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 .
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 Final Rejection in response to the
Amendment to the Claims and Remarks filed on 05/20/2026.
Claims 1 and 14 are amended claims.
Claims 2, 4, 6-12, and 19 are previously presented.
Claims 5, 13, 15-18, and 20-25 are original claims.
Claim 3 has 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 to 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; render a respective one or more of the medical-tool-settings preset recommendations, receive a user selection of one of the one or more 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.
Independent claim 14 recites a method comprising receiving one or more medical-tool-settings preset recommendations responsively to the shared usage data of the medical-tool-settings presets, including medical tool settings presets of the treatment apparatus and of another treatment apparatus; rendering a respective one of the medical-tool-settings preset recommendations; controlling the one of the respective treatment apparatus[[es]] in accordance with the rendered medical-tool-settings preset recommendations; receiving a user selection of one of the one or more medical-tool-settings preset recommendations as presented on the display; wherein the medical-tool-settings preset recommendations are based on inferred medical-tool-settings preset usage values in a data set comprising values indicating medical-tool-settings preset usage according to different combinations of users and the medical-tool-settings presets for different combinations of 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)].
Claims 1 and 14 recite a treatment apparatus(es), network, console, display, a central processing server. Claim 14 recites a processing server and another 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; control the phacoemulsification probe responsively to the respective selected medical-tool-settings preset; and control the phacoemulsification probe according to the selected medical-tool-settings preset recommendation. Claim 14 recites controlling the treatment apparatus in accordance with the rendered medical-tool-settings preset recommendations; controlling the phacoemulsification probe according to the selected medical-tool-settings preset recommendation. These limitations do not provide any indication that the phacoemulsification probe or treatment apparatus are 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 the treatment apparatuses are configured to share, over the network, usage data of medical-tool-settings presets used by the treatment apparatuses. Claim 14 recites transmitting shared usage data of medical-tool-settings presets to a central processing server, via a network. 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.”).
The above claims, as a whole, are therefore directed to an abstract idea.
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 treatment apparatus(es); a phacoemulsification probe operated according to a respective selected medical-tool- settings preset; a console coupled with the phacoemulsification probe; control the phacoemulsification probe responsively to the respective selected medical-tool-settings preset; a display coupled with the console; treatment apparatuses are configured to share, over the network, usage data of medical-tool-settings presets used by the treatment apparatuses; a central processing server; and control the phacoemulsification probe responsively to the respective selected medical-tool-settings preset; and control the phacoemulsification probe according to the selected medical-tool-settings preset recommendation. Claim 14 recites a treatment apparatus; a console; a phacoemulsification probe; a display; transmitting usage data of medical-tool-settings presets to a central processing server, via a network; a processing server; another treatment apparatus; and controlling the phacoemulsification probe according to the selected medical-tool-settings preset recommendation.
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 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 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 where into 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.
Claim(s) 2, 6, 15, and 18 also includes the additional element of “the central processing server” and does not provide a practical application or significantly more for the same reasons.
Claim(s) 5 and 17 also includes the additional element of “a console” and does not provide a practical application or significantly more for the same reasons.
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).
Response to Arguments
Applicant's arguments, see pgs. 8-10 “Claim Rejections – 35 U.S.C. 101” filed 05/20/2026 have been fully considered but they are not persuasive.
Applicant argues that the claim 1 is not directed to an abstract idea. The claim recites a specific therapeutic medical system that includes physical treatment devices (a phacoemulsification probe, a console, a display). Moreover, while the claim includes some elements involving collecting and processing of data, the claim does not stop there, but rather, further includes actively controlling the phacoemulsification probe according to the selected medical-tool-settings- preset recommendation. Examiner respectfully disagrees. Claim 1 recites 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; render a respective one or more of the medical-tool-settings preset recommendations, receive a user selection of one of the one or more 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 – these behaviors amount to a series of rules or instructions. The abstract grouping 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) (see MPEP § 2106.04(a)(2)(II)(C)).
The console and display are additional elements that 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.
The phacoemulsification probe and controlling the phacoemulsification probe according to the selected medical-tool-settings preset recommendation 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)).
Applicant argues that claim 1 integrates any alleged abstract idea into a practical application because the claims is directed to the practical application of control of a phacoemulsification probe and improves existing medical device operation by collecting usage patterns, rendering suggested settings to a display, receiving user input, and ultimately controlling the probe based on the user’s selection of settings. Examiner respectfully disagrees. The present claims do not provide a particular technical solution to a technical problem and therefore, does not integrate the abstract idea into a practical application. The steps of collecting usage patterns, rendering suggested settings, and receiving user input is part of the abstract idea. The step of controlling the probe based on the user’s selection of settings does not amount to a practical application when the phacoemulsification probe is operating within its intended 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)).
Applicant further argues that the claims, as a whole, integrates the collection and analysis of data into an improved system whereby the user is guided by suggested settings based on previously collected usage patterns and has the option to selection from those settings. Furthermore, Applicant recites the reasoning in Thales Visionix Inc v. United States to be relevant to the 35 U.S.C. 101 rejections. The claims integrate data analysis into a technological process that yields tangible improvements in ophthalmic procedures. Examiner respectfully disagrees. An improvement to the abstract idea of providing an improved system by guiding the user by suggested settings based on previously collected usage patterns and has the option to select from those settings does not amount to an improvement to technology or a technical field (see MPEP § 2106.05(a)(III) stating “it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG,921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.”). There is no indication in the instant disclosure that the involvement of a computer assists in improving the technology for the outlined problem statement. Here, the improvement is to medical response efficiency. The instant application and claim language fail to detail how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient.
The reasoning applied in Thales Visionix Inc v. United States is not applicable to the claimed invention because the court found that the claims provided a system and method that "eliminate[d] many ‘complications’ inherent in previous solutions for determining position and orientation of an object on a moving platform." In other words, the claim recited a technological solution to a technological problem (see MPEP 2105.05(f)). The claimed invention does not explicitly recite what the technological problem the controlling of the phacoemulsification probe attempts to solve and merely presenting known medical tool settings presets are not sufficient to amount to an improvement to a computer and/ or to the technical field.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter H Choi can be reached at 469-295-9171. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P.K.E./Examiner, Art Unit 3681
/PETER H CHOI/Supervisory Patent Examiner, Art Unit 3681
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