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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of the Claims
The current office action is made responsive to claims filed 09/09/2025.
Acknowledgement is made to the amendment of claims 1-2, 5, 14-16, and 19-20.
Acknowledgement is made to the cancellation of claims 4, 6-7, and 10.
Any claims listed above as cancelled have sufficiently overcome any rejections set forth in any of the prior office actions.
Claims 1-3, 5, 8-9, and 11-20 are pending. A complete action on the merits appears below.
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 1-3, 5, 8-9, and 11-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. A streamlined analysis in accordance with MPEP 2106.04 of said claim set follows.
Analysis of claims 1-20:
Step 1 per MPEP 2106.03
Regarding claim 1, the claim recites a method. Thus, the claim is directed to a process, which is one of the statutory categories of invention.
Regarding claim 15, the claim recites an apparatus. Thus, the claim is directed to a machine, which is one of the statutory categories of invention.
Regarding claim 19, the claim recites a unit. Thus the claim is directed to a machine, which is one of the statutory categories of invention.
Step 2A, Prong 1 per MPEP 2106.04(a)
Claim 1 contains the following limitation:
“receiving by a digital processor a first electrode configuration of the monopolar electrosurgery tool which includes a location of an active electrode of the monopolar electrosurgery tool at a surgical site on the patient's body and a first location of a return electrode of the monopolar electrosurgery tool elsewhere on the patient's body;
obtaining by the digital processor information on a location of a part of the patient's body that is in contact with the operating metal table;
computing by the digital processor a first plurality of potential current paths between the location of the active electrode and the first location of the return electrode and between the location of the active electrode and the location of the part of the patient's body that is in contact with the metal table, based at least on the location of the active electrode, the first location of the return electrode, and the information on the location of the part of the patient's body that is in contact with the metal table, wherein the digital processor computes the first plurality of potential current paths by computing a respective resistance value for each of the first plurality of potential current paths while the patient is alive and is still lying on the operating metal;
determining whether a plurality of current paths in the first plurality of potential current paths that have the lowest resistance values flow through the part of the patient's body that is in contact with the metal table and on that basis informing a surgical staff for the surgical procedure whether there is a potential electrical burn risk associated with the first electrode configuration”
These limitations describe mental processes which are discussed as being concepts performed in the human mind (these processes include performing an observation, evaluation, judgement, opinion, etc. as is discussed in MPEP 2106.04(a)(2)(III)). Accordingly, claim 1 recites an abstract idea as these limitations describe a mental process as a person having ordinary skill in the art is capable of understanding data relevant to ablations procedures and their planning/review and making a mental assessment thereafter (or using pen and paper). Further, these limitations describe concepts in the form of mathematical calculations, as discussed in MPEP 2106.04(a)(1).
Claim 15 contains the following limitation:
“receive by the one or more processors a first electrode configuration of the monopolar electrosurgery tool which includes a location of an active electrode of the monopolar electrosurgery tool at a surgical site on the patient's body and a first location of a return electrode of the monopolar electrosurgery tool on the patient's body;
obtain by the one or more processors information of a metal implant inside the patient's body;
construct, by the one or more processors, a tissue structure of the patient's body between the active electrode and the return electrode by i) receiving a sequence of endoscope video images which captures anatomical structures inside the patient's body between the active electrode and the return electrode and ii) segmenting the captured anatomical structures in the sequence of endoscope video images to identify a set of tissues between the active electrode and the return electrode, and then compute by the one or more processors a first plurality of potential current paths between the location of the active electrode and the first location of the return electrode based at least on the location of the active electrode, the first location of the return electrode, the identified set of tissues between the active electrode and the return electrode, and the information of the metal implant by computing a respective resistance value for each of the first plurality of potential current paths;
determine whether a plurality of current paths in the first plurality of potential current paths that have the lowest resistance values flow through the metal implant and on that basis inform a surgical staff for the surgical procedure whether there is a potential electrical burn risk associated with the first electrode configuration”
These limitations describe mental processes which are discussed as being concepts performed in the human mind (including performing an observation, evaluation, judgement, opinion, etc. as is discussed in MPEP 2106.04(a)(2)(III)). Accordingly, claim 11 recites an abstract idea as these limitations describe a mental process as a person having ordinary skill in the art is capable of understanding data relevant to ablations procedures and their planning/review and making a mental assessment thereafter (or using pen and paper). Further, these limitations describe concepts in the form of mathematical calculations, as discussed in MPEP 2106.04(a)(1).
Claim 19 contains the following limitation:
“receive by the one or more processors a first electrode configuration of the monopolar electrosurgery tool which includes a location of the active electrode at a surgical site on a patient's body and a first location of the return electrode elsewhere on the patient's body;
obtain by the one or more processors information on a location of a part of the patient's body that is in contact with the metal table and information of a metal implant inside the patient's body;
construct a comprehensive tissue structure of the patient's body between the active electrode and the return electrode or between the active electrode and the location of the patient's body that is in contact with the metal table, by receiving from the endoscope a sequence of endoscope video images which capture anatomical structures inside the patient's body between the active electrode and the return electrode or between the active electrode and the location of the patient's body that is in contact with the metal table,
segmenting the captured anatomical structures to identify a set of tissues between the active electrode and the return electrode or between the active electrode and the location of the patient's body that is contact with the metal table, and
augmenting each tissue in the identified set of tissues with a corresponding dielectric constant value;
apply a current path model to i) the identified set of tissues, ii) the corresponding dielectric constant values, iii) the location of the active electrode, iv) the first location of the return electrode, and v) the information of the metal implant or the location of the part of the patient's body that is in contact with the metal table, to compute by the one or more processors a first plurality of potential current paths between the location of the active electrode and the first location of the return electrode or between the location of the active electrode and the location of the part of the patient's body that is in contact with the metal table, wherein the one or more processors compute the first plurality of potential current paths by computing a probability value and a resistance value for each of the first plurality of potential current paths;
determine whether a plurality of current paths in the first plurality of potential current paths flow through the metal implant and have the highest probability values and on that basis inform a surgical staff for the surgical procedure whether there is a potential electrical burn risk associated with the first electrode configuration”
These limitations describe mental processes which are discussed as being concepts performed in the human mind (including performing an observation, evaluation, judgement, opinion, etc. as is discussed in MPEP 2106.04(a)(2)(III)). Accordingly, claim 11 recites an abstract idea as these limitations describe a mental process as a person having ordinary skill in the art is capable of understanding data relevant to ablations procedures and their planning/review and making a mental assessment thereafter (or using pen and paper). Further, these limitations describe concepts in the form of mathematical calculations, as discussed in MPEP 2106.04(a)(1).
Dependent claims 2-3, 5, 8-9, and 11-14, 16-18, and 20 also fail to add to the abstract independent claims as they merely further limit the abstract idea or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely identical or token additions to the claims that do not alter or affect how the process steps are performed.
Step 2A, Prong 2 per MEPE 2106.04(d)
The above-identified abstract idea is not integrated into a practical application under MPEP 2106.04(d) because the additional elements, either alone or in combination generally link the use of the above-identified abstract idea to a particular technological environment or field of use according to MPEP 2106.05(h). More specifically, the additional elements of: a processor and a memory are generally recited computer elements which do not improve the functioning of a computer or any other technology or technical field according to MPEP 2106.04(d)(1) and 2106.05(a). Nor do these above-identified additional elements serve to apply the above identified abstract idea with, or by use of, a particular machine according to MPEP 2106.05(b), effect a transformation according to MPEP 2106.05(c), provide a particular treatment or prophylaxis according to MPEP 2106.04(d)(2) or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception according to MPEP 2106.04(d)(2) and 2106.05(e).
Moreover, the above-identified abstract idea is not integrated into a practical application in accordance with MPEP 2106.04(d) because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process and mathematical calculations) using rules (e.g., computer instructions) executed by a computer (e.g., a processor and a memory). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer according to MPEP 2106.05(f).
Accordingly, independent claims 1, 15, and 19 (and their respective dependent claims) are each directed to an abstract idea according to MPEP 2106.04(d).
Step 2B per MPEP 2106.05
Claims 1-3, 5, 8-9, and 11-20 do not include additional elements that are sufficient to amount to significantly more than the abstract idea in accordance with MPEP 2106.05.
These claims require the additional elements of: a processor and a memory.
The above-identified additional elements are generically claimed computer components which enable the above-identified abstract ideas to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, MPEP 2106.05(d)(II) along with Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Furthermore, these additional limitations amount to well-known conventional techniques for obtaining data (e.g. receiving an electrode configuration) and generically recited step of outputting (e.g. informing a surgical staff), which does not add significantly more to the judicial exception. Moreover, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity (e.g. receiving the configuration and informing the staff) according to MPEP 2106.05(g). As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application as required by MPEP 2106.05.
Additionally, the structural limitations claimed of: an electrosurgical generator, a monopolar electrosurgery tool which includes an active electrode and a return electrode and an endoscope are considered to be routine and conventional in the art as broadly as is currently is claimed. Support for this can be found in West Jr. (US 6149646 A) as provided under the Description of the Prior Art section, West Jr. teaches the common use of monopolar probes with active and return electrodes which are provided with electrosurgical energy by a generator during the use of an endoscope (Col. 1, Lines 10-40). Additional support can be found for this in Logan (US 20030225404 A1) which teaches the conventional use of an electrosurgical generator to pass monopolar energy from an active endoscopic electrode to a return electrode ([0005], [0008], [0027]- [0028]).
Therefore, claims 1-20 are not patent eligible under 35 U.S.C. 101.
Response to Arguments
Applicant’s arguments are currently unpersuasive, however in response to the newly provided claim amendments a new ground of rejection has been provided as seen above.
In response to Applicant's arguments provided in point 4 of the Affidavit filed 09/09/2025, Applicant has provided an argument relevant to the combination of both the newly provided amendment and a supposed time-based limitation in which the independent claims must be performed as a point of argument as to why a person would be incapable of performing this processor based action and would therefore overcome the current 35 U.S.C. 101 rejection. However, the Examiner is bringing attention to the fact that this time based limitation which is the argued reason as to why a person would be incapable is not currently recited in the claim and is therefore an argument to a limitation not currently claimed. Therefore, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the process of determining the calculated as occurring within 5 minutes) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to Applicant's arguments provided in point 5 of the Affidavit filed 09/09/2025, the Applicant has argued that this high level of variation of electrical resistance would make a person incapable of performing this task performed by the processor, however, it is to be understood that without claimed limitations which are relevant to the degree of complexity at which a person would be incapable of performing this mental process, this is not currently persuasive. For example, the claim merely requires the calculation of two paths based on the language of "plurality" as is positively recited in the claim language, and there is currently no recitation of, for example, taking measurements from a sensor of the device, which a person is incapable of doing, performing calculations to a degree of accuracy which no person would be capable of doing, performing a number of calculations which no person would be capable of doing, and/or performing these calculations in a timeframe in which no person would be capable. Therefore, as broadly as is currently as is claimed, this invention is currently rejected as being directed to the non-statutory subject matter of a mental process in which a person is capable of doing in a mental assessment or using pen and paper.
In response to Applicant's arguments provided in point 6 of the Affidavit filed 09/09/2025, the Applicant has stated that "no person can in their mind or using paper and pencil" perform the action of the claim language, however, the mere statement alone of the argument that a person is incapable of performing this task is not in and of itself a convincing argument as to why a person would be incapable of performing this action.
Further, in response to Applicant's argument relevant to the newly incorporated claim limitation of the patient being alive, this argument relevant to this limitation is not currently persuasive. Specifically the limitation of the patient being alive during the entire procedure does not necessarily preclude a person from being able to perform this task, as there have been surgeries which have lasted for example, several hours to even several days, and therefore, a person would be capable of performing this task within this condition, as broadly as is claimed. This is even considering a situation in which this conditional limitation were to be interpretated as providing an inherent time-based limitation (which is not the currently applied interpretation for rejection based purposes as discussed above), a person would still be capable of performing the task of calculating at least two current paths, without any required accuracy or specificity, as broadly as is currently required by the claim language, within the timeframe of several hours to several days.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDSAY REGAN LANCASTER whose telephone number is (571)272-7259. The examiner can normally be reached Monday-Thursday 8-4 EST.
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/LINDA C DVORAK/Primary Examiner, Art Unit 3794
/L.R.L./Examiner, Art Unit 3794