DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The amendment filed 02/23/2026 has been received and considered. Claim 65 is cancelled. Claims 40, 43-45, 47-49, 51-53, 56-58, 60-62, 64, 66-68, 71, and 72 are pending. Claims 51, 52, 64, 66, and 67 are withdrawn from further consideration. Claims 40, 43-45, 47-49, 53, 56-58, 60-62, 68, 71, and 72 are presented for examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/23/2026 has been entered.
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 40, 43-45, 47-49, 53, 56-58, 60-62, 68, 71, and 72 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claim 40 Step 1: a system (system = 2019 PEG Step 1 = yes).
Independent claim 40 Step 2A, Prong One: claim recites:
determine a shape of a backside surface of the 3D baseplate model, the backside surface comprising a surface of the 3D baseplate model that faces away from an articular surface of the patient matched implant; determine a volume between the shape of the backside surface of the 3D baseplate model and a glenoid surface of the scapula defined by the 3D model of the scapula
Claim 40 is substantially drawn to mental concepts: observation, evaluation, judgment, opinion, but for the recitation of generic computer components. Information and/or data also fall within the realm of abstract ideas because information and data are intangible. See Electric Power Group1 (Electric Power hereinafter): “Information… is an intangible”. The limitations, as drafted and under their broadest reasonable interpretation, cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting “processing circuitry configured to…” nothing precludes the claimed limitations from practically being performed in the mind.
As to the determining limitations, under their broadest reasonable interpretation, determining is a mental concept performed in the human mind or by a human using a pen and paper. See for example in the Specification (underline emphasis added):
"[0094]… surgical lifecycle 300 may include a preoperative phase 302 (FIG. 3). One or more users may use orthopedic surgical system 100 in preoperative phase 302. For instance, orthopedic surgical system 100 may include virtual planning system 102 to help the one or more users generate a virtual surgical plan that may be customized to an anatomy of interest of a particular patient…
[0096]… if the area of interest is the user's shoulder, a surgeon may determine what is wrong with the patient's shoulder based on the scan of the patient's shoulder and provide a shoulder classification indicating the diagnosis, e.g., such as primary glenoid humeral osteoarthritis (PGHOA), rotator cuff tear arthropathy (RCTA) instability, massive rotator cuff tear (MRCT), rheumatoid arthritis, post-traumatic arthritis, and osteoarthritis…
[0098] The surgical plan may then be reviewed (708). For instance, a consulting surgeon may review the surgical plan before the surgical plan is executed… a surgeon may modify the surgical plan using an MR system by interacting with a UI and displayed elements, e.g., to select a different procedure, change the sizing, shape or positioning of implants, or change the angle, depth or amount of cutting or reaming of the bone surface to accommodate an implant".
If a claim limitation, under its broadest reasonable interpretation, covers mental concepts, then it falls within groupings of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes).
Independent Claim 40 Step 2A Prong two: As to the additional elements, a system comprising a memory configured to store a 3-dimensional (3D) model of a scapula of a patient and processing circuitry, they are interpreted as drawn to a generic computer.
As to the limitations "for designing a patient matched implant for a shoulder joint repair surgical procedure… generate, based on the determined volume, a 3D patient matched augment model; generate, based on the 3D patient matched augment model and the 3D pre-defined porous model, a 3D patient matched porous model, wherein to generate the 3D patient matched porous model, the processing circuitry is configured to add the 3D patient matched augment model to the 3D pre-defined porous model… generate, based on the 3D patient matched porous model and the 3D pre-defined solid model, a 3D mixed patient matched implant model corresponding to the patient matched implant, wherein to generate the 3D mixed patient matched implant model, the processing circuitry is configured to add the 3D patient matched porous model to the 3D pre-defined solid model", the limitations appear to be just “apply it” limitations, because they invoke computers merely as a tool to perform an existing process.
As to the limitations "a manufacturing system… wherein the manufacturing system is configured to produce a physical patient matched implant based on the file representing the 3D mixed patient matched implant model", they represent no more than just “apply it” limitations, because they recite only the idea of a solution or outcome, i.e. these claim limitations fail to recite details of how a solution to a problem is accomplished.
As to the limitations “obtain the 3D model of the scapula; obtain a 3D baseplate model; obtain a 3D pre-defined porous model… obtain a 3D pre-defined solid model", these limitations describe the concept of “mere data gathering”, which corresponds to the concepts identified as abstract ideas by the courts. Data gathering, including when limited to particular content does not change its character as information, is also within the realm of abstract ideas. Data gathering has not been held by the courts to be enough to qualify as “significantly more”. See Electric Power.
As to the limitations “output a file representing the 3D mixed patient matched implant model to the manufacturing system”, they are insignificant extra-solution activity – data outputting.
Accordingly, the additional element(s) do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Independent Claim 40 Step 2B: As discussed with respect to Step 2A; the additional elements a system comprising a memory configured to store a 3-dimensional (3D) model of a scapula of a patient and processing circuitry are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The use of a computer to implement the abstract idea of a mathematical or mental algorithm has not been held by the courts to be enough to qualify as “significantly more”. Their collective functions merely provide conventional computer implementation, which is described in the specification (underline emphasis added):
"[0059]… Processing device(s) 210 can include a variety of different processing or computing devices, such as servers, desktop computers, laptop computers, tablets, mobile phones and other electronic computing devices, or processors within such devices".
As discussed with respect to Step 2A, Prong two, the limitations identified as just “apply it” merely invoke computers as a tool to perform an existing process. These limitations amount to computer implementation of transformation of information and/or data, which is not statutory. The specification reads (underline emphasis added): "[0129] The surgical planning system may generate a file that includes the mixed patient matched implant model".
As discussed with respect to Step 2A, Prong two, limitations reciting only the idea of a solution or outcome are just “apply it” limitations, because these claim limitations fail to recite details of how a solution to a problem is accomplished. See MPEP 2106.05(f)(1). As to the limitations “wherein the manufacturing system is configured to produce a physical patient matched implant", no physical patient matched implant is produced in the body of the claim. Examiner notes that the claimed manufacturing system is just "configured to" produce. About the claimed "based on the file representing the 3D mixed patient matched implant model", the limitations are so broad that little is known about how they are performed. Examiner notes that both the claimed invention and the specification are mute about the basis on the file representing the 3D mixed patient matched implant model to manufacture or produce a physical patient matched implant. See for example in the Specification (underline emphasis added):
'[0109] The surgical planning system may output the generated patient matched implant model for manufacturing (810). For instance, virtual planning system 102 may output a file containing the generated patient matched implant model to manufacturing and delivery system 106, which may manufacture a physical patient matched implant corresponding to the patient matched implant model. As one example, manufacturing and delivery system 106 may use additive manufacturing (e.g., 3D printing) techniques (e.g., direct metal laser sintering (DMLS)) to manufacture the physical patient matched implant. Other example additive manufacturing techniques include, but are not limited to, fused deposition modeling (FDM), fused filament fabrication (FFF), and electron beam melting (EBM)…
[0130] The physical patient matched implant may be manufactured based on the patient matched mixed model (1114). For instance, manufacturing and delivery system 106 may use additive manufacturing (e.g., 3D printing) techniques (e.g., direct metal laser sintering (DMLS)) to manufacture the physical patient matched implant…'
As discussed with respect to Step 2A, claim recites data gathering, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
As discussed with respect to Step 2A, Prong two, the limitations identified as data outputting are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration. See MPEP 2106.05(g)(3).
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that their combination improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claim does not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Independent claim 53 Step 1: a method (process = 2019 PEG Step 1 = yes).
Independent claim 53 Step 2A, Prong One: claim recites:
determining a shape of a backside surface of the 3D baseplate model, the backside surface comprising a surface of the 3D baseplate model that faces away from an articular surface of the patient matched implant; determining a volume between the shape of the backside surface of the 3D baseplate model and a glenoid surface of the scapula defined by the 3D model of the scapula
Claim 53 is substantially drawn to mental concepts but for the recitation of generic computer components. (See Independent claim 40, Step 2A, Prong One above).
As to the determining limitations, under their broadest reasonable interpretation, determining is a mental concept performed in the human mind or by a human using a pen and paper. (See Independent claim 40, Step 2A, Prong One above).
If a claim limitation, under its broadest reasonable interpretation, covers mental concepts, then it falls within groupings of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes).
Independent Claim 53 Step 2A Prong two: As to the additional element computer-implemented, it is interpreted as drawn to a generic computer.
As to the limitations "for designing a patient matched implant for a shoulder joint repair surgical procedure… generating, based on the determined volume, a 3D patient matched augment model; generating, based on the 3D patient matched augment model and the 3D pre-defined porous model, a 3D patient matched porous model, wherein generating the 3D patient matched porous model comprises adding the 3D patient matched augment model to the 3D pre-defined porous model… generating, based on the 3D patient matched porous model and the 3D pre-defined solid model, a 3D mixed patient matched implant model corresponding to the patient matched implant, wherein generating the 3D mixed patient matched implant model comprises adding the 3D patient matched porous model to the 3D pre-defined solid model", the limitations appear to be just “apply it” limitations, because the limitations invoke computers merely as a tool to perform an existing process.
As to the limitations "fabricating, based on the file representing the 3D mixed patient matched implant model, a physical patient matched implant", they represent no more than just “apply it” limitations, because they recite only the idea of a solution or outcome, i.e. these claim limitations fail to recite details of how a solution to a problem is accomplished.
As to the limitations “obtaining a 3-dimensional (3D) model of a scapula of a patient; obtaining a 3D baseplate model; obtaining a 3D pre-defined porous model… obtaining a 3D pre-defined solid model", these limitations describe the concept of “mere data gathering”. (See Independent claim 40, Step 2A, Prong Two above).
As to the limitations “outputting a file representing the 3D mixed patient matched implant model, wherein the file is suitable for transmission to a manufacturing system”, they are insignificant extra-solution activity – data outputting.
Accordingly, the additional element(s) do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Independent Claim 53 Step 2B: As discussed with respect to Step 2A; the additional element computer-implemented is recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. (See Independent claim 40, Step 2B above).
As discussed with respect to Step 2A, Prong two, the limitations identified as just “apply it” merely invoke computers as a tool to perform an existing process. (See Independent claim 40, Step 2B above).
As discussed with respect to Step 2A, Prong two, limitations reciting only the idea of a solution or outcome are just “apply it” limitations, because these claim limitations fail to recite details of how a solution to a problem is accomplished. See MPEP 2106.05(f)(1). About the claimed "based on the file representing the 3D mixed patient matched implant model", the limitations are so broad that little is known about how they are performed. Examiner notes that both the claimed invention and the specification are mute about the basis on the file representing the 3D mixed patient matched implant model to fabricate a physical patient matched implant. (See Independent claim 40, Step 2B above).
As discussed with respect to Step 2A, claim recites data gathering, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
As discussed with respect to Step 2A, Prong two, the limitations identified as data outputting are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration. See MPEP 2106.05(g)(3).
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that their combination improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claim does not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Claims 68 recites substantially the same elements as claim 40 and is rejected for the same reasons above.
Dependent claims Step 2A, Prong One: dependent claims further the abstract ideas of their independent claims. (See Independent claim 40, Step 2A, Prong One above). If a claim limitation, under its broadest reasonable interpretation, covers mental concepts, then it falls within groupings of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes).
Dependent claims Step 2A Prong two:
As to the limitations “47/60… obtain a 3D model of the scapula as the scapula exists before an operation to implant the patient matched implant" and "48/61… obtain a 3D model of the scapula as the scapula will exist after one or more work steps are performed during an operation to implant the patient matched implant”, these limitations describe the concept of “mere data gathering”. (See Independent claim 40, Step 2A, Prong Two above).
As to the limitations "43/56… populate the 3D patient matched implant porous model with a porous structure", "44/57… wherein the porous structure is generic", "45/58… wherein the porous structure is patient matched", and "49/62… generate a 3D model of an area of interest on the scapula based on the 3D model of the scapula, and wherein, to generate the 3D mixed patient matched implant model, the processing circuitry is configured to generate the 3D mixed patient matched implant model based on the 3D model of the area of interest", the limitations appear to be just “apply it” limitations, because the limitations invoke computers merely as a tool to perform an existing process.
As to the limitations “71… wherein the manufacturing system fabricates the patient matched implant by direct metal laser sintering (DMLS), fused deposition modeling (FDM), fused filament fabrication (FFF), or electron beam melting (EBM)", they represent no more than just “apply it” limitations, because they recite only the idea of a solution or outcome, i.e. these claim limitations fail to recite details of how a solution to a problem is accomplished.
This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Dependent claims Step 2B:
As discussed with respect to Step 2A, the claims recite data gathering, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
As discussed with respect to Step 2A, Prong two, the limitations identified as just “apply it” limitations are “apply it” limitations because they invoke computers merely as a tool to perform an existing process. (See Independent claim 40, Step 2B above).
As discussed with respect to Step 2A, Prong two, limitations reciting only the idea of a solution or outcome are just “apply it” limitations, because these claim limitations fail to recite details of how a solution to a problem is accomplished. See MPEP 2106.05(f)(1). About the claimed "based on the file representing the 3D mixed patient matched implant model" of claim 40, the limitations are so broad that little is known about how they are performed. Examiner notes that both the claimed invention and the specification are mute about the basis on the file representing the 3D mixed patient matched implant model to fabricate a physical patient matched implant. (See Independent claim 40, Step 2B above).
Therefore, the claims do not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Allowable Subject Matter
Claims 40, 43-45, 47-49, 53, 56-58, 60-62, 68, 71, and 72 are allowable over prior art of record. They will be allowed once all outstanding rejections/objections are traversed.
A reason for the indication of allowable subject matter was provided in the Office Action dated 11/25/2025.
Response to Arguments
Regarding the claim objections, the amendment corrected all deficiencies and the objections are withdrawn.
Regarding the rejections under 101, Applicant's arguments have been considered, but they are not persuasive. Applicant argues, (see page 9, 4th paragraph to page 13, 2nd paragraph; page 14, 3rdparagraph to page 15, 2nd paragraph):
‘… when viewed as a whole, Applicant's claims recite elements such that it is clear that the claims do not seek to tie up all techniques for the alleged abstract idea such that others cannot practice the alleged abstract idea. Instead, the claims recite meaningful limitations to sufficiently limit the alleged abstract idea to a practical application…
… amended claim 40 recites features related to fabricating a physical patient matched implant model by generating a 3D mixed patient matched model based on a combination of multiple 3D models, including both template models and a 3D patient matched augment model. Claim 40 is directed to a complex process that recites meaningful limitations that sufficiently limit the practical application. Therefore, the claims do not seek to pre-empt all applications, i.e., do not seek to "tie up" the judicial exception, and thus are directed to eligible subject matter. That is, the claims in no way tie up performance of the alleged mental process, as alleged by the Office Action…
… amended independent claim 40 provides a solution to a problem rooted in the surgical art…
… claim 40 facilitates generation of patient specific implants including solid and porous sections… By generating a physical, patient specific implant, the system of claim 40 reduces the need to remove portions of bone and facilitates bony ingrowth, which improves implant fixation over time. The combination of porous and solid sections of the patient specific implant facilitates bony ingrowth associated with porous implants while simultaneously maintaining the strength associated with solid implants.
The system of amended independent claim 40 outputs a file representing the 3D mixed patient matched implant model to the manufacturing system of claim 40 to "cause the manufacturing system to fabricate a physical patient matched implant based on the file representing the 3D mixed patient matched implant model," thereby reducing the need to remove portions of bone and facilitating bony ingrowth, which is most certainly a practical application of the alleged abstract idea…
… amended independent claim 40 specifically utilizes the "generic computer components" to perform actions related to generating a 3D mixed patient matched implant model and outputting "a file representing the 3D mixed patient matched implant model to the manufacturing system to cause the manufacturing system fabricate a physical patient matched implant based on the file representing the 3D mixed patient matched implant model." As amended, independent claim 40 clearly provides a technical solution to a problem rooted in surgical procedures. For example, by fabricating the physical patient matched model based on the generated the 3D mixed patient matched implant model including both porous and non- porous portions, amended claim 40 facilitates bony ingrowth and reduced bone removal. Therefore, amended independent claim 40 achieves significantly more than the alleged abstract idea.
Therefore, amended independent claim 40 does not merely recite generically claimed computer components and instead demonstrates a practical application tailored to the specific technological context of surgical planning. By employing elements such as the processing circuitry and the manufacturing system, amended independent claim 40 represents an innovative use of existing technological components to address a particular problem within a specific technological domain, thus providing meaningful limitations beyond routine applications.
While not identical in scope, amended independent claims 53 and 68 recite similar subject matter to independent claim 40’
Examiner's response: Applicant's arguments should not be found persuasive, because claim 40 does not read "solution to a problem rooted in the surgical art… reduces the need to remove portions of bone and facilitates bony ingrowth, which improves implant fixation over time”, as argued, but "for a shoulder joint repair surgical procedure". Applicant's Specification may provide an explanation of "in the surgical art… reduces the need to remove portions of bone and facilitates bony ingrowth, which improves implant fixation over time”, as argued, but no such details have to be executed by the claims. No skilled artisan would interpret these argued features as claimed features, because the claims themselves are mute about executing such argued features. The claims must stand on their own. Examiner is not allowed to bring limitations set forth in the description into the claims. Although a claim should be interpreted in light of the Specification disclosure, it is generally considered improper to read limitations contained in the Specification into the claims. See Synopsys2 at page 20, 2nd paragraph, citing Accenture: 'The § 101 inquiry must focus on the language of the Asserted Claims themselves. See Accenture3… (admonishing that “the important inquiry for a § 101 analysis is to look to the claim”); see also Content Extraction4'.
Claim 40 is "for designing a patient matched implant for a shoulder joint repair surgical procedure". As to the limitations “wherein the manufacturing system is configured to produce a physical patient matched implant", no physical patient matched implant is produced in the body of the claim. Examiner notes that the claimed manufacturing system is just "configured to" produce. About the claimed "based on the file representing the 3D mixed patient matched implant model", the limitations are so broad that little is known about how they are performed. Examiner notes that both the claimed invention and the specification are mute about the basis on the file representing the 3D mixed patient matched implant model to manufacture or produce a physical patient matched implant. (See Independent claim 40, Step 2B above).
Applicant further argues, (see page 13, 3rd paragraph to page 14, 2nd paragraph):
‘… the Office asserted that these limitations are "define[d] over the prior art of record." Therefore, it is unclear to how the limitations could be "apply it limitations" on the basis that they "perform an existing process." Applicant respectfully requests clarification.
… when determining whether a claim recites a judicial exception with the words "apply" it, examiners should consider, among other factors, "the particularity or generality of the application of the judicial exception."…
Like in BASCOM, in which content filtering was confined to a particular and practical application, independent claim 40 is confined to a particular, practical application of the alleged abstract idea. Claim 40 is directed to a complex process that recites meaningful limitations that sufficiently limit the practical application in that processing circuitry of claim 40 generates a 3D mixed patient matched implant model and outputs a file representing the 3D mixed patient matched implant model to the manufacturing system of claim 40 to cause the manufacturing system to fabricate a physical patient matched implant based on the file.
Thus, claim 40 does not merely cite an abstract idea, but applies it in a particular way to solve a specific technological problem rooted in the surgical art. The claimed system is at least eligible because the claimed system includes meaningful limitations that confine the alleged abstract ideas to the particular, practical application of fabricating patient specific implants with porous and non-porous portions'
Examiner's response: Applicant's argument is not persuasive, because the claimed invention and Specification do not recite any computer components for filtering Internet content as in BASCOM.
Novel or non-obvious ('define[d] over the prior art of record', as argued) abstract ideas are abstract ideas. Novel or non-obvious abstract ideas are species of the genus abstract idea. In the 2019 Revised Patent Subject Matter Eligibility Guidance5, “novelty” or “non-obviousness” of an abstract idea do not match any of the considerations discussed for determining whether a claim with additional elements integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself. When recited in a claim with an abstract idea, “novelty” or “non-obviousness” of an abstract idea do not qualify a limitation as integrating an abstract idea into a practical application or amounting to significantly more.
Applicant further argues, (see page 15, 3rd paragraph to page 16, 4th paragraph):
'… claim 71 recites, "The system of claim 40, wherein the manufacturing system fabricates the patient matched implant by direct metal laser sintering (DMLS), fused deposition modeling (FDM), fused filament fabrication (FFF), or electron beam melting (EBM)."…
… as discussed above with respect to independent claim 40, by outputting a file representing the 3D mixed patient implant model including porous and non-porous portions and fabricating a physical patient matched implant based on the file, claim 40 achieves the practical applications of reducing the need to remove portions of bone and facilitating bony ingrowth.
… Amended dependent claim 71 therefore recites specific techniques for fabricating the physical patient matched implant…
… amended claim 71 specifically recites that the manufacturing system of claim 40 fabricates the physical patient matched implant using DMLS, FDM, FFF, or EBM. By reciting specific manufacturing techniques, claim 71 clearly amounts to significantly more by providing meaningful limitations to the alleged abstract ideas…'
The MPEP reads (underline emphasis added):
‘2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]… (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"…
By way of example, in Intellectual Ventures… In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document.… Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words "apply it"’.
Examiner's response: Applicant's argument is not persuasive, because as to the limitations "based on the file representing the 3D mixed patient matched implant model" of claim 40, they are recited so generically (no details whatsoever are provided) that they represent no more than just “apply it” limitations. The limitations are so broad that little is known about how they are performed. Examiner notes that both the claimed invention and the specification are mute about the basis on the file representing the 3D mixed patient matched implant model to manufacture or produce a physical patient matched implant. See specification paragraphs [0109], [0130]. (See MPEP 2106.05(f)(1) supra and Independent claim 40, Step 2B above).
Therefore, the rejections are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN CARLOS OCHOA whose telephone number is (571)272-2625. The examiner can normally be reached Mondays, Tuesdays, Thursdays, and Fridays 9:30AM - 7:00 PM.
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/JUAN C OCHOA/Primary Examiner, Art Unit 2186
1 Electric Power Group, LLC v. Alstom S.A., 119 USPQ2d 1739 Fed. Cir. 2016
2 Synopsys, Inc. v. Mentor Graphics Corp. (Fed. Cir. October 17, 2016)
3 Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013)
4 Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1346 (Fed. Cir. 2014)
5 2019 Revised Patent Subject Matter Eligibility Guidance, Federal Register/Vol. 84, No. 4/Monday, January 7, 2019 /Notices
Prosecution Insights