DETAILED ACTION
1. This office action is in responsive to the applicant’s arguments filed on 12/12/25.
2. The present application is being examined under the first inventor to file provisions of the AIA .
3. Claims 1, 3-10, 36, 38-44 are currently pending.
4. Claims 1, 9, 36 and 43 are amended. Claims 4, 38-42 are previously presented.
5. Claims 3, 5-8 and 10 are original. Claim 44 is new.
6. Claims 2, 11-35 and 37 are cancelled.
Response to Arguments
Response: 35 U.S.C. § 101
7. Applicants argue:
The applicant argues that with the recent amendment to the claims, the claims are eligible
under 35 U.S.C. 101. The applicant points to MPEP 2106.06(a) for support as to why the recent
amendment, that now includes a control system, is eligible under 35 U.S.C. 101. The applicant
also argues that the limitation of “a manipulator assembly including one or more actuators
configured to move the medical instrument” cannot be conducted in the human mind or with
pencil and paper. (Remarks: pages 7-11)
8. Examiner Response:
The examiner respectfully disagrees. The examiner notes that the control system and
processors of the recent amendment that states “control system including one or more
processors communicatively coupled to the manipulator assembly” are additional elements.
The control system and processors are recited at a high level of generality such that it amounts
no more than mere instructions to apply the exception using a computer and/or a generic
computer component. 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.
The examiner also notes that as stated in the previous office action dated 10/1/25, the
limitation that states “a manipulator assembly including one or more actuators configured to
move the medical instrument” is not actually having the actuators move the medical
instrument. The claim limitation is stating that the manipulator assembly includes one or more
actuators that can move a medical instrument. In the section of the MPEP that the applicant points to for support, it states that “a robotic arm assembly having a control system that operates using certain mathematical relationships is clearly not an attempt to tie up use of the mathematical relationships and would not require a full analysis to determine eligibility”. As stated above, the claim limitation of claim 1 doesn’t have the manipulator assembly that includes one or more actuators controlling the medical instrument. The limitation is stating that the actuators of the manipulator assembly can control the medical instrument. The limitation doesn't distinguish itself from being able to be conducted in the human mind. Therefore, under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
The examiner also notes that for the claim language to be eligible, the claim language
should state the movement of the arm is based on the transmission of the signals.
9. Applicants argue:
The applicant argues that the BASCOM case is not limited to “optimizing particular
content”. The applicant states that BASCOM also provides another example of how courts
conduct the significantly more analysis, and of the critical importance of considering the
additional elements in combination. (Remarks: pages 11-12)
10. Examiner Response:
The examiner notes that as stated above, the additional elements of the control system
and processors in combination with the other limitations of the claim do not integrate in the
abstract idea into a practical application. The control system and processors are recited at a high
level of generality such that it amounts no more than mere instructions to apply the exception
using a computer and/or a generic computer component. 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.
11. Applicants argue:
The applicant argues that the limitation of claim 1 that states “transmit the instruction
signals to the one or more actuators of the manipulator assembly” cannot be interpreted as
“receiving data” as the terms “transmit” and “receive” are understood to be antonyms. The
applicant also argues that the transmit limitation cannot be reasonably be considered "pre-
solution activity of gathering data for use in the claimed process" as the instruction signals being
transmitted by the control system to the one or more actuators of the manipulator assembly
occurs after the other steps of the claimed process. (Remarks: pages 12-13)
12. Examiner Response:
The examiner notes that in the transmitting limitation, the instruction signals are being
gathered by the one or more actuators of the manipulator assembly, since this is where they are
being transmitted to. Therefore, the limitation amounts to insignificant extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process, see MPEP 2106.05(g). The examiner also notes that the claim limitation doesn’t state what is
being done with the instruction signals after they have been transmitted.
13. Applicants argue:
The applicant argues that with the recent amendment to claim 1 for example, has the
claim as a whole integrate the abstract idea into a practical application. The applicant argues that
even if the limitations of "generate a plurality of model points from a model, "receive a set of
measured points", "map each measured point of the set of measured points to a first model
path”, "register the set of measured points with a first portion of the plurality of model points",
“generate instruction signals" and "transmit the instruction signals" could properly be
considered mental processes, the bolded features of the limitations of claim 1 integrates that
abstract idea into a practical application. The limitations of claim 1 that are bolded are “a medical instrument; a manipulator assembly including one or more actuators configured to move the medical instrument;
a tracking system configured to monitor a position of the medical instrument;
and a control system including one or more processors communicatively coupled to
the manipulator assembly, the medical instrument, and the tracking system, the control system configured to:
generate a plurality of model points from a model of an anatomic structure of a patient, the plurality of model points being associated with coordinates of a model space,
wherein the model of the anatomic structure of the patient includes a plurality of model paths, each model path of the plurality of model paths associated with a portion of the plurality of model points;
receive a set of measured points of a first portion of the anatomic structure of the patient from the tracking system while the medical instrument is disposed within the anatomic structure of the patient, wherein at least a portion of the measured points are collected along a length of one or more passageways of the anatomic structure between branch points of adjacent passageways, wherein each measured point of the set of measured points is associated with a first motion cycle of the medical instrument, wherein the first motion cycle includes a single insertion of the medical instrument and a single retraction of the medical instrument;
map each measured point of the set of measured points to a first model path of the plurality of model paths;
register the set of measured points with a first portion of the plurality of model points, the first portion of the plurality of model points associated with the first model path of the plurality of model paths;
based on the registration, generate instruction signals to operate the manipulator assembly to navigate the medical instrument to a target tissue location during a medical procedure performed using the medical instrument;
and transmit the instruction signals to the one or more actuators of the manipulator assembly.” (Remarks: pages 12-13)
14. Examiner Response:
The examiner notes that bolded limitations of claim 1 shown above, does not integrate
the abstract idea into a practical application. The examiner notes that those limitations have been shown to fall within step 2A, prong 1 or step 2A, prong 2. Also, as shown above in section 10 of the current office action, the control system and processors that are amended into claim 1, are viewed as additional elements, where they are recited at a high level of generality such that it amounts no more than mere instructions to apply the exception using a computer and/or a generic computer component. 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.
Response: 35 U.S.C. § 103
15. Examiner Response:
Applicant’s arguments, see pages 14-19, filed 12/12/25, with respect to the 35 U.S.C. 103 rejections have been fully considered and are persuasive. The 35 U.S.C. 103 rejection of claims 1, 3-10, 36 and 38-43 has been withdrawn.
Claim Rejections - 35 USC § 101
16. 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, 3-10, 36 and 38-44 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Under the broadest reasonable interpretation, the claims covers performance of the limitation in the mind or by pencil and paper as well as a mathematical concept.
Claims 1, 36 and 43
Regarding step 1, claim 1 is directed towards a system, a method and a medium, which has the claims fall within the eligible statutory categories of processes, machines, manufactures and composition of matter under 35 U.S.C. 101.
Claim 36
Regarding step 2A, prong 1, claim 36 recites “generating a plurality of model points from a model of an anatomic structure of a patient, the plurality of model points being associated with coordinates of a model space”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 36 recites “wherein the model of the anatomic structure of the patient includes a plurality of model paths, each model path of the plurality of model paths associated with a portion of the plurality of model points”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 36 recites “wherein each measured point of the set of measured points is associated with a first motion cycle of the medical instrument”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 36 recites “wherein the first motion cycle includes a single insertion of the medical instrument and a single retraction of the medical instrument”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 36 recites “mapping each measured point of the set of measured points to a first model path of the plurality of model paths”. This limitation doesn’t distinguish itself from being able to be conducted in the human mind or with pencil and paper. Therefore, under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 36 recites “registering the set of measured points with a first portion of the plurality of model points, the first portion of the plurality of model points associated with the first model path of the plurality of model paths”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Regarding step 2A, prong 2, the limitation of collecting a set of measured points of a first portion of the anatomic structure of the patient from a medical instrument while the medical instrument is disposed within the anatomic structure of the patient amounts to insignificant extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process, see MPEP 2106.05(g).
Also, the limitation of at least a portion of the measured points being collected along a length of one or more passageways of the anatomic structure between branch points of adjacent passageways amounts to insignificant extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process, see MPEP 2106.05(g).
Also, the limitation of based on the registration, generate instruction signals to operate the manipulator assembly to navigate the medical instrument to a target tissue location during a medical procedure performed using the medical instrument amounts to mere instructions to apply an exception, where it recites an idea of a solution. The claim limitation discloses no indication of how the instruction signals are generated and is the target tissue location associated with the set of measured points that are registered. See MPEP 2106.05 (f) (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".
Also, the limitation of and moving, by the manipulator assembly, the medical instrument to the target tissue location based on the instruction signals amounts to mere instructions to apply an exception, where it recites an idea of a solution. This claim limitation discloses no indication of what the instruction signals are. See MPEP 2106.05 (f) (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".
Also, the limitation of and moving, by the manipulator assembly, the medical instrument to the target tissue location based on the instruction signals also amounts to mere instructions to apply an exception, where the manipulator assembly functions as a tool to perform the process, see MPEP 2106.05(f) (2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
Further, the claim includes the additional element of a control system. The control system is recited at a high level of generality such that it amounts no more than mere instructions to apply the exception using a computer and/or a generic computer component. Accordingly, the additional element of a computer device does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Regarding Step 2B, the limitations of “collecting a set of measured points of a first portion of the anatomic structure of the patient from a medical instrument while the medical instrument is disposed within the anatomic structure of the patient, at least a portion of the measured points being collected along a length of one or more passageways of the anatomic structure between branch points of adjacent passageways” are also shown to reflect the court decisions of Versata Dev. Group, Inc. v. SAP Am., Inc. iv. Storing and retrieving information in memory, shown in MPEP 2106.05(d) (II).
Also, the limitation of based on the registration, generate instruction signals to operate the manipulator assembly to navigate the medical instrument to a target tissue location during a medical procedure performed using the medical instrument amounts to mere instructions to apply an exception, where it recites an idea of a solution. The claim limitation discloses no indication of how the instruction signals are generated and is the target tissue location associated with the set of measured points that are registered. See MPEP 2106.05 (f) (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".
Also, the limitation of and moving, by the manipulator assembly, the medical instrument to the target tissue location based on the instruction signals amounts to mere instructions to apply an exception, where it recites an idea of a solution. This claim limitation discloses no indication of what the instruction signals are. See MPEP 2106.05 (f) (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".
Also, the limitation of and moving, by the manipulator assembly, the medical instrument to the target tissue location based on the instruction signals also amounts to mere instructions to apply an exception, where the manipulator assembly functions as a tool to perform the process, see MPEP 2106.05(f) (2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
Further, the claim(s) does/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 the abstract idea into a practical application, the additional element of the control system
amounts no more than mere instructions to apply the exception using a generic computer
component that does not impose any meaningful limits on practicing the abstract idea and therefore cannot provide an inventive concept (See MPEP 2106.05(b).
Claim 1
Regarding step 2A, prong 1, claim 1 recites “a manipulator assembly including one or more actuators configured to move the medical instrument”. This limitation is not actually having the actuators move the medical instrument. The claim limitation is stating that the manipulator assembly includes one or more actuators that can move a medical instrument. The limitation doesn't distinguish itself from being able to be conducted in the human mind. Therefore, under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 1 recites “generate a plurality of model points from a model of an anatomic structure of a patient, the plurality of model points being associated with coordinates of a model space”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 1 recites “wherein the model of the anatomic structure of the patient includes a plurality of model paths, each model path of the plurality of model paths associated with a portion of the plurality of model points”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 1 recites “wherein each measured point of the set of measured points is associated with a first motion cycle of the medical instrument”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 1 recites “wherein the first motion cycle includes a single insertion of the medical instrument and a single retraction of the medical instrument”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 1 recites “map each measured point of the set of measured points to a first model path of the plurality of model paths”. This limitation doesn’t distinguish itself from being able to be conducted in the human mind or with pencil and paper. Therefore, under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 1 recites “register the set of measured points with a first portion of the plurality of model points, the first portion of the plurality of model points associated with the first model path of the plurality of model paths”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Regarding step 2A, prong 2, the limitation of receive a set of measured points of a first portion of the anatomic structure of the patient from the tracking system while the medical instrument is disposed within the anatomic structure of the patient amounts to insignificant extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process, see MPEP 2106.05(g).
Also, the limitation of wherein at least a portion of the measured points are collected along a length of one or more passageways of the anatomic structure between branch points of adjacent passageways amounts to insignificant extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process, see MPEP 2106.05(g).
Also, the limitation of based on the registration, generate instruction signals to operate the manipulator assembly to navigate the medical instrument to a target tissue location during a medical procedure performed using the medical instrument amounts to mere instructions to apply an exception, where it recites an idea of a solution. The claim limitation discloses no indication of how the instruction signals are generated and is the target tissue location associated with the set of measured points that are registered. See MPEP 2106.05 (f) (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".
Also, the limitation of and transmit the instruction signals to the one or more actuators of the manipulator assembly amounts to insignificant extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process, see MPEP 2106.05(g).
Also, the claim includes the additional element of a medical instrument. The additional element of the medical instrument does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Also, the claim includes the additional element of a tracking system. The additional element of the tracking system does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Further, the claim includes the additional elements control system and processors. The
control system and processors are recited at a high level of generality such that it amounts no more than mere instructions to apply the exception using a computer and/or a generic computer component. 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.
Regarding Step 2B, the limitations of “receive a set of measured points of a first portion of the anatomic structure of the patient from the tracking system while the medical instrument is disposed within the anatomic structure of the patient, wherein at least a portion of the measured points are collected along a length of one or more passageways of the anatomic structure between branch points of adjacent passageways” and “transmit the instruction signals to the manipulator assembly” are also shown to reflect the court decisions of Versata Dev. Group, Inc. v. SAP Am., Inc. iv. Storing and retrieving information in memory, shown in MPEP 2106.05(d) (II).
Also, the limitation of based on the registration, generate instruction signals to operate the manipulator assembly to navigate the medical instrument to a target tissue location during a medical procedure performed using the medical instrument amounts to mere instructions to apply an exception, where it recites an idea of a solution. The claim limitation discloses no indication of how the instruction signals are generated and is the target tissue location associated with the set of measured points that are registered. See MPEP 2106.05 (f) (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".
Also, the claim(s) does/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
the abstract idea into a practical application, the additional element of the medical instrument does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Also, the claim(s) does/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
the abstract idea into a practical application, the additional element of the tracking system does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Further, the claim(s) does/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 the abstract idea into a practical application, the additional elements of the control system and processors amounts no more than mere instructions to apply the exception using a generic computer component that does not impose any meaningful limits on practicing the abstract idea and therefore cannot provide an inventive concept (See MPEP 2106.05(b).
Claim 43
Regarding step 2A, prong 1, claim 43 recites “generating a plurality of model points from a model of an anatomic structure of a patient, the plurality of model points being associated with coordinates of a model space”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 43 recites “wherein the model of the anatomic structure of the patient includes a plurality of model paths, each model path of the plurality of model paths associated with a portion of the plurality of the plurality of model points”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 43 recites “wherein the first motion cycle includes a single insertion of the medical instrument and a single retraction of the medical instrument”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 43 recites “mapping each measured point of the set of measured points to a first model path of the plurality of model paths”. This limitation doesn’t distinguish itself from being able to be conducted in the human mind or with pencil and paper. Therefore, under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 43 recites “registering the set of measured points with a first portion of the plurality of model points, the first portion of the plurality of model points associated with the first model path of the plurality of model paths”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Regarding step 2A, prong 2, the limitation of collecting a set of measured points of a first portion of the anatomic structure of the patient from a medical instrument while the medical instrument is disposed within the anatomic structure of the patient amounts to insignificant extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process, see MPEP 2106.05(g).
Also, the limitation of wherein each measured point of the set of measured points is collected along a length of the medical instrument and is associated with a first motion cycle of the medical instrument amounts to insignificant extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process, see MPEP 2106.05(g).
Also, the limitation of based on the registration, generating instruction signals to operate the manipulator assembly to navigate the medical instrument to a target tissue location during a medical procedure performed using the medical instrument amounts to mere instructions to apply an exception, where it recites an idea of a solution. The claim limitation discloses no indication of how the instruction signals are generated and is the target tissue location associated with the set of measured points that are registered. See MPEP 2106.05 (f) (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".
Also, the limitation of and transmitting the instruction signals to one or more actuators of the manipulator assembly amounts to insignificant extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process, see MPEP 2106.05(g).
Also, the claim includes the additional elements of a processor and medium. The processor and medium are recited at a high level of generality such that it amounts no more than mere instructions to apply the exception using a computer and/or a generic computer component. Accordingly, the additional element of a computer device does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Regarding Step 2B, the limitations of “collecting a set of measured points of a first portion of the anatomic structure of the patient from a medical instrument while the medical instrument is disposed within the anatomic structure of the patient, wherein each measured point of the set of measured points is collected along a length of the medical instrument and is associated with a first motion cycle of the medical instrument” and “transmitting the instruction signals to one or more actuators of the manipulator assembly” are also shown to reflect the court decisions of Versata Dev. Group, Inc. v. SAP Am., Inc. iv. Storing and retrieving information in memory, shown in MPEP 2106.05(d) (II).
Also, the limitation of based on the registration, generating instruction signals to operate the manipulator assembly to navigate the medical instrument to a target tissue location during a medical procedure performed using the medical instrument amounts to mere instructions to apply an exception, where it recites an idea of a solution. The claim limitation discloses no indication of how the instruction signals are generated and is the target tissue location associated with the set of measured points that are registered. See MPEP 2106.05 (f) (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".
Also, the claim(s) does/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
the abstract idea into a practical application, the additional elements of the processor and medium amounts no more than mere instructions to apply the exception using a generic computer component that does not impose any meaningful limits on practicing the abstract idea and therefore cannot provide an inventive concept (See MPEP 2106.05(b).
Claims 3 and 38
Dependent claims 3 and 38 recite “wherein the first model path includes a plurality of adjoining model links connected in series and including a plurality of model points”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 4
Dependent claim 4 recites “wherein the tracking system includes a sensor configured to collect the set of measured points”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claims 5 and 40
Dependent claims 5 and 40 recite “wherein the sensor comprises a shape sensor”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claims 6 and 41
Dependent claims 6 and 41 recite “wherein the sensor comprises an electromagnetic sensor coupled to the medical instrument”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 7
Dependent claim 7 recites “wherein the set of measured points is collected from observations of a tip of the medical instrument, and wherein the observations are generated by the tracking system”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 8
Dependent claim 8 recites “wherein the set of measured points are collected from shape observations for a portion of the medical instrument”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claims 9 and 42
Dependent claims 9 and 42 recite “wherein the control system is further configured to filter the set of measured points”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas. Also, the processor functions as a tool within this limitation to perform the existing process, see MPEP 2106.05(f).
Dependent claims 9 and 42 recite “wherein the filtered set of measured points includes a subset of the set of measured points that includes only measured points measured at a selected phase of anatomical movement”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 10
Dependent claim 10 recites “wherein the selected phase of anatomical movement is an expiration phase of a breathing cycle of a lung”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 39
Dependent claim 39 recites “wherein the set of measured points are collected from a sensor of the medical instrument”. Under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Claim 44
Dependent claim 44 recites “map each measured point of the set of measured points to a second model path of the plurality of model paths”. This limitation doesn’t distinguish itself from being able to be conducted in the human mind or with pencil and paper. Therefore, under the broadest reasonable interpretation, this limitation is a process step that covers performance in the human mind or with the aid of pencil and paper. As such, this limitation falls within the “Mental Process” grouping of abstract ideas.
Dependent claim 44 recites “determine a first cumulative offset value based on a distance between each measured point of the set of measured points and a respective model point of the plurality of model points associated with the first model path”. This limitation is calculating a first cumulative offset value based on the distance between each measured point of the set of measured points and a respective model point of the plurality of model points. Therefore, under MPEP 2106.04(a)(2), this limitation covers a mathematical concept, which falls in the “Mathematical Concept” grouping of abstract ideas.
Dependent claim 44 recites “determine a second cumulative offset value based on a distance between each measured point of the set of measured points and a respective model point of the plurality of model points associated with the second model path”. This limitation is calculating a second cumulative offset value based on the distance between each measured point of the set of measured points and a respective model point of the plurality of model points. Therefore, under MPEP 2106.04(a)(2), this limitation covers a mathematical concept, which falls in the “Mathematical Concept” grouping of abstract ideas.
Dependent claim 44 recites “and based on the first cumulative offset value being less than the second cumulative offset value, select the first model path for the registration.”. This limitation amounts to mere instructions to apply an exception, where it recites an idea of a solution. The claim limitation discloses no indication of the first and second cumulative offset values are. See MPEP 2106.05 (f) (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".
Claims 1, 3-10, 36 and 38-44 are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Allowable Subject Matter
17. The following is a statement of reasons for the indication of allowable subject matter: While Donhowe et al. (WO 2017/030915) teaches a method of registering sets of anatomical data for use during a surgical procedure, where the method includes segmenting a set of first modality image data representing a model of one or more passageways within a patient and generating a first set of points based on the segmented set of first modality image data representing the model of the one or more passageways, Barbagli et al. (WO 2018/006046) teaches reacting to failures in medical robotic systems, none of these reference taken either alone or in combination with the prior art of record disclose, receive a set of measured points of a first portion of the anatomic structure of the patient from the tracking system while the medical instrument is disposed within the anatomic structure of the patient, wherein at least a portion of the measured points are collected along a length of one or more passageways of the anatomic structure between branch points of adjacent passageways, wherein each measured point of the set of measured points is associated with a first motion cycle of the medical instrument, wherein the first motion cycle includes a single insertion of the medical instrument and a single retraction of the medical instrument; map each measured point of the set of measured points to a first model path of the plurality of model paths; register the set of measured points with a first portion of the plurality of model points, the first portion of the plurality of model points associated with the first model path of the plurality of model paths:
Claim 1 “receive a set of measured points of a first portion of the anatomic structure of the patient from the tracking system while the medical instrument is disposed within the anatomic structure of the patient, wherein at least a portion of the measured points are collected along a length of one or more passageways of the anatomic structure between branch points of adjacent passageways, wherein each measured point of the set of measured points is associated with a first motion cycle of the medical instrument, wherein the first motion cycle includes a single insertion of the medical instrument and a single retraction of the medical instrument;
map each measured point of the set of measured points to a first model path of the plurality of model paths;
register the set of measured points with a first portion of the plurality of model points, the first portion of the plurality of model points associated with the first model path of the plurality of model paths”
Claim 36 “collecting, by the control system, a set of measured points of a first portion of the anatomic structure of the patient from a medical instrument while the medical instrument is disposed within the anatomic structure of the patient, at least a portion of the measured points being collected along a length of one or more passageways of the anatomic structure between branch points of adjacent passageways, wherein each measured point of the set of measured points is associated with a first motion cycle of the medical instrument, wherein the first motion cycle includes a single insertion of the medical instrument and a single retraction of the medical instrument;
mapping, by the control system, each measured point of the set of measured points to a first model path of the plurality of model paths;
registering, by the control system, the set of measured points with a first portion of the plurality of model points, the first portion of the plurality of model points associated with the first model path of the plurality of model paths”
Claim 43 “collecting a set of measured points of a first portion of the anatomic structure of the patient from a medical instrument while the medical instrument is disposed within the anatomic structure of the patient, wherein each measured point of the set of measured points is collected along a length of the medical instrument and is associated with a first motion cycle of the medical instrument, wherein the first motion cycle includes a single insertion of the medical instrument a single retraction of the medical instrument;
mapping each measured point of the set of measured points to a first model path of the plurality of model paths;
registering the set of measured points with a first portion of the plurality of model points, the first portion of the plurality of model points associated with the first model path of the plurality of model paths”, in combination with the remaining elements and features of the claimed invention.
It is for these reasons that the applicant’s invention defines over the prior art of record.
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 BERNARD E COTHRAN whose telephone number is (571)270-5594. The examiner can normally be reached 9AM -5:30PM EST M-F.
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/BERNARD E COTHRAN/Examiner, Art Unit 2188
/RYAN F PITARO/Supervisory Patent Examiner, Art Unit 2188
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