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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/18/2025 has been entered.
Presently, Claims 1-3, 5, 10, 12, 13, 15-20, 36, 37, 39, and 40 remain pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 5, 10, 12, 13, 15-20, 36, 37, 39, and 40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention.
With regard to Claims 1 and 36, the limitation “wherein the image capture device captures image data” is indefinite because it is unclear whether or not it is a positive limitation of the claimed method. As presented, it appears that the limitation merely constitutes the intended use of the image capture device and therefore is not afforded patentable weight. Should the Applicant intend to recite the limitation positively, it is suggested that Applicant amend the claim to include an additional step of “capturing image data with the image capture device” or similar.
Further with regard to Claim 1, the limitation “modifying…the image data by subtracting the unreachable portion of the workspace represented by the image data” is indefinite because it is unclear what the unreachable portion is being subtracted from.
Clarification is required.
Dependent claims not directly addressed above are hereby also rejected under 35 U.S.C. 112(b) because they inherit the indefiniteness of the claim(s) they respectively depend upon.
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, 10, 12, 15-20, 36, 37, 39, and 40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to one or more judicial exception(s), without significantly more.
With regard to Claim 1:
Step 1: Claim 1 is directed to a method.
Step 2A, Prong One: Claim 1 recites the following limitations: “generating…a workspace volume…”, “determining…a reachable portion of the workspace…” and “modifying…the image data by subtracting…”. These limitations, as broadly and reasonably interpreted and understood, represent steps that can practically be performed in the mind and/or with the aid of pen/paper AND/OR mathematical concepts. Claim 1 therefore recites the judicial exception of abstract ideas.
Step 2A, Prong Two: Claim 1 further recites the additional limitations: “referencing…the workspace volume…” and “displaying…”. These limitations, either taken individually or as a whole, represent pre and post-extra solution activities that do not integrate the judicial exceptions set forth in Step 2A, Prong One into a practical application.
Step 2B: For similar reasons set forth in Step 2A, Prong Two, the additional limitations do not provide an inventive concept that would constitute significantly more than the judicial exception.
Accordingly, Claim 1 is considered to be directed to a judicial exception and is therefore non-patent eligible.
With regard to Claim 36:
Step 1: Claim 1 is directed to a method.
Step 2A, Prong One: Claim 1 recites the following limitations: “generating…a workspace volume…”, “determining…a reachable portion of the workspace…”, “modifying…the image data by subtracting…”, and “…determining an incision location…”. These limitations, as broadly and reasonably interpreted and understood, represent steps that can practically be performed in the mind and/or with the aid of pen/paper AND/OR mathematical concepts. Claim 1 therefore recites the judicial exception of abstract ideas.
Step 2A, Prong Two: Claim 1 further recites the additional limitations: “referencing…the workspace volume…”, and “displaying…”. These limitations, either taken individually or as a whole, represent pre and post-extra solution activities that do not integrate the judicial exceptions set forth in Step 2A, Prong One into a practical application.
Step 2B: For similar reasons set forth in Step 2A, Prong Two, the additional limitations do not provide an inventive concept that would constitute significantly more than the judicial exception.
Accordingly, Claim 1 is considered to be directed to a judicial exception and is therefore non-patent eligible.
Claim 15 further recites an analyzing and converting step, both of which, merely recite mental processes that could practically be performed in the mind and/or with the aid of pen/paper and mathematical concepts and therefore is also non-patent eligible.
Claim 17 further recites the steps of “generating…”, “referencing…”, and “determining…”. Similarly to the above, these steps recite mental processes that could practically be performed in the mind and/or with the aid of pen/paper. Accordingly, Claim 17 is also non-patent eligible.
Claims 18 and 20 further recites the steps of “determining…” and “computing…”. Similarly to the above, these steps recite mental processes that could practically be performed in the mind and/or with the aid of pen/paper. Accordingly, Claims 18 and 20 are also non-patent eligible.
Claim 19 further recites the limitation of “determining…”, which recites the judicial exception of a mental process-type abstract idea. The further limitation of “displaying…” merely recites an insignificant post-extra solution activity that neither integrates the judicial exceptions into a practical application and/or provide an inventive concept.
Claims 2, 3, 5, 10, 12, 16, 37, 39, 40 further recite additional limitations that when considered alone or as a whole, merely represent insignificant pre or post-extra solution activities that do not integrate the judicial exceptions into a practical application and/or provide an inventive concept. Accordingly, Claims 2, 3, 5, 10, 12, 13, 16, 37, 39, and 40 are also non-patent eligible.
Note: It is noted that Claim 13 is not rejected under 35 U.S.C. 101 and is found to be patent eligible, when placed into independent form, because the limitation “wherein a radius of the spherical shape is determined based on an insertion range of an instrument” does integrate the judicial exception into a practical application and is therefore deemed patent eligible.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 5, 10, 12, 36, 37, 39, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Bertram (US 2020/0330174) in view of Jarc et al. (US 2016/0314710), further in view of Groth et al. (US 2013/0028494).
Regarding claims 1, 5, 10, and 12, Bertram discloses a method comprising:
generating a workspace volume indicating an operational region of reach (see entire document including abstract, Figs. 8-12, and para 3, 42, and 46-63);
referencing the workspace volume to an image capture reference frame of an image capture device, wherein the image capture device captures image data (see entire document including abstract, Figs. 8-12, and para 3, 42, and 46-63); and
determining a reachable workspace portion of the image data that is within the workspace volume (see entire document including abstract, Figs. 8-12, and para 3, 42, and 46-63).
Jarc discloses a similar surgical robotic method, further comprising: displaying the
reachable workspace portion of the image data without the unreachable portion of the image
data; and displaying a false graphic in place of the unreachable portion of the image data (see
entire document including Figs. 4 and 6-9 and para 4, 6, 28, 34, 35, 45, 54, 55, 57, 60, 72, 89, 92,
95, 120-127, 151, and 182).
It would have been obvious and predictable to have combined the teachings of Bertram
and Jarc because doing so would predictably alert a user to regions that cannot be reached bythe surgical robot system.
Examiner takes Official Notice that medical imaging displays are well known and
common place, that include false graphic comprising at least one of a color hue, a color
saturation, an illumination, or a surface pattern and that include overlays comprising at least
one of a colored grid, a plurality of colored dots, or a plurality of contour lines.
Examiner further notes that the false graphics noted herein read on the modified image data claimed.
Groth discloses a similar medical imaging device and system, wherein a colored grid,
which also reads on a surface pattern is used to distinguish various regions of interest (see para
139).
It would have been obvious and predictable to have used colors and patterns to
highlight areas in a medical image because doing so would alert a user to the area and information such as unreachability of a portion of the medical space in the image.
As noted in the above arguments, replacing the unreachable portion with a grid or
overlay reads on and obviates the replacing condition of the present claims because replacing is
a broad term that includes any display that is not the visually the same as the original data or
image. The grid and/or overlay of the prior art reads on this interpretation of the claims.
Regarding claim 2, Bertram discloses a method, wherein the operational region of reach
includes a region of a reach of an instrument (see entire document including abstract, Figs. 8-12, and para 3, 42, and 46-63).
Regarding claim 3, Bertram discloses a method, wherein the operational region of reach
includes a region of a reach of an arm of a manipulating system, the arm being coupled to an instrument (see entire document including abstract, Figs. 8-12, and para 3, 42, and 46-63).
With further regard to claim 5, Jarc discloses a similar surgical robotic method, further
comprising: displaying the reachable workspace portion of the image data without the unreachable portion of the image data; and displaying a false graphic in place of the
unreachable portion of the image data (see entire document including Figs. 4 and 6-9 and para
4, 6, 28, 34, 35, 45, 54, 55, 57, 60, 72, 89, 92, 95, 120-127, 151, and 182).
It would have been obvious and predictable to have combined the teachings of Bertram
and Jarc because doing so would predictably alert a user to regions that cannot be reached by
the surgical robot system.
Examiner notes that Bertram discloses displaying the reachable area as noted with respect to claim 1.
With further regard to claim 10, Jarc discloses a similar surgical robotic method, furthercomprising: displaying the reachable workspace portion of the image data and the unreachable portion of the image data; and displaying an overlay on the image data (see entire document including Figs. 4 and 6-9 and para 4, 6, 28, 34, 35, 45, 54, 55, 57, 60, 72, 89, 92, 95, 120-127, 151, and 182).
It would have been obvious and predictable to have combined the teachings of Bertram
and Jarc because doing so would predictably alert a user to regions that cannot be reached by the surgical robot system.
Examiner notes that Bertram discloses displaying the reachable area as noted with respect to claim 1.
Regarding claim 36, Bertram discloses a method comprising: generating a workspace
volume indicating an operational region of reach (see entire document including abstract, Figs.
8-12, and para 3, 42, and 46-63); referencing the workspace volume to an image capture
reference frame of an image capture device, wherein the image capture device captures image
data (see entire document including abstract, Figs. 8-12, and para 3, 42, and 46-63);
determining a reachable workspace portion of the image data that is within the workspace
volume (see entire document including abstract, Figs. 8-12, and para 3, 42, and 46-63); and
based on the determined reachable workspace portion, determining an incision location of an instrument (see entire document including abstract, Figs. 8-12, and para 3, 42, and 46-63).
Jarc discloses a similar surgical robotic method, further comprising: displaying the
reachable workspace portion of the image data without the unreachable portion of the image
data; and displaying a false graphic in place of the unreachable portion of the image data (see
entire document including Figs. 4 and 6-9 and para 4, 6, 28, 34, 35, 45, 54, 55, 57, 60, 72, 89, 92,
95, 120-127, 151, and 182).
It would have been obvious and predictable to have combined the teachings of Bertram
and Jarc because doing so would predictably alert a user to regions that cannot be reached by
the surgical robot system.
Examiner takes Official Notice that medical imaging displays are well known and
common place, that include false graphic comprising at least one of a color hue, a color
saturation, an illumination, or a surface pattern and that include overlays comprising at least
one of a colored grid, a plurality of colored dots, or a plurality of contour lines.
Examiner notes that the false graphics noted herein read on the modified image data claimed.
Groth discloses a similar medical imaging device and system, wherein a colored grid,
which also reads on a surface pattern is used to distinguish various regions of interest (see para
139).
It would have been obvious and predictable to have used colors and patterns to
highlight areas in a medical image because doing so would alert a user to the area and
information such as unreachability of a portion of the medical space in the image.
As noted in the above arguments, replacing the unreachable portion with a grid or
overlay reads on and obviates the replacing condition of the present claims because replacing is
a broad term that includes any display that is not the visually the same as the original data or
image. The grid and/or overlay of the prior art reads on this interpretation of the claims.
Regarding claim 37, Bertram discloses a method, wherein the operational region of
reach includes a region of a reach of the instrument (see entire document including abstract,
Figs. 8-12, and para 3, 42, and 46-63).
Regarding claim 39, Bertram discloses a method, wherein the workspace volume is
generated prior to a beginning of a surgical medical procedure (see entire document including abstract, Figs. 8-12, and para 3, 42, and 46-63).
Regarding claim 40, Jarc discloses a similar surgical robotic method, further comprising:
determining an unreachable portion of the image data that is outside of the workspace volume;
displaying the reachable workspace portion of the image data without the unreachable portion
of the image data; and wherein the unreachable portion is modified to be a ghost image (see
entire document including Figs. 4 and 6-9 and para 4, 6, 28, 34, 35, 45, 54, 55, 57, 60, 72, 89, 92,
95, 120-127, 151, and 182). It would have been obvious and predictable to have combined the teachings of Bertram and Jarc because doing so would predictably alert a user to regions that cannot be reached by the surgical robot system.
Examiner notes that Bertram discloses displaying the reachable area as noted with
respect to claim 36.
Examiner takes Official Notice that medical imaging displays are well known and
common place, that include false graphic comprising at least one of a color hue, a color
saturation, an illumination, or a surface pattern.
It would have been obvious and predictable to have used colors and patterns to
highlight areas in a medical image because doing so would alert a user to the area and
information such as unreachability of a portion of the medical space in the image.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Bertram, Jarc, Groth and the skill in the art as applied to claim 1 above, and further in view of Koenig et al. (US
2017/0020615).
Regarding claim 13, Koenig discloses a similar surgical robot method, wherein the
workspace volume has a spherical shape, and wherein a radius of the spherical shape is
determined based on an insertion range of an instrument (see Fig. 2 and para 36-39).
It would have been obvious and predictable to have combined the teachings of Bertram
with Koenig because doing so would predictably show a workable area for the robot disclosed
in Koenig. Essentially, a skilled artisan would have found it obvious to display a workable area
for each given type of surgical device.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Bertram, Jarc, Groth, and the skill in the art as applied to claim 1 above and further in view of Yang et al. (US
2006/0066612).
Regarding claim 15, Yang discloses a similar imaging system in combination with
Bertram discloses a method, wherein determining the reachable workspace portion comprises:
analyzing the image data to generate a dense disparity map for a set of left eye image data of
the image data and a set of right eye image data of the image data; and converting the dense
disparity map to a depth buffer image, wherein the reachable workspace portion of the image
data is determined from the depth buffer image (see above citations to Bertram and Yang Figs.
1-5 and para 45-65). It would have been obvious and predictable to have combined the teachings of Bertram and Yang because doing so would predictably allow for stereoscopic 3D imaging to aide in surgical navigation and to assist in determining reachable and unreachable locations in the 3D surgical field.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Bertram, Jarc, Groth, the skill in the art, and Yang as applied to claim 15 above and further in view of Itkowitz ‘700 (US 2018/0092700).
Regarding claim 16, Itkowitz ‘700 discloses a similar surgical medical imaging robotics
method, further comprising rendering a left eye image of the reachable workspace portion of
the image data; rendering a right eye image of the reachable workspace portion of the image
data; and generating a composite image of the reachable workspace portion of the image data
(see para 42 and Fig. 2).
It would have been obvious and predictable to have combined the teachings of Bertram
and Itkowitz ‘700 because doing so would predictably allow for stereoscopic 3D imaging to aide
in surgical navigation and to assist in determining reachable and unreachable locations in the
3D surgical field.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Bertram, Jarc, Groth, and the skill in the art as applied to claim 1 above, and further in view of Farritor et al. (US 2017/0354470).
Regarding claim 17, Bertram discloses a method, further comprising: generating a
second workspace volume indicating a region of a reach of a second instrument; referencing
the second workspace volume to the image capture reference frame; generating a composite
workspace volume by combining the workspace volume and the second workspace volume;
referencing the composite workspace volume to the image capture reference frame; and
determining a reachable workspace portion of the image data that is within the composite
workspace volume (see entire document including abstract, Figs. 8-12, and para 3, 42, and 46-
63).
As above noted, Bertram appears to discloses a composite image. In the alternative,
Farritor discloses a similar robot control method, generating a second workspace volume
indicating a region of a reach of a second instrument; referencing the second workspace
volume to the image capture reference frame; generating a composite workspace volume by
combining the workspace volume and the second workspace volume; referencing the
composite workspace volume to the image capture reference frame; and determining a
reachable workspace portion of the image data that is within the composite workspace volume
(see Figs. 6 and 7 and para 156-161).
It would have been obvious and predictable to have displayed multiple surgical reach
areas, including one for each tool disclosed in Bertram, because doing so would ensure that all
tools could reach a target to perform a procedure.
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bertram,
Jarc, Groth, the skill in the art, and Farritor as applied to claim 17 above and further in view of Itkowitz et al. (US 9,789,608).
Regarding claims 18 and 20, Itkowitz discloses a similar surgical robot method, wherein
generating the composite workspace volume comprises: determining that an arm coupled to an
instrument will contact a second arm coupled to a second instrument during a surgical
procedure; based on the determined contact, computing a distance field for the instrument and
computing a second distance field for the second instrument; and based on the computed
distance field, determining a volumetric distance field; and wherein computing the distance
field for the instrument comprises: determining a closest distance between a surface of the arm
and a surface of the second arm (see Figs. 8-11 and the section designated Collision Detection).
It would have been obvious and predictable to have combined the teachings of Bertram
and Itkowitz because doing so would indicate to an operator any potential collisions that may
or have occurred.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Bertram, Jarc, Groth, the skill in the art, Farritor, and Itkowitz as applied to claim 18 above and further in view of Jarc.
Regarding claim 19, Jarc discloses a similar surgical robotic method, further comprising: determining an unreachable portion of the image data that is outside of the composite workspace volume; and displaying the volumetric distance field as a false graphic in place of the unreachable portion of the image data (see entire document including Figs. 4 and 6-9 and para 4, 6, 28, 34, 35, 45, 54, 55, 57, 60, 72, 89, 92, 95, 120-127, 151, and 182). It would have been obvious and predictable to have combined the teachings of Bertram and Jarc because doing so would predictably alert a user to regions that cannot be reached by the surgical robot system.
Response to Arguments
Applicant's arguments filed 11/21/2025 have been fully considered but they are not persuasive.
More specifically, the Applicant appears to assert that none of the references, either solely or in combination, “fail to disclose or suggest “modifying…the image data by subtracting the unreachable portion of the workspace represented by the image data”, as recited in Claims 1 and 36.
The Examiner respectfully disagrees. It is first noted that it is not readily clear what the difference between “subtracting” and “replacing” is in the context of the claim. As broadly and reasonably understood, one of ordinary skill in the art would recognize that by “subtracting” the unreachable portion from the image data, the Applicant is also “replacing” the unreachable portion from the image data with either nothing or other image data. Similarly, by “replacing” the unreachable portion from the image data, the Applicant is also “subtracting” the unreachable portion from the image data. Therefore, as interpreted, the limitations “replacing” and “subtracting” are deemed functionally equivalent (or at least variants of each other) in the present application’s context.
Accordingly, as indicated above, Jarc discloses displaying a reachable workspace portion of the image data without the unreachable portion of the image data and replacing it (i.e. subtracting it and replacing it) with a false graphic. In addition, Groth discloses utilizing a grid or an overlay to distinguish various regions of interest. It is asserted that replacing the unreachable portion with a grid or overlay “subtracts” the unreachable portion and replaces it with a grid or overlay, as claimed. The Applicant’s arguments are therefore deemed non-persuasive and the rejections deemed proper.
Conclusion
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/PASCAL M BUI PHO/Supervisory Patent Examiner, Art Unit 3798
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