DETAILED ACTION
This Office action is responsive to communications filed on 06/23/2026. Claims 1, 19, & 37 have been amended. Claims 6-7 are withdrawn. Claims 2, 8, 18, 20-36, & 39 canceled. Presently, Claims 1, 3-5, 9-17, 19, & 37-38 remain pending and are hereinafter examined on the merits.
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 .
Response to Arguments
Previous objections to the Drawings are withdrawn in view of the amendments filed on 06/23/2026.
Previous Specification objections are withdrawn in view of the amendments filed on 06/23/2026.
Previous 35 USC § 103 rejection is withdrawn in view of the amendments filed on 06/23/2026.
The Applicant’s response with respect to the Interview filed on 06/02/2026.
The Interview Summary did not establish an agreement that the amendment necessarily overcome the rejections under 35 USC § 101. Rather, the Interview Summary states that the proposed transition limitation “may obviate” the rejection.
The Applicant’s arguments with respect to rejections under 35 USC § 101 have been fully, considered, but are not persuasive.
Under Step 2A, Prong One, the Applicant states “To the extent that the Office disagrees with Applicant's arguments and believes that some of these limitations can practically be performed in the human mind, Applicant again directs the Office's attention to MPEP § 2106.04(a)(2)(III)(a), which clearly state that "a claim with limitation(s) that cannot practically be performed in the human mind does not recite a mental process." In other words, the standard is not whether any of the recited limitations can be performed in the human mind: all of the recited limitations must be able to be practically performed in the human mind in order for the claim to be directed to a mental process”-pg. 13
The Applicant applies an incorrect standard by asserting that all limitations of a claim must be capable of performance in the human mind before the claim can recite a mental process. MPEP 2106 does not require this. It’s whether the claim recites “a limitation” that is abstract. Here, it provides that a claim recites a mental process when it contains “a limitation” that can practically be performed in the human mind, see MPEP 2106.04(a)(2).III. The remaining limitations not identified as abstract, were evaluated as additional elements under Prong Two. Here, the identified abstract idea is not operating the imaging device or generating depth data. It is evaluating the external body wall data and the internal depth data to identify a port location, which constitutes an observation, evaluation, and judgment that can be practically performed by a person reviewing the anatomical location.
The claims obtain external and internal depth information and then use that information to identify a port location. The imaging device, time-of-flight sensor, visible light camera, processor, and memory operate as tools for supplying information. Although the claims state that the computer-assisted surgical system “is to insert” an instrument though the identified port location. The claims do not require that an instrument actually be inserted at that location or that any surgical treatment positively be performed. It is merely the intended use of the result rather than an application that is actually carries the result into a particular treatment.
Regarding the transitioning, “wherein a control system connected to the imaging device is configured to transition the imaging device from the external space to the internal space.”
It was suggested in the Interview filed on 06/23/2026, claiming transitioning of the imaging device from the outside to the inside [...] to obtain the external body wall data and internal depth data. The Applicant did not make this amendment. The amendment filed on 06/23/2026 - “wherein a control system connected to the imaging device is configured to transition the imaging device from the external space to the internal space.” is a broad system capability that is configured to transition the imaging device from the external space to the internal space. The limitation merely states that the control system has the ability (i.e., capability) to move the imaging device. It does not explicitly dictate when this transition occurs (i.e., when the step is executed). The limitation, as generically recited, “does not preclude” the transition from happening after the port location has already been mentally identified. Its considered post-solution activity. The transitioning of the imaging device, as generically recited, is decoupled from the obtaining of the external body wall data and internal depth data. As previously discussed, the Applicant’s and their representatives are strongly encouraged to include the suggested language into the independent claims.
The Applicant’s reliance on the “necessary data gathering” language of MPEP 2106.05(g) is also incorrect. It’s the particular evaluation recited in the claims “identifying a port location based on the external body wall data and internal depth data”. The recited data are the inputs required for that evaluation.
Regarding the alleged improvement, the asserted advantages are not limitations of the claims and cannot establish that the claims reflect the alleged technological improvement. The claim reflects the use of obtaining external and internal depth data, but does not assert that such data is obtained by transitioning the imaging device from the external space to obtain the external body wall data to the internal space to obtain the internal depth data.
The Applicant’s observation that the terms “abstract decision” and “abstract evaluation” is incorrect and does not identify an error in the rejection. Those terms merely describe the claim evaluation in view the Applicant’s interpretation of the MPEP against the claims. The judicial exception identified in the Office Action is a mental process, see MPEP 2106.04(a)(2).III.
Therefore, the 35 USC § 101 rejection is maintained.
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, 9-17, 19, & 37-38 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.
Claim 1, 19 & 37: “a control system”. It is unclear if a control system refers to or is separate from the computer-assisted surgical system. For examination purposes, the Examiner assumes the computer-assisted surgical system. Appropriate correction is required.
The dependent claims of the above rejected claims are rejected due to their dependency.
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, 9-17, 19, & 37-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the subject matter eligibility test (see MPEP 2106.03).
Claims 1, 3-5, 9-17, & 38 are drawn to a “system” which describes one of the four statutory categories, i.e., a machine.
Claim 19 is directed to a “method” which describes one of the four statutory categories of patentable subject matter, i.e., a process.
Claims 37 are drawn to a “non-transitory computer-readable medium” which describes one of the four statutory categories, i.e., a manufacture.
Step 2A of the subject matter eligibility test (see MPEP 2106.04).
Prong One:
Claim 1 recite (“sets forth” or “describes”) the abstract idea of “a mental process” (MPEP 2106.04(a)(2).III.), substantially as follows:
“perform, based on the external body wall data and the internal depth data, an operation associated with a computer-assisted surgical system configured to perform a procedure with respect to the patient, wherein the performing of the operation comprises identifying a port location on the external body wall of the patient ”
Claim 19 recite (“sets forth” or “describes”) the abstract idea of “a mental process” (MPEP 2106.04(a)(2).III.), substantially as follows:
“performing, on the external body wall data and the internal depth data, an operation associated with a computer-assisted surgical system configured to perform a procedure with respect to the patient, wherein the performing of the operation comprises identifying a port location on the external body wall of the patient”
Claim 37 recite (“sets forth” or “describes”) the abstract idea of “a mental process” (MPEP 2106.04(a)(2).III.), substantially as follows:
“perform, based on the external body wall data and the internal depth data, an operation associated with a computer-assisted surgical system configured to perform a procedure with respect to the patient, wherein the performing of the operation comprises identifying a port location on the external body wall of the patient through”
In claims (1, 19, 37), while this limitation references a computer-assisted surgical system, it only recites that some unspecified operation is performed “based on” the acquired data. The claim does not describe how the data is processed, how the operation is executed, or what is involved in associating the data with the surgical system. This step recited a mental process because the “operation” is understood in context to be an act such as identifying a port location through which to insert a surgical instrument, an act that can be performed in the human mind. The act of the operation “perform[...] an operation” is not indicative of performing a surgery, and claimed recitations identified above sustain that it is something that can be done mentally. Specifically, the above noted recitation reflects the surgeon conceptualization of what operation will be performed. Similarly, the step of "identifying a port location on the external body wall of the patient" can be done by the human mind through ordinary visual observation, judgment, and reasoning (i.e., looking at the patient's anatomy, recalling prior knowledge of suitable port placements, and deciding mentally where such a port should be located). The additional mention of a “computer-assisted surgical system” is not tied to any specific structural implementation or technological improvement, and thus is merely a nominal context. There is nothing recited in the claim to suggest an undue level of complexity in the performing of the operation. Accordingly, the claim recites a mental process falling within the “Mental Processes” grouping of abstract ideas, and therefore, the claim recites an abstract idea.
Prong Two: Claims (1, 19, 37) do not include additional elements that integrate the mental process into a practical application.
This judicial exception is not integrated into a practical application. In particular, the claims recites
[1] additional steps of
A. “a memory storing instructions; and a processor communicatively coupled to the memory and configured to execute the instructions to: obtain, by directing an imaging device to scan an external body wall of a patient while the imaging device is in an external space external to the patient, [...]; obtain, by directing the imaging device to scan an internal space of the patient while a distal end of the imaging device is inserted into the internal space of the patient through a camera port formed through the external body wall of the patient, internal depth data [...] ” - (claim 1),
B. “obtaining, by directing an imaging device to scan an external body wall of a patient while the imaging device is in an external space external to the patient, external body wall data [...]; obtaining, by directing the imaging device to scan an internal space of the patient while a distal end of the imaging device is inserted into the internal space of the patient through a camera port formed through the external body wall of the patient, internal depth data [...]” -(claim 19),
C. “A non-transitory computer-readable medium storing instructions that, when executed, direct a processor to: obtain, by directing an imaging device to scan an external body wall of a patient while the imaging device is in an external space external to the patient, external body wall data [...]; obtain, by directing the imaging device to scan an internal space of the patient while a distal end of the imaging device is inserted into the internal space of the patient through a camera port formed through the external body wall of the patient, internal depth data [...]” -(claim 37); and
[2] further an addition step of
A. “through which the computer-assisted surgical system is to insert a surgical instrument into the internal space of the patient, [...].and
wherein a control system connected to the imaging device is configured to transition the imaging device from the external space to the internal space.”-(claim 1),
B. “through which the computer-assisted surgical system is to insert a surgical instrument into the internal space of the patient, [...] and
wherein a control system connected to the imaging device is configured to transition the imaging device from the external space to the internal space. ” -(claim 19),
C. “through which the computer-assisted surgical system is to insert a surgical instrument into the internal space of the patient, [...] and
wherein a control system connected to the imaging device is configured to transition the imaging device from the external space to the internal space.” -(claim 37),
The steps in (1) represent merely data gathering or pre-solution activities that are necessary for use of the recited judicial exception and are recited at a high level of generality with conventionally used tools (see below Step IIB for further details). Data gathering and mere instructions to implement an abstract idea on a computer do not integrate a judicial exception into a practical application (MPEP 2106.05 (f and g)).
Regarding the processor language written at such a high level of generality of structural limitations, the processor language amounts to a generic computer component with mere instructions to implement the abstract idea on a computer.
The step in (2) represents merely post-solution activity and is recited at a high level of generality, not a practical application, nor a technological solution that solves a technological application in a meaningful way.
Regarding the step:
“wherein a control system connected to the imaging device is configured to transition the imaging device from the external space to the internal space.”
This limitation is a broad system capability that is configured to transition the imaging device from the external space to the internal space. The limitation merely states that the control system has the ability (i.e., capability) to move the imaging device. It does not explicitly dictate when this transition occurs (i.e., when the step is executed). The limitation, as generically recited, “does not preclude” the transition from happening after the port location has already been mentally identified. The transitioning of the imaging device, as generically recited, is decoupled from the obtaining of the external body wall data and internal depth data.
As a whole, the additional elements merely serve to gather and feed information to the abstract idea and to output a notification based on the abstract idea, while generically implementing it on conventionally used tools. There is no practical application because the abstract idea is not applied, relied on, or used in a meaningful way. No improvement to the technology is evident, and the estimated image information is not outputted in any way such that a practical benefit is realized. Therefore, the additional elements, alone or in combination, do not integrate the abstract idea into a practical application.
Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Further, there is no evidence of record that would support the assertion that this step is an improvement to a computer or technological solution to a technological problem. Ultimately, the Applicant’s describe improvement in the process of using imaging techniques, but this is not an improvement in the function of a computer or other technology (See MPEP 2106.05(a)(ii); “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”; See MPEP 2106.04(d)(1); 2106.05(a); and 2106.05(f)). The claims are directed to the abstract idea. Also, there does not appear to be any particular structure or machine, treatment or prophylaxis, transformation, or any other meaningful application that would render the claim eligible at step 2A, prong 2.
Step 2B of the subject matter eligibility test (see MPEP 2106.05).
Claims (1, 19, 37) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the claims recite additional steps of obtaining internal and external data with an imaging device. These steps represents mere data gathering, data outputting or pre/post/extra-solution activities that are necessary for use of the recited judicial exception and are recited at a high level of generality. Furthermore, as discussed above, limitations with respect to the processor languages/terms, respectively, amount to mere instructions to implement the abstract idea on a computer. As discussed with respect to Step 2A Prong Two, the additional elements in the claims amount to no more than insignificant extra solution activity and mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B and does not provide an inventive concept. The data gathering steps that were considered insignificant extra-solution activity in Step 2A Prong Two, have been re-evaluated in Step 2B and determined to be well-understood, routine, conventional activity in the field.
As an evidence, Lang (US 20170258526 A1) discloses:
¶0207, ‘surface registration algorithms such as the Iterative Closest Point algorithm, statistical models, Active Shape Models, mutual information-based or other volume registration algorithms, object recognition, pattern recognition or computer vision techniques, deep learning or other artificial intelligence methods. The processed data can, for example, consist of mesh data, parametric surface data, point cloud data, volume data or a combination thereof. These methods are known in the art and have been implemented in publicly and/or commercially available code libraries and application programming interfaces (API's), such as the Insight Segmentation and Registration Toolkit (ITK), the open-source computer vision library OpenCV, Elastix, Plastimatch, or the Medical Image Registration Toolkit (MIRTK).’
¶1185, ‘3D laser scanners or depth sensors known in the art, such as, for example, the Structure laser scanner provided by Occipital Inc., can be used to image the surface of the patient's bone and/or cartilage and/or tissue and/or ligaments and/or menisci and/or organ. Other 3D scanners known in the art can be used. Any laser scanning, optical or light scanning technique known in the art for determining, estimating or deriving the 3D volume, 3D surface or 3D shape of a structure known in the art can be used.’
As an evidence, Ramachandra et al (US 20150049172 A1) discloses:
¶0064, ‘The steps of a method or process described in connection with the implementations disclosed herein may be embodied directly in hardware, in a software module executed by a processor, or in a combination of the two. A software module may reside in RAM memory, flash memory, ROM memory, EPROM memory, EEPROM memory, registers, hard disk, a removable disk, a CD-ROM, or any other form of non-transitory storage medium known in the art.’
As an evidence, Popovic et al US 20190290247 A1) discloses:
¶0039, ‘endoscope imaging phase 11 involves an introduction of an endoscope through a port of a patient into the anatomical region as well known in the art of the present disclosure whereby the endoscope is operated to generate an endoscopic image of an anatomical region (e.g., an endoscopic view of an organ within the anatomical region) as will be further described herein in connection with FIG. 2.’
For similar reasons set forth in Step 2A, Prong Two above, the additional elements of “ obtain, [...] external body wall data representative of a three-dimensional model of the external body wall of the patient and based on external depth data for the external body wall; obtain, [...] internal depth data representative of a depth map for the internal space of the patient; and [...] wherein the imaging device includes a depth sensor and a visible light camera, and wherein the depth sensor is implemented by a time-of-flight sensor.”-(claim 1), “obtaining, [...] external body wall data representative of a three-dimensional model of the external body wall of the patient and based on external depth data for the external body wall; obtaining, [...] internal depth data representative of a depth map for the internal space of the patient; and [...] wherein the imaging device includes a depth sensor and a visible light camera, and wherein the depth sensor is implemented by a time-of-flight sensor.” -(claim 19), & “obtain, [...], external body wall data representative of a three-dimensional model of the external body wall of the patient and based on external depth data for the external body wall; obtain, [...], internal depth data representative of a depth map for the internal space of the patient; and [...] wherein the imaging device includes a depth sensor and a visible light camera, and wherein the depth sensor is implemented by a time-of-flight sensor.” -(claim 37); do not provide an inventive concept under Step 2B.
For these reasons, there is no inventive concept. The claim is not patent eligible. Even when viewed as a whole, nothing in the claim adds significantly more to the abstract idea.
Dependent Claims
The following dependent claims merely further define the abstract idea and are, therefore, directed to an abstract idea for similar reasons:
Defining wherein the identifying of the port location comprises using the external body wall data and the internal depth data to identify a positioning on the external body wall for the port location that allows the surgical instrument to access, through the port location, a structure within the internal space while avoiding collision with an additional surgical instrument.– (claim 9).
Defining wherein the identifying of the port location comprises identifying the port location such that the surgical instrument is configured to access a structure within the internal space without the manipulator arm colliding with a different manipulator arm.– (claim 12).
Defining wherein the identifying the port location comprises identifying the port location such that the surgical instrument and the manipulator arm avoid unintentional contact with the patient.– (claim 13)
Defining to execute the instructions to determine, for a candidate port location, at least one of a reachability metric indicating an ability of the surgical instrument to reach a target structure located in the internal space of the patient using [[a]]the candidate port location, an anthropomorphic metric indicating an ease with which a user may manipulate the surgical instrument introduced into the internal space of the patient through the candidate port location, a collision volume for portions of the computer-assisted surgical system proximal to the candidate port location, the collision volume corresponding to a volume swept by the portions of the computer-assisted surgical system proximal to the candidate port location, or a collision metric indicating a likelihood of a collision between portions of the computer-assisted surgical system proximal to the candidate port location; and the identifying of the port location is further based on at least one of the reachability metric, the anthropomorphic metric, the collision volume, or the collision metric – (claim 15). Although, the claim 15 recites the processor configured to perform the steps, its merely a generic computer implementation, which falls under mere instructions to apply the abstract idea on a computer and therefore does not place the abstract idea into a practical application that solves a technological solution in a meaningful way or improve the functionality of the technology or generic computer “itself”. Simply, it’s a generic computer implementation of a mental process rather than a meaningful limitation. Regarding the processor language written at such a high level of generality of structural limitations, the processor language amounts to a generic computer component with mere instructions to implement the abstract idea on a computer.
Defining wherein the performing of the operation comprises identifying, based on the external body wall data and the internal depth data, a set-up position for a manipulator arm of the computer-assisted surgical system. -(claim 16).
The following dependent claims merely further describe the extra-solution activities and therefore, do not amount to significantly more than the judicial exception or integrate the abstract idea into a practical application for similar reasons:
Describing wherein the obtaining of the external body wall data comprises: receiving the external depth data from the depth sensor; and using the external depth data as the external body wall data representative of the three- dimensional model of the external body wall of the patient.–(claim 3). The data gathering steps and pre-solution activity are conventional and recited at high level of generality. As such, the abstract idea is not applied, relied on, or used in a meaningful way. No improved to the technology is evident, and the determined visualization of context is not outputted in any way such that the practical benefit is realized.
Describing wherein: the imaging device is attached to a manipulator arm of the computer-assisted surgical system while the depth sensor acquires the external depth data and the internal depth data; the computer-assisted surgical system is configured to generate kinematics data for the imaging device while the depth sensor acquires the external depth data and the internal depth data; the processor is further configured to execute the instructions to register, based on the kinematics data, the external body wall data with the internal depth data; and the performing of the operation is based on the registration of the external body wall data with the internal depth data.– (claim 4). The data gathering steps and pre-solution activity are conventional and recited at high level of generality. As such, the abstract idea is not applied, relied on, or used in a meaningful way. No improved to the technology is evident, and the determined visualization of context is not outputted in any way such that the practical benefit is realized.
Describing wherein the visible light camera is configured to acquire a visible light image of the internal space.– (claim 5). The data gathering steps and pre-solution activity are conventional and recited at high level of generality. As such, the abstract idea is not applied, relied on, or used in a meaningful way. No improved to the technology is evident, and the determined visualization of context is not outputted in any way such that the practical benefit is realized.
Defining wherein the identifying of the port location is further based on kinematics data generated by the computer-assisted surgical system.– (Claim 10).
Defining wherein the surgical instrument is attached to a manipulator arm of the computer-assisted surgical system. – (Claim 11)
Describing wherein the processor is further configured to execute the instructions to direct a display to display a graphical representation of the port location.– (claim 14). The data gathering steps and post-solution activity are conventional and recited at high level of generality. As such, the abstract idea is not applied, relied on, or used in a meaningful way. No improved to the technology is evident, and the determined visualization of context is not outputted in any way such that the practical benefit is realized.
Describing wherein the identifying of the set- up position for the manipulator arm is further based on kinematics data generated by the computer-assisted surgical system.– (Claim 17). The data gathering steps and pre-solution activity are conventional and recited at high level of generality. As such, the abstract idea is not applied, relied on, or used in a meaningful way. No improved to the technology is evident, and the determined visualization of context is not outputted in any way such that the practical benefit is realized.
Describing wherein the external depth data and the internal depth data are both generated during a surgical procedure during which the computer-assisted surgical system is configured to perform the procedure with respect to the patient.– (claim 38). The data gathering steps and pre- & post-solution activity are conventional and recited at high level of generality. As such, the abstract idea is not applied, relied on, or used in a meaningful way. No improved to the technology is evident, and the determined visualization of context is not outputted in any way such that the practical benefit is realized.
Taken alone and in combination, the additional elements do not integrate the judicial exception into a practical application at least because the abstract idea is not applied, relied on, or used in a meaningful way. They also do not add anything significantly more than the abstract idea. Their collective functions merely provide computer/electronic implementation and processing, and no additional elements beyond those of the abstract idea. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. There is no indication that the combination of elements improves the functioning of a computer, output device, improves technology other than the technical field of the claimed invention, etc. Therefore, the claims are rejected as being directed to non-statutory subject matter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Nicholas Robinson whose telephone number is (571)272-9019. The examiner can normally be reached M-F 9:00AM-5:00PM EST.
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/N.A.R./Examiner, Art Unit 3798
/PASCAL M BUI PHO/Supervisory Patent Examiner, Art Unit 3798
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