemented by the same processor this has no impact on the eligibility analysis as, in either event, the same processor is performing the same determination already addressed above.
Dependent claim 4 only adds that the classification of the contamination already addressed above comprises assignment of the contamination to one or more contamination types. Since that is the definition of classify this does not appear to add anything new to the analysis but for compact prosecution purposes the examiner notes that assigning by groups is still a mental activity of the sort addressed above.
Dependent claim 5 requires that the test device be further configured to detect a degree of contamination. However determining a contamination in general or determining a degree of contamination in specific is still a mental activity of the sort addressed above.
Dependent claim 6 adds that the determination of the reliability value is specific to the tissue characteristic. This further limits the mental step, but does not add anything other than decision making/comparison and thus is still a mental activity of the sort addressed above.
Dependent claim 7 limits what the models stored by the processor comprise. Since the processor already possessed the curves this adds nothing to the analysis and as such is still one of the abstract ideas of the sort addressed above.
Dependent claim 11 add that the transmission curves relate the spectra to the tissue characteristics. In this instance the claims only limit what sort of mental or mathematical model could be applied but do not cause the practitioner to do anything other than mental or mathematical activities and therefore are still regarding the same sort of abstract ideas addressed above.
Dependent claims 12-13 add that the test device comprises a light source and that the light used by the invention to gather the base data uses this light. As such this addresses specifically and only pre-solution activities of the sort which do not cause the invention to be materially more than the abstract idea for reasons set forth in MPEP 2106.05(g).
Dependent claim 16 addresses that the tissue characteristic is not displayed. This actually broadens the scope of the claim and therefore is necessarily rejectable under 101 for the foregoing reasons addressed in parent claim 1.
Dependent claim 17 addresses the sort of display (being optical or acoustic) where optical was already addressed above and therefore this does not in any way affect the eligibility analysis; however, and for compact prosecution purposes, providing an acoustic display instead of an optical display would still be a mere data output of the sort addressed in MPEP 2106.05(g) if later required by the claims.
Reasons for Lack of Art Rejection
The examiner notes while the basic structures of the invention are old and well known and have been commercially available for decades, the functional limitations relating to assigning reliability values to tissue characteristics/tissue characterization are novel. In more detail and with reference to the prior art previously made of record, the examiner notes that an exemplary device is demonstrated by Spether who has an electroscalpel with tissue analysis built in, i.e. a surgical instrument with a tissue analysis device in the vernacular of the claims, as depicted in Fig. 2. Which takes in light and uses a spectrometer to generate a spectra as per Fig. 1, and which uses this data for tissue characterization specifically by identifying tissue types from the spectra as per Fig. 3 and even does so using models, curves, and other analysis similar in nature to the functions of some of the applicant’s dependent claims. However, Spether, like other arts in the field, does not assign a reliability value to contamination and thus does not read on the claims. That is because Spether, like numerous other arts, simply corrects for or removes or otherwise dis-allows for the formation of contamination in the first place. Spether does this by flowing a fluid, though the prior art as whole solves this problem in myriad ways. For instance the applicant (or at least assignee Erbe Elektromedizin GmbH) is well aware of as much as they similarly have multiple filings with the USPTO on systems which are designed to preclude contamination formation including in ways which do not involve flowing fluids such as the assignee’s patent applications involving an entrapped fluid window that cannot be charred and dissipates through its volume or the assignee’s patent applications on recessed or specifically positioned windows that avoid the potential for or eliminate the possibility of contamination. Likewise there are numerous arts where the end windows are simply periodically cleaned in operation by mechanisms such as sprayers, as is done in Brown, where when contamination is detected as per [0026]-[0027] a fluid flush is used for cleaning as show in in [0031]. This has also been done by other arts with simple physical implements such as wiper blades. It has also been done in more complex ways, as is done in Boutoussov, where the contamination can even be safely burned off if detected as shown in the Abstract and [0027] of that document. As such there has been little interest in the prior art in specifically detecting and accounting for contamination without removing it as there are many ways to either remove or preclude contamination formation. This is because the prior art nearly universally regards leaving contamination on the light receiving device as a detriment and therefore the applicant’s claims, which merely processes around the existence of contamination but do not attempt to resolve the root issue by elimination of contamination, are also unobvious over the prior art.
While the foregoing has caused the examiner to decline to issue a prior art rejection, in this instance the examiner has also declined to issue an actual notice of allowable subject matter. This is because there are other serious issues with the claim including 112(b) and 101 issues that must be resolved before it can accurately be determined that the claims contain allowable subject matter.
Response to Arguments
Applicant’s arguments, see pages 6-12, filed 02/27/2026, with respect to the 101 rejections have been fully considered but they are not persuasive.
In this instance the examiner notes that, as remarked by the applicant on page 6, the claims are amended, and claim 1 is amended quite heavily in fact. In this instance the examiner has been forced by this amendment to entirely redraft their 101 rejections. Moreover, in this instance the examiner notes that the best and most thorough rebuttal to all points raised by the applicant on pages 6-12 is therefore to see the new 101 rejection above which address each and every point raised by the applicant in all due detail. Therefore, the examiner is not convinced by the applicant’s arguments for the reasons addressed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael S Kellogg whose telephone number is (571)270-7278. The examiner can normally be reached M-F 9am-1pm.
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, Keith Raymond can be reached at (571)270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL S KELLOGG/ Examiner, Art Unit 3798
/KEITH M RAYMOND/ Supervisory Patent Examiner, Art Unit 3798
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