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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/24/2025 has been entered.
Status of Amendments
Claims 1-2 and 4-25 are currently pending in this case and have been examined and addressed below. This communication is a Non-Final Rejection in response to the
Amendment to the Claims and Remarks filed on 11/24/2025.
Claims 1 and 14 are amended claims.
Claims 5, 13, 15-18, and 20-25 are original claims.
Claims 2, 4, 6-12, and 19 are previously presented.
Claim 3 have been cancelled and will not be considered at this time.
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 1-2 and 4-25 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e. an abstract idea) without significantly more.
Step 1 – Statutory Categories of Invention:
Claims 1 and 14 are drawn to a system and a method, which are statutory categories of invention.
Step 2A – Judicial Exception Analysis, Prong 1:
Independent claim 1 recites a system comprising operated according to a respective selected medical-tool- settings preset; to control responsively to the respective selected medical-tool-settings preset; receive the shared usage data of the medical-tool-settings presets; and find medical-tool-settings preset recommendations responsively to the shared usage data of the medical-tool-settings presets; and wherein render a respective one of the medical-tool-settings preset recommendations; maintain a data set comprising values indicating medical-tool-settings preset usage according to different combinations of users and the medical-tool-settings presets; and infer medical-tool-settings preset usage values in the data set for different combinations of the users and the medical-tool-settings presets for which no medical-tool-settings preset usage currently exists; wherein each of the values indicating medical-tool-settings preset usage comprises a number of times a respective user has used a particular medical-tool-setting preset; and wherein each of the inferred medical-tool-settings preset usage values comprises an inferred number of times a respective user is inferred to have used a particular medical-tool-setting preset.
Claim 14 recites a method comprising receiving shared usage data of medical-tool-settings presets; finding medical-tool-settings preset recommendations responsively to the shared usage data of the medical-tool-settings presets; rendering a respective one of the medical-tool-settings preset recommendations; controlling in accordance with the rendered medical-tool-settings preset recommendations; maintaining a data set comprising values indicating medical-tool-settings preset usage according to different combinations of users and the medical-tool-settings presets; and inferring medical-tool-settings preset usage values in the data set for different combinations of the users and the medical-tool-settings presets for which no medical-tool-settings preset usage currently exists; wherein each of the values indicating medical-tool-settings preset usage comprises a number of times a respective user has used a particular medical-tool-setting preset; and wherein each of the inferred medical-tool-settings preset usage values comprises an inferred number of times a respective user is inferred to have used a particular medical-tool-setting preset.
These steps amount to certain methods of organizing human activity which includes functions relating to managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (MPEP § 2106.04(a)(2)(II)(C) citing the abstract idea grouping for methods of organizing human activity for managing personal behavior or relationships or interactions between people – also note MPEP § 2106.04(a)(2)(II) stating certain activity between a person and a computer may fall within the “certain methods of organizing human activity” grouping).
Step 2A – Judicial Exception Analysis, Prong 2:
This judicial exception is not integrated into a practical application because the additional elements within the claims only amount to instructions to implement the judicial exception using a computer [MPEP 2106.05(f)].
Claim 1 recites a network, a console, a central processing server connected to the network, the console of a respective one of the treatment apparatuses, a display of the treatment apparatus. Claim 1 and 14 recite treatment apparatuses disposed in respective locations interconnected via a network and display of the treatment apparatus.
These elements are recited at a high-level of generality such that it amounts to mere instructions to apply the exception because this is an example of applying the
abstract idea by use of general-purpose computer which does not integrate the abstract
idea into a practical application.
Claim 1 recites a phacoemulsification probe operated according to a respective selected medical-tool- settings preset. Claim 14 recites wherein the treatment apparatuses are phacoemulsification probes. These limitations do not provide any indication that the phacoemulsification probe is being utilized beyond its ordinary capacity. The Specification recites “the surgeon then uses a phacoemulsification probe, which has an ultrasonic handpiece with a titanium or steel needle. The tip of the needle vibrates at ultrasonic frequency to sculpt and emulsify the cataract while a pump aspirates lens particles and fluid from the eye through the tip (Pg. 1 Lines 18-19)” and “The medical tool may include any suitable medical tool, for example, a phacoemulsification probe (e.g., the too l55 of Fig. 1) or a catheter for performing tissue ablation or a diathermy tool to perform coagulation. The medical tool 206 is configured to be inserted into a body part (e.g., the capsular bag 89 of Fig. 1 or a chamber of the heart) and operated according to a respective selected medical-tool- settings preset (Pg. 12 Lines 10-15)”. Therefore, this step is directed to invoking a device merely as a tool to perform an existing process and does not integrate a judicial exception into a practical application or provide significantly more (MPEP 2106.05(f)(2)).
Claim 1 recites wherein the treatment apparatuses are configured to share, over the network, usage data of medical-tool-settings presets used by the treatment apparatuses. The limitation is only recited as a tool to perform an existing process and only amounts to an instruction to implement the abstract idea using a computer (MPEP § 2106.05(f)(2) see case requiring the use of software to tailor information and provide it to the user on a generic computer within the “Other examples.. v.”).
Step 2B – Additional Elements that Amount to Significantly More:
The present claims do not include additional elements that are sufficient to amount to more than the abstract idea because the additional elements or combination of elements amount to no more than a recitation of instructions to implement the abstract idea on a computer.
Claim 1 recites a network, a console, a central processing server connected to the network, the console of a respective one of the treatment apparatuses, display of the treatment apparatus, a phacoemulsification probe operated according to a respective selected medical-tool- settings preset, and the treatment apparatuses are configured to share, over the network, usage data of medical-tool-settings presets used by the treatment apparatuses. Claim 1 and 14 recite treatment apparatuses disposed in respective locations interconnected via a network and display of the treatment apparatus.
These elements are recited at a high-level of generality such that it amounts to mere instructions to apply the exception because this is an example of applying the
abstract idea by use of general-purpose computer which does not integrate the abstract
idea into a practical application.
For the reasons stated, these claims fail to amount to significantly more than the abstract idea and are consequently rejected under 35 U.S.C. § 101.
Analysis of Dependent Claims
Dependent claim 2 and 15 recite wherein the central processing server is configured to find respective ones of the medical-tool-settings preset recommendations for respective stages of a medical procedure.
Dependent claim 4 recites wherein the medical-tool-settings- presets include any two or more of the following: a respective vacuum setting; a respective aspiration rate setting; a respective pitch setting; a respective vibration mode setting; and a respective power setting.
Dependent claim 5 and 17 recite wherein the console is configured to render, to the display of the respective treatment apparatus, the respective medical-tool-settings preset recommendation with at least one different medical-tool-settings preset previously used by a user of the respective treatment apparatus.
Dependent claim 6 and 18 recite wherein the central processing server is configured to find the medical-tool-settings preset recommendations responsively to a similarity between users of the treatment apparatuses and/or usage of the medical-tool-settings presets.
Dependent claim 7 recites to find the medical-tool-settings preset recommendations responsively to ones of the inferred values.
Dependent claims 8 and 20 recite to find the respective medical-tool-settings preset recommendation for a respective one of the users responsively to a highest one of the inferred values for the respective user.
Dependent claims 9 and 21 recite upon use of a respective one of the medical-tool-settings preset recommendations, increase a respective one of the inferred values; and upon use of another medical-tool-settings preset instead of a rendered one of the medical- tool-settings preset recommendations, reduce a respective one of the inferred values in the data set.
Dependent claims 10 and 22 recite infer new medical-tool-settings preset usage values in the data set for different combinations of the users and the medical-tool-settings presets for which no medical-tool-settings preset usage currently exists and previously inferred values were not adjusted; and find new medical-tool-settings preset recommendations responsively to ones of the new inferred values.
Dependent claims 19 recites wherein the finding includes finding the medical-tool-settings preset recommendations responsively to ones of the inferred values.
Dependent claim 23 recites performing matrix factorization of a matrix including the data set comprising the values indicating the medical-tool settings preset usage according to the different combinations of the users and the medical-tool- settings presets, wherein the inferring includes inferring the medical-tool-settings preset usage values in the data set for different combinations of the users and the medical-tool-settings presets for which no medical-tool-settings preset usage currently exists responsively to the matrix factorization.
Each of these steps of the preceding dependent 2, 4-10, 15, and 17-22 only serve to further limit or specify the features of independent claims 1 or 14 accordingly, and hence are nonetheless directed towards fundamentally the same abstract idea as the independent claim and utilize the additional elements analyzed below in the expected manner.
Dependent claim 11 recites perform matrix factorization of a matrix including the data set comprising the values indicating the medical-tool-settings preset usage according to the different combinations of the users and the medical-tool-settings presets; and infer the medical-tool-settings preset usage values in the data set for different combinations of the users and the medical-tool-settings presets for which no medical-tool-settings preset usage currently exists responsively to the matrix factorization. This limitation amounts to mere instructions to apply the exception because a mathematical algorithm (i.e. matrix factorization) applied on a general-purpose computer has been found by the courts to be mere instructions to apply an exception as in MPEP 2106.05(f)(2).
Dependent claims 12 and 24 recite input the data set into an artificial neural network (ANN); and iteratively adjust parameters of the ANN until an output of the ANN includes the input, the output including the inferred values. The artificial neural network (ANN) is recited as a tool to apply data to an algorithm and report the results (MPEP § 2106.05(f)(2) see case involving a commonplace business method or mathematical algorithm being applied on a general purpose computer within the “Other examples.. i.”) amounting to instruction to implement the abstract idea using a general purpose computer. Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 1357 (2014).
Dependent claims 13 and 25 recite wherein the ANN includes an autoencoder. The artificial neural network (ANN) is recited as a tool to apply data to an algorithm and report the results (MPEP § 2106.05(f)(2) see case involving a commonplace business method or mathematical algorithm being applied on a general purpose computer within the “Other examples.. i.”) amounting to instruction to implement the abstract idea using a general purpose computer. Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 1357 (2014).
Dependent claim 23 recites performing matrix factorization of a matrix including the data set comprising the values indicating the medical-tool settings preset usage according to the different combinations of the users and the medical-tool- settings presets, wherein the inferring includes inferring the medical-tool-settings preset usage values in the data set for different combinations of the users and the medical-tool-settings presets for which no medical-tool-settings preset usage currently exists responsively to the matrix factorization. This limitation amounts to mere instructions to apply the exception because a mathematical algorithm (i.e. matrix factorization) applied on a general-purpose computer has been found by the courts to be mere instructions to apply an exception as in MPEP 2106.05(f)(2).
Subject Matter Free of the Prior Art
The following is an examiner’s statement of subject matter free of the prior art:
The ordered combination of the limitations in independent claims 1 and 14
: “inferring medical-tool-settings preset usage values in the data set for different combinations of the users and the medical-tool-settings presets for which no medical-tool-settings preset usage currently exists; wherein each of the values indicating medical-tools-settings preset usage comprises a number of times a respective user has used a particular medical-tool-setting present; and wherein each of the inferred medical-tool-settings preset usage values comprises an inferred number of times a respective user is inferred to have used a particular medical-tool-setting preset” is free of the prior art.
The most remarkable prior art of record as follows:
Morgan (US 20210249125 A1) teaching on collecting medical resource usage data and generating a recommendation about the medical resource usage (Para. 0005-0006 and Para. 0291).
Claus (US 20100287127 A1) teaching a self-learning engine that monitors performance during surgery, analyzes the performance, and makes recommendations to the user for changes to medical instrument settings (Para. 0014 and 0043)
Hanajima (US 20200013033 A1) teaching on reading an identification label of a medical instrument and counting the number of times of use of a medical instrument (Para. 0008).
Kasparick et al., "From IEEE 11073 SDC Device Specializations to Assistive Systems: Rule-based Data Analysis for Minimal Invasive Surgery,", which discloses a concept for situation-aware parameter recommendations and automatic (re-)configuration (Pg. 3-4 III. Concept).
While Morgan teaches a system that utilizes medical resource usage data to generate a recommendation for medical resource settings, Claus teaches a self-learning engine that makes recommendations to user for changes to medical instrument settings, and Hanajima teaches counting the number of times a medical instrument is used, neither teaches, individually or in combination, wherein each of the inferred medical-tool-settings preset usage values comprises an inferred number of times a respective user is inferred to have used a particular medical-tool-setting preset. Therefore, Claims 1-2 and 4-25 are free of the prior art.
Response to Arguments
Applicant’s arguments, see pgs. 8-10 “Claim Rejections – 35 U.S.C. 103”, filed 11/24/2025, with respect to Claims 1-2 and 4-25 have been fully considered and are persuasive. The rejection of Claims 1-2 and 4-25 has been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Patricia K Edouard whose telephone number is (571)272-6084. The examiner can normally be reached Monday - Friday 7:30 AM - 5:00 PM.
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/P.K.E./ Examiner, Art Unit 3681
/PETER H CHOI/ Supervisory Patent Examiner, Art Unit 3681