DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
In the reply filed to the application filed on 24 February 2026 the following changes have been made: amendments to claims 21-38. Claims 39-40 have been cancelled. Claims 41-42 have been added.
Claims 21-38 and 41-42 are currently pending and have been examined.
Notice to Applicant
Applicant’s specification [0433] contains two recitations of mediums: computer-readable medium/media and non-transitory computer-readable medium. The specification does not clarify that a recitation of just a computer readable storage medium is not to be construed as being transitory signals per se. Thus, it is not clear from applicant’s claim 35 if transitory signals are excluded.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e)
or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has
not complied with one or more conditions for receiving the benefit of an earlier
filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/611,340; 62/611, 339; 62/611,341; 62/640,417; 62/640,415; 62/650,898; 62/650,882; 62/650,877; 62/650,887; 62/659,900; 62/692,768; 62/692,748; 62/692,747; and, 62/729,177 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. For claims 21, 28, and 35 the prior-filed application does not provide support for “wherein the second operational threshold is indicated by a second contextual dataset that is relevant to adjusting the parameter”, “determine an adjustment value of the parameter based on a hierarchical resolution of the difference between the first operational threshold and the second operational threshold”, and “generate, via the surgical hub, control instructions that cause the surgical instrument to alter an operation associated with the surgical procedure in accordance with the adjustment value of the parameter.” Examiner cannot find disclosure of the second operational threshold indicated by a second contextual dataset that is relevant to adjusting the parameter, determining an adjustment value of the parameter based on a hierarchical resolution of the difference between the first operational threshold and the second operational threshold, and generating, via the surgical hub, control instructions that cause the surgical instrument to alter an operation associated with the surgical procedure in accordance with the adjustment value of the parameter. For claims 22, 29, and 36 the prior-filed application does not provide support for “wherein the first contextual dataset comprises a first constraint, wherein the second contextual dataset comprises a second constraint, and wherein the one or more processors are further configured to generate a third constraint that satisfies the first constraint and the second constraint.” Examiner cannot find disclosure of the first contextual dataset comprising a first constraint, the second contextual dataset comprising a second constraint, and generating a third constraint that satisfies the first constraint and the second constraint. For claim 23, 30, and 37 the prior-filed application does not provide support for “wherein the one or more
processors are further configured to arrange the first and second contextual datasets in a hierarchy of priority, the hierarchy of priority comprises a primary tier, a secondary tier that is lower in priority than the primary tier, and a tertiary tier that is lower in priority than the secondary tier, such that the first contextual dataset possesses a higher priority than the second contextual dataset and is placed in a tier among the primary, secondary, and tertiary tiers that is a higher priority than where the second contextual dataset is placed.” Examiner cannot find disclosure of the one or more processors being further configured to arrange the first and second contextual datasets in a hierarchy of priority, the hierarchy of priority comprises a primary tier, a secondary tier that is lower in priority than the primary tier, and a tertiary tier that is lower in priority than the secondary tier, such that the first contextual dataset possesses a higher priority than the second contextual dataset and is placed in a tier among the primary, secondary, and tertiary tiers that is a higher priority than where the second contextual dataset is placed. For claims 24, 31, and 38 the prior-filed application does not provide support for “wherein the hierarchical resolution of the difference between the first contextual dataset and the second contextual dataset comprises obtaining a third contextual dataset at the same or higher tier than the first contextual dataset, wherein the third contextual dataset comprises data to resolve the difference between the first operational threshold and the second operational threshold.” Examiner cannot find disclosure of the hierarchical resolution of the difference between the first contextual dataset and the second contextual dataset comprising obtaining a third contextual dataset at the same or higher tier than the first contextual dataset, wherein the third contextual dataset comprises data to resolve the difference between the first operational threshold and the second operational threshold. For claims 25 and 32 the prior-filed application does not provide support for “wherein the first contextual dataset comprises an exception to refer to a lower tiered contextual dataset under a specific circumstance, wherein the hierarchical resolution of the difference between the first contextual dataset and the second contextual dataset comprises determining that under the specific circumstance the first contextual dataset instructs to defer to the second contextual dataset for the adjustment value of the parameter.” Examiner cannot find disclosure of the first contextual dataset comprising an exception to refer to a lower tiered contextual dataset under a specific circumstance, wherein the hierarchical resolution of the difference between the first contextual dataset and the second contextual dataset comprises determining that under the specific circumstance the first contextual dataset instructs to defer to the second contextual dataset for the adjustment value of the parameter. For claims 26 & 33 the prior-filed application does not provide support for “wherein one or more processors are further configured to inform a user that the difference between the first operational threshold and the second operational threshold cannot be resolved by the surgical hub.” Examiner sees generic disclosure of informing optimization outcomes on pg. 78 of 62/611,340; generic disclosure of informing machine learning and decision-making process in pg. 310 of 62/611,339; generic disclosure of informing the user of the state of the ultrasonic device in pg. 43 of 62/640,415; generic disclosure of informing the processor regarding the various sensor data in pg. 32 of 62/650,877; generic disclosure of informing the surgeon as the surgeon approaches a nerve and/or a nerve bundle in pg. 25 of 62/650,887; and, generic disclosure of informing the clinicians' decisions during the surgical procedure in pg. 1542 of 62/659,900. However, examiner cannot find disclosure of one or more processors configured to inform a user that the difference between the first operational threshold and the second operational threshold cannot be resolved by the surgical hub. For claims 27 and 34 the prior-filed application does not provide support for “the hierarchical resolution of the difference between the first between the first operational threshold and the second operational threshold comprises: one or more past solutions to the difference between the first operational threshold and the second operational threshold; and determining, a solution to the difference between the first operational threshold and the second operational threshold based on the one or more past solutions.” Examiner cannot find disclosure or suggestion of the hierarchical resolution of the difference between the first between the first operational threshold and the second operational threshold comprises: one or more past solutions to the difference between the first operational threshold and the second operational threshold; and determining, a solution to the difference between the first operational threshold and the second operational threshold based on the one or more past solutions. For claim 41 the prior-filed application does not provide support for “at least one remotely coupled surgical instrument through a minimally invasive incision, and wherein the one or more processors are further configured to send the control instructions to the robotic system so that the robotic system alters the operation associated with the surgical procedure in accordance with the adjustment value of the parameter of the surgical instrument.” Examiner cannot find disclosure of at least one remotely coupled surgical instrument through a minimally invasive incision, and wherein the one or more processors are further configured to send the control instructions to the robotic system so that the robotic system alters the operation associated with the surgical procedure in accordance with the adjustment value of the parameter of the surgical instrument. Accordingly, claims 21-38 and 41-42 are not entitled to the benefit of the prior applications.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e)
or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has
not complied with one or more conditions for receiving the benefit of an earlier
filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Patent No. US11308075B2 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. For claim 41 the prior-filed application does not provide support for “at least one remotely coupled surgical instrument through a minimally invasive incision, and wherein the one or more processors are further configured to send the control instructions to the robotic system so that the robotic system alters the operation associated with the surgical procedure in accordance with the adjustment value of the parameter of the surgical instrument.” Examiner cannot find disclosure of at least one remotely coupled surgical instrument through a minimally invasive incision, and wherein the one or more processors are further configured to send the control instructions to the robotic system so that the robotic system alters the operation associated with the surgical procedure in accordance with the adjustment value of the parameter of the surgical instrument.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the
invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 41 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Amended claim 41 now specifies that “the robotic system is configured to manipulate at least one remotely coupled surgical instrument.” Examiner points out that the specification [0194] clearly states that the surgical instrument is removably coupled and not remotely coupled. In the surgical art, removably coupled focuses on the ability to connect and disconnect parts easily while remotely coupled focuses on the ability to connect or disconnect from a distance, often through automation, electronics, or hydraulics. The only remote aspects of the invention are a remote server (e.g. [0234]) and cloud-based computers for remote data processing and manipulation (e.g., [0235). MPEP 2161.01 notes, “When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.” Accordingly, a rejection for lack of written description is necessary. Accordingly, claim 41 is not entitled to the benefit of the prior applications.
Claim 41 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 41 contains the recitation “wherein the one or more processors are further configured to send the control instructions to the robotic system so that the robotic system alters the operation associated with the surgical procedure in accordance with the adjustment value of the parameter of the surgical instrument.” Applicant’s recitation of sending the control instructions to the robotic system so that the robotic system alters the operation associated with the surgical procedure in accordance with the adjustment value of the parameter of the surgical instrument appears to constitute new matter. MPEP 2163 notes, “The proscription against the introduction of new matter in a patent application (35 U.S.C. 132 and 251) serves to prevent an applicant from adding information that goes beyond the subject matter originally filed. See In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326 (CCPA 1981); see also MPEP §§ 2163.06 through 2163.07 for a more detailed discussion of the written description requirement and its relationship to new matter.” Accordingly, a rejection for addition of new matter is necessary.
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.
The claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of the patent eligible subject matter because the broadest interpretation of the computer-readable medium of claims 35-38 encompasses signals per se.
Claims 21-38 and 42 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
The claim(s) recite(s) subject matter within a statutory category as a machine (claims 21-27 and 42) and process (claims 28-34).
INDEPENDENT CLAIMS
Step 2A Prong 1
Claim 21 recites steps of
a surgical hub comprising a one or more processors;
wherein the one or more processors are configured to:
obtain a first contextual dataset from one or more data sources;
determine, based on a machine learning system, that the first contextual dataset is relevant to adjusting the parameter of the surgical instrument, wherein the machine learning system correlates one or more of patient record data, patient monitoring data, and modular device data to determine the relevancy, and wherein the first contextual dataset indicates a first operational threshold;
determine that the first operational threshold is different from a second operational threshold, wherein the second operational threshold is indicated by a second contextual dataset that is relevant to adjusting the parameter;
determine an adjustment value of the parameter based on a hierarchical resolution of the difference between the first operational threshold and the second operational threshold;
and
generate, via the surgical hub, control instructions that cause the surgical instrument to alter an operation associated with the surgical procedure in accordance with the adjustment value of the parameter.
Claims 28 and 35 recite similar limitations as claim 21 but for the recitation of generic computer components.
These steps for determining relevancy and adjusting a parameter of a surgical instrument, as drafted, under the broadest reasonable interpretation, includes performance of the limitations in the mind. That is nothing in the claim element precludes the italicized portions from practically being performed in the mind through the determination of an adjustment value of the parameter for a surgical instrument in accordance with the resolved difference. This could be analogized to collecting information, analyzing it, and displaying certain results of the collection and analysis. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. In particular, the additional elements, non-italicized portions identified above for claims 21, 28, and 35 do not integrate the abstract idea into a practical application, other than the abstract idea per se, because the additional elements amount to no more than limitations which:
amount to mere instructions to apply an exception (such as recitation of a surgical hub comprising a one or more processors; based on a machine learning system; via the surgical hub; that cause the surgical instrument to alter an operation; and, a computer readable medium comprising instructions that, when executed by a processor, cause the processor to perform operations amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f))
add insignificant extra-solution activity to the abstract idea (such as recitation of obtain a first contextual dataset from one or more data sources amounts to mere data gathering since it does not add meaningful limitations to the obtaining action performed, see MPEP 2106.05(g))
Each of the above additional elements therefore only amounts to mere instructions to implement functions within the abstract idea using generic computer components or other machines within their ordinary capacity. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. These elements are therefore not sufficient to integrate the abstract idea into a practical application. Therefore, the above claims, as a whole, are directed to an abstract idea.
Step 2B
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception. Additionally, the additional limitations, other than the abstract idea per se, amount to no more than limitations which:
amount to mere instructions to apply an exception in particular fields such as a surgical hub comprising a one or more processors; based on a machine learning system; via the surgical hub; that cause the surgical instrument to alter an operation; and, a computer readable medium comprising instructions that, when executed by a processor, cause the processor to perform operations, e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f).
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields such as recitation of obtain a first contextual dataset from one or more data sources; e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i);
Looking at the limitations as an ordered combination adds nothing that is not already
present when looking at the elements taken individually. There is no indication that the
combination of elements improves the functioning of a computer or improves any other
technology. Their collective functions merely provide generic computer implementation.
DEPENDENT CLAIMS
Step 2A Prong 1
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claims 22-27, 29-34, 36-38, and 42 recite particular aspects for determining relevancy and adjusting a parameter of a surgical instrument such as
[Claim 22, 29, & 36] wherein the first contextual dataset comprises a first constraint, wherein the second contextual dataset comprises a second constraint, and wherein the one or more processors are further configured to generate a third constraint that satisfies the first constraint and the second constraint;
[Claim 23, 30, & 37] wherein the one or more processors are further configured to arrange the first and second contextual datasets in a hierarchy of priority, the hierarchy of priority comprises a primary tier, a secondary tier that is lower in priority than the primary tier, and a tertiary tier that is lower in priority than the secondary tier, such that the first contextual dataset possesses a higher priority than the second contextual dataset and is placed in a tier among the primary, secondary, and tertiary tiers that is a higher priority than where the second contextual dataset is placed;
[Claim 24, 31, & 38] wherein the hierarchical resolution of the difference between the first contextual dataset and the second contextual dataset comprises obtaining a third contextual dataset at the same or higher tier than the first contextual dataset, wherein the third contextual dataset comprises data to resolve the difference between the first operational threshold and the second operational threshold;
[Claim 25 & 32] wherein the first contextual dataset comprises an exception to refer to a lower tiered contextual dataset under a specific circumstance, wherein the hierarchical resolution of the difference between the first contextual dataset and the second contextual dataset comprises determining that under the specific circumstance the first contextual dataset instructs to defer to the second contextual dataset for the adjustment value of the parameter;
[Claim 26 & 33] wherein the one or more processors are further configured to inform a user that the difference between the first operational threshold and the second operational threshold cannot be resolved by the surgical hub;
[Claim 27, 34, & 40] wherein the hierarchical resolution of the difference between the first operational threshold and the second operational threshold comprises:
accessing one or more past solutions to the difference between the first operational threshold and the second operational threshold, and
determining a solution to the difference between the first operational threshold and the second operational threshold based on the one or more past solutions;
[Claim 42] wherein the parameter of the surgical instrument comprises
a positioning of the surgical instrument, wherein the adjustment value of the positioning reduces micro-tissue tension damage and collateral damage adjacent to a treatment area associated with the surgical procedure.
these italicized portions covers performance of the limitations in the mind but for recitation of generic computer components because they merely further describe the types of data and determinations that can be performed by humans).
Step 2A Prong 2
Dependent claims 22-23, 26, 29-30, 33, and 36-37 recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (the additional limitations in claims 22, 29, & 36 (the one or more processors are further configured); claim 23, 30, & 37 (the one or more processors are further configured); and, claims 26 & 33 (wherein the surgical hub is further configured to inform a user that the difference between the first contextual dataset and the second contextual dataset cannot be resolved by the surgical hub)) amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f))). 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.
Step 2B
Dependent claims 22-23, 26, 29-30, 33, and 36-37 recite additional subject matter which, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea, e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f). There is no indication that these additional elements improve the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation.
Therefore, in consideration of all the facts, the present invention is not a patent-eligible invention under USC 101. Additionally, it is evident that the present claims monopolize AI-driven surgical optimization, restricting further innovation in this area without offering a specific, technical improvement to how the computer actually operates. Using AI tools is generally not enough to transform an abstract idea into patent-eligible subject matter if the core of the invention is still a method of determination; “monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (quoting Myriad, 569 U.S. at 589, 106 USPQ2d at 1978 and Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012)).
No USC 101 Rejection
Regarding claim 41, the claim does not recite an abstract idea because the limitations recited could not be practically performed by humans or be performed mentally. Even if the claims are directed to an abstract idea, the claimed invention as a whole integrates the abstract idea into a practical application by controlling operation of the robotic system by sending control instructions including the adjusted value to the robotic system which causes the operation of the robotic system to be altered in accordance with the adjustment value. This positions the claims away from reciting any abstract idea. These features go beyond a generic computer implementation of any abstract idea.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35
U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 21, 27-28, 34-35, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Shelton IV et al. (US20160256185A1) in view of Aldridge et al. (US20130285758A1).
Regarding claim 21, Shelton IV discloses a surgical hub comprising one or more processors ([0247] “It is noteworthy that the power management controller 3016 and/or the shaft assembly controller 3022 each may comprise one or more processors and/or memory units which may store a number of software modules.”)
wherein the one or more processors are configured to:
obtain a first contextual dataset from one or more data sources ([0335] “As described earlier, the sensors may be configured to detect and collect data associated with the surgical device.”)
and wherein the first contextual dataset indicates a first operational threshold ([0250] “ultimate threshold that shuts down motor or activates return is current, pressure, firing load, torque is exceeded, and alternatively, while running within the limits the device automatically compensates for loading of the motor.”)
determine that the first operational threshold is different from a second operational threshold ([0259] “For example, as the number of sterilization cycles exceeds 300 (the marginal threshold) but not 500 (the ultimate threshold) the device runs the motor slower. Then as the current draw exceeds its 75% marginal threshold it multiples the slow down going even slower.”)
wherein the second operational threshold is indicated by a second contextual dataset that is relevant to adjusting the parameter;
([0260] “For example, parameters identified can include one or more of current, voltage, tissue pressure, tissue thickness, jaw closure rate, tissue creep rate, firing load, knife thickness, torque, or battery usage. An ultimate threshold or thresholds for these parameters can be identified 4012.” [0261] “For example, a marginal threshold for a parameter based on current draw can be 75% of the ultimate threshold. In addition, in connection with a parameter based on number of sterilization cycles, a marginal threshold may be set at 200 sterilization cycles, and an ultimate threshold at sterilization 400 cycles.”)
determine an adjustment value of the parameter based […]of the difference between the first operational threshold and the second operational threshold ([0278] “When the marginal threshold 4166 is reached, a control measure such as an algorithm can be used to adapt or otherwise modify the velocity 4172. The modified velocity 4172 can be given by a linear or non-linear function. And, at an ultimate threshold, power to the motor can be discontinued 4174.”)
and generate, via the surgical hub, control instructions that cause the surgical instrument to alter an operation associated with the surgical procedure in accordance with the adjustment value of the parameter
([0201] “For example, in some examples, the activation signal from the primary processor 2006” [0208] “In some instances, the communications module 2112 is configured to receive one or more instructions from the remote system” [0258] “Various mechanisms can be employed to carry out the adjustment(s) taken as a result of exceeding a threshold. For example, the adjustment can reflect a step function. It can also reflect a ramped function.” [0261] “motor speed is reduced by 1% due to exceeding the sterilization cycle threshold […] This interactive effect can result in the motor running more slowly than it would if either input were considered independently.”)
Shelton IV does not disclose however Aldridge teaches determine, based on a machine learning system, that the first contextual dataset is relevant to adjusting the parameter of the surgical instrument wherein the machine learning system correlates one or more of patient record data, patient monitoring data, and modular device data to determine the relevancy ([0490] “FIG. 87 is a logic flow diagram of one form of an algorithm for training a neural network, such as the neural network 3150, utilizing back-propagation. At 3172, relevant data sets may be generated. […] Each data set may also comprise actual values describing the state of the instrument and/or tissue corresponding to each set of input values, which represent the value modeled by the neural network.”)
[…] on a hierarchical resolution […]
([0361] In this case of Example 3, a tiered or hierarchical response is demonstrated.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Shelton IV determining, based on a machine learning system, that the first contextual dataset is relevant to adjusting the parameter of the surgical instrument wherein the machine learning system correlates one or more of patient record data, patient monitoring data, and modular device data to determine the relevancy; and, a hierarchical resolution as taught by Aldridge since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 27, Shelton IV discloses wherein the hierarchical resolution of the difference between the first operational threshold and the second operational threshold comprises:
accessing one or more past solutions to the difference between the first operational threshold and the second operational threshold ([0280] “Turning to another example using thresholds, FIG. 35 is a graphical representation 4180 of battery current versus time, where Time (t) is shown along the horizontal (x) axis 4182 and battery current IBAT is shown along the vertical (y) axis 4184. […] The linear function can […] be based on a prediction of future current based on past and/or present current.”)
and determining a solution to the difference between the first operational threshold and the second operational threshold based on the one or more past solutions ([0280] “Linear function 4188 can be extended out theoretically to linear function 4190, which is an extrapolated extension with the same slope as linear function 4188.”)
Regarding claim 28, Shelton IV discloses obtaining a first contextual dataset from one or more data sources ([0335] “As described earlier, the sensors may be configured to detect and collect data associated with the surgical device.”)
and wherein the first contextual dataset indicates a first operational threshold ([0250] “ultimate threshold that shuts down motor or activates return is current, pressure, firing load, torque is exceeded, and alternatively, while running within the limits the device automatically compensates for loading of the motor.”)
determining that the first operational threshold is different from a second operational threshold ([0259] “For example, as the number of sterilization cycles exceeds 300 (the marginal threshold) but not 500 (the ultimate threshold) the device runs the motor slower. Then as the current draw exceeds its 75% marginal threshold it multiples the slow down going even slower.”)
wherein the second operational threshold is indicated by a second contextual dataset that is relevant to adjusting the parameter;
([0260] “For example, parameters identified can include one or more of current, voltage, tissue pressure, tissue thickness, jaw closure rate, tissue creep rate, firing load, knife thickness, torque, or battery usage. An ultimate threshold or thresholds for these parameters can be identified 4012.” [0261] “For example, a marginal threshold for a parameter based on current draw can be 75% of the ultimate threshold. In addition, in connection with a parameter based on number of sterilization cycles, a marginal threshold may be set at 200 sterilization cycles, and an ultimate threshold at sterilization 400 cycles.”)
determining an adjustment value of the parameter based […]of the difference between the first operational threshold and the second operational threshold ([0278] “When the marginal threshold 4166 is reached, a control measure such as an algorithm can be used to adapt or otherwise modify the velocity 4172. The modified velocity 4172 can be given by a linear or non-linear function. And, at an ultimate threshold, power to the motor can be discontinued 4174.”)
and generating, via a surgical hub, control instructions that cause the surgical instrument to alter an operation associated with the surgical procedure in accordance with the adjustment value of the parameter
([0201] “For example, in some examples, the activation signal from the primary processor 2006” [0208] “In some instances, the communications module 2112 is configured to receive one or more instructions from the remote system” [0258] “Various mechanisms can be employed to carry out the adjustment(s) taken as a result of exceeding a threshold. For example, the adjustment can reflect a step function. It can also reflect a ramped function.” [0261] “motor speed is reduced by 1% due to exceeding the sterilization cycle threshold […] This interactive effect can result in the motor running more slowly than it would if either input were considered independently.”)
Shelton IV does not disclose however Aldridge teaches determining, based on a machine learning system, that the first contextual dataset is relevant to adjusting the parameter of the surgical instrument wherein the machine learning system correlates one or more of patient record data, patient monitoring data, and modular device data to determine the relevancy ([0490] “FIG. 87 is a logic flow diagram of one form of an algorithm for training a neural network, such as the neural network 3150, utilizing back-propagation. At 3172, relevant data sets may be generated. […] Each data set may also comprise actual values describing the state of the instrument and/or tissue corresponding to each set of input values, which represent the value modeled by the neural network.”)
[…] on a hierarchical resolution […]
([0361] In this case of Example 3, a tiered or hierarchical response is demonstrated.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Shelton IV determining, based on a machine learning system, that the first contextual dataset is relevant to adjusting the parameter of the surgical instrument wherein the machine learning system correlates one or more of patient record data, patient monitoring data, and modular device data to determine the relevancy; and, a hierarchical resolution as taught by Aldridge since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 34, the limitations are rejected for the same reasons as stated above for claim 27.
Regarding claim 35, Shelton IV discloses a computer readable medium comprising instructions that, when executed by a processor, cause the processor to perform operations ([0345] “The article of manufacture may include a computer readable storage medium arranged to store logic, instructions and/or data for performing various operations of one or more examples.”)
obtaining a first contextual dataset from one or more data sources ([0335] “As described earlier, the sensors may be configured to detect and collect data associated with the surgical device.”)
and wherein the first contextual dataset indicates a first operational threshold ([0250] “ultimate threshold that shuts down motor or activates return is current, pressure, firing load, torque is exceeded, and alternatively, while running within the limits the device automatically compensates for loading of the motor.”)
determining that the first operational threshold is different from a second operational threshold ([0259] “For example, as the number of sterilization cycles exceeds 300 (the marginal threshold) but not 500 (the ultimate threshold) the device runs the motor slower. Then as the current draw exceeds its 75% marginal threshold it multiples the slow down going even slower.”)
wherein the second operational threshold is indicated by a second contextual dataset that is relevant to adjusting the parameter;
([0260] “For example, parameters identified can include one or more of current, voltage, tissue pressure, tissue thickness, jaw closure rate, tissue creep rate, firing load, knife thickness, torque, or battery usage. An ultimate threshold or thresholds for these parameters can be identified 4012.” [0261] “For example, a marginal threshold for a parameter based on current draw can be 75% of the ultimate threshold. In addition, in connection with a parameter based on number of sterilization cycles, a marginal threshold may be set at 200 sterilization cycles, and an ultimate threshold at sterilization 400 cycles.”)
determining an adjustment value of the parameter based […] of the difference between the first operational threshold and the second operational threshold ([0278] “When the marginal threshold 4166 is reached, a control measure such as an algorithm can be used to adapt or otherwise modify the velocity 4172. The modified velocity 4172 can be given by a linear or non-linear function. And, at an ultimate threshold, power to the motor can be discontinued 4174.”)
and sending, via a surgical hub, control instructions that cause the surgical instrument to alter an operation associated with the surgical procedure in accordance with the adjustment value of the parameter
([0201] “For example, in some examples, the activation signal from the primary processor 2006” [0208] “In some instances, the communications module 2112 is configured to receive one or more instructions from the remote system” [0258] “Various mechanisms can be employed to carry out the adjustment(s) taken as a result of exceeding a threshold. For example, the adjustment can reflect a step function. It can also reflect a ramped function.” [0261] “motor speed is reduced by 1% due to exceeding the sterilization cycle threshold […] This interactive effect can result in the motor running more slowly than it would if either input were considered independently.”)
Shelton IV does not disclose however Aldridge teaches determining, based on a machine learning system, that the first contextual dataset is relevant to adjusting a parameter of a surgical instrument wherein the machine learning system correlates one or more of patient record data, patient monitoring data, and modular device data to determine the relevancy ([0490] “FIG. 87 is a logic flow diagram of one form of an algorithm for training a neural network, such as the neural network 3150, utilizing back-propagation. At 3172, relevant data sets may be generated. […] Each data set may also comprise actual values describing the state of the instrument and/or tissue corresponding to each set of input values, which represent the value modeled by the neural network.”)
[…] on a hierarchical resolution […]
([0361] In this case of Example 3, a tiered or hierarchical response is demonstrated.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Shelton IV determining, based on a machine learning system, that the first contextual dataset is relevant to adjusting the parameter of the surgical instrument wherein the machine learning system correlates one or more of patient record data, patient monitoring data, and modular device data to determine the relevancy; and, a hierarchical resolution as taught by Aldridge since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 41, Shelton IV discloses wherein the system further comprises a robotic system communicatively coupled to the surgical hub ([0352] “The present disclosure applies to conventional endoscopic and open surgical instrumentation as well as application in robotic-assisted surgery.” [Claim 1] “surgical cutting and stapling instrument comprising at least one processor”)
wherein the robotic system is configured to manipulate at least one remotely coupled surgical instrument through a minimally invasive incision ([0138] “Various example devices and methods are provided for performing laparoscopic and minimally invasive surgical procedures.” [0139] “The term “frame” also may represent a portion of a robotically controlled surgical instrument and/or a portion of the robotic system that may be used to operably control a surgical instrument.” [0142] “In at least one form, the closure drive system 30 may include an actuator in the form of a closure trigger 32 that is pivotally supported by the frame 20. More specifically, as illustrated in FIG. 4, the closure trigger 32 is pivotally coupled to the housing 14 by a pin 33. Such arrangement enables the closure trigger 32 to be manipulated by a clinician”)
and wherein the one or more processors are further configured to send the control instructions to the robotic system so that the robotic system alters the operation associated with the surgical procedure in accordance with the adjustment value of the parameter of the surgical instrument ([0291] “In certain instances, the memory 4317 may store various program instructions, which when executed may cause the processor 4315 to perform a plurality of functions and/or calculations described herein.” [0314] “One example provides a surgical cutting and stapling instrument comprising at least one processor and operatively associated memory” [0211] “a cutting and sealing operation” [Claim 5] “wherein operations of the instrument are adjusted based on the calculated modified rate of change of the parameter.”)
Claims 22, 29, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Shelton IV et al. (US20160256185A1) in view of Aldridge et al. (US20130285758A1) and further in view of Piron et al. (US20170304007A1).
Regarding claim 22, Shelton IV in view of Aldridge does not disclose however Piron teaches wherein the first contextual dataset comprises a first constraint ([0156] “for example when illuminating for tissue differentiation the imaging processing method should employ the constraints of the system (geometric, intensity range, etc.) to obtain the illumination intensity and wavelengths […]”)
wherein the second contextual dataset comprises a second constraint ([0223] “The example implementation described above employed spectra image analysis of the surgical field (or of a region of interest within the surgical field) to extract a representative average spectral response, which may be compared with reference spectra associated with different phases of the medical procedure.”)
and wherein the one or more processors are further configured to generate a third constraint that satisfies the first constraint and the second constraint ([0184] “processing unit 400 may include one or more processors 402” [0203] “The identified tissue type, or an identifier associated with the identified tissue type, provides a context measure associated with the current state of the medical procedure.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Shelton IV and Aldridge the first contextual dataset comprises a first constraint, wherein the second contextual dataset comprises a second constraint, and wherein the one or more processors are further configured to generate a third constraint that satisfies the first constraint and the second constraint as taught by Piron since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 29, the limitations are rejected for the same reasons as stated above for claim 22.
Regarding claim 36, the limitations are rejected for the same reasons as stated above for claim 22.
Claim(s) 23-25, 30-32, and 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Shelton IV et al. (US20160256185A1) in view of Aldridge et al. (US20130285758A1) and further in view of Dalal et al. (US20050222631A1).
Regarding claim 23, Shelton IV in view of Aldridge does not explicitly disclose however Dalal teaches wherein the one or more processors are further configured to arrange the first and second contextual datasets in a hierarchy of priority, the hierarchy of priority comprises a primary tier, a secondary tier that is lower in priority than the primary tier, and a tertiary tier that is lower in priority than the secondary tier, such that the first contextual dataset possesses a higher priority than the second contextual dataset and is placed in a tier among the primary, secondary, and tertiary tiers that is a higher priority than where the second contextual dataset is placed ([0036] “The processors 154 and 158” [0046] “Thus, in the implementation shown in FIG. 2, the hierarchy 200 is defined by a plurality of “tiers” having additional analytical capabilities that may be provided through a combination of hardware, software, and network resources of each of the computing devices in the hierarchy 200. Although in this implementation five tiers are shown with each tier corresponding to a different computing device, the hierarchy 200 can be built to include two to “n” tiers based on the desired capabilities of a network system implementing the hierarchy.” [0075] “A first tier 602 includes the IMD 102 and is utilized to collect data describing a patient, such as diagnostic data describing the patient and so on. Second and third tiers 604, 606 include the intermediate computing devices 202(1), 202(m) of FIG. 2 that are represented pictorially as a patient wearable unit and a programmer, respectively.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Shelton IV and Aldridge to arrange the first and second contextual datasets in a hierarchy of priority, the hierarchy of priority comprises a primary tier, a secondary tier that is lower in priority than the primary tier, and a tertiary tier that is lower in priority than the secondary tier, such that the first contextual dataset possesses a higher priority than the second contextual dataset and is placed in a tier among the primary, secondary, and tertiary tiers that is a higher priority than where the second contextual dataset is placed as taught by Dalal since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 24, Shelton IV discloses wherein the third contextual dataset comprises data to resolve the difference between the first operational threshold and the second operational threshold [0252] “A secondary threshold, which is less than the ultimate threshold, may be employed to alter the motor control program to accommodate changes in conditions by changing the motor control parameters.”)
Shelton IV in view of Aldridge does not explicitly disclose however Dalal teaches wherein the hierarchical resolution of the difference between the first contextual dataset and the second contextual dataset comprises obtaining a third contextual dataset at the same or higher tier than the first contextual dataset ([0042] “the hierarchy 200 employs successive tiers, with one or more successive tiers in the hierarchy 200 from the IMD 102 having additional analytical capabilities.” [0078] “Thus, data collected by the IMD 102 may be communicated through successive tiers 602-608 of the hierarchy 600 to utilize additional processing capabilities that are available in the hierarchy 600.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Shelton IV and Aldridge wherein the hierarchical resolution of the difference between the first contextual dataset and the second contextual dataset comprises obtaining a third contextual dataset at the same or higher tier than the first contextual dataset as taught by Dalal since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 25, Shelton IV in view of Aldridge does not explicitly disclose however Dalal teaches wherein the first contextual dataset comprises an exception to refer to a lower tiered contextual dataset under a specific circumstance, wherein the hierarchical resolution of the difference between the first contextual dataset and the second contextual dataset comprises determining that under the specific circumstance the first contextual dataset instructs to defer to the second contextual dataset for the adjustment value of the parameter ([0078] “The IMD agent 610, for example, may determine that data collected by the IMD 102 may require additional processing that is not available to the IMD agent 610, itself. Therefore the IMD agent 610, when executed, may communicate the data to a next tier of the hierarchy 600, i.e. the second tier 604, having additional processing resources.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Shelton IV and Aldridge wherein the first contextual dataset comprises an exception to refer to a lower tiered contextual dataset under a specific circumstance, wherein the hierarchical resolution of the difference between the first contextual dataset and the second contextual dataset comprises determining that under the specific circumstance the first contextual dataset instructs to defer to the second contextual dataset for the adjustment value of the parameter as taught by Dalal since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 30, the limitations are rejected for the same reasons as stated above for claim 23.
Regarding claim 31, the limitations are rejected for the same reasons as stated above for claim 24.
Regarding claim 32, the limitations are rejected for the same reasons as stated above for claim 25.
Regarding claim 37, the limitations are rejected for the same reasons as stated above for claim 23.
Regarding claim 38, the limitations are rejected for the same reasons as stated above for claim 24.
Claims 26 and 33 rejected under 35 U.S.C. 103 as being unpatentable over Shelton IV et al. (US20160256185A1) in view of Aldridge et al. (US20150272575A1) and further in view of Merzlak et al. (US20050182655A1).
Regarding claim 26, Shelton IV in view of Aldridge does not explicitly disclose however Merzlak teaches wherein the one or more processors are further configured to inform a user that the difference between the first operational threshold and the second contextual dataset cannot be resolved by the surgical hub ([0197] “A customization configuration file is read at system start up (step 1902). Then a query is made to determine if any of the field titles associated with the customized fields conflicts with column names from the standard, or regular, fields (step 1904). If a conflict exists, the user is alerted to modify the configuration file by supplying new titles for conflicted fields (step 1906).”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Shelton IV and Aldridge to inform a user that the difference between the first contextual dataset and the second contextual dataset cannot be resolved by the surgical hub as taught by Dalal since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 33, the limitations are rejected for the same reasons as stated above for claim 26.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Shelton IV et al. (US20160256185A1) in view of Aldridge et al. (US20130285758A1) and further in view of Bleich et al. (US20090204119A1).
Regarding claim 42, Shelton IV in view of Aldridge does not disclose however Piron teaches wherein the parameter of the surgical instrument comprises a positioning of the surgical instrument ([0040] “ the epidural needle to a position with a tip of the needle in proximity to where treatment will be directed”)
wherein the adjustment value of the positioning reduces micro-tissue tension damage and collateral damage adjacent to a treatment area associated with the surgical procedure ([0163] “Markings on the catheter may be used to demonstrate to the surgeon that the catheter is in the correct position, allowing the blunted epidural instrument to be safely advanced.” [0226] “minimally invasively or percutaneously reduce neural and neurovascular impingement in the spine, while minimizing collateral tissue damage. It is expected that the apparatus and methods of the present invention may be utilized for lateral recess and neuroforaminal enlargement to provide adequate bone and soft tissue resection, while reducing unnecessary destruction of functional bone, ligament or muscle in order to gain access to the tissues to be resected or modified”)
Note: “reduces micro-tissue tension damage and collateral damage adjacent to a treatment area” is also interpreted as an intended result.
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Shelton IV and Aldridge wherein the parameter of the surgical instrument comprises a positioning of the surgical instrument, wherein the adjustment value of the positioning reduces micro-tissue tension damage and collateral damage adjacent to a treatment area associated with the surgical procedure as taught by Bleich since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Response to Arguments
The arguments filed on 24 February 2026 have been considered, but are not fully persuasive.
Regarding the priority, applicant asserts that they are entitled to the priority dates of the prior filed applications, and requests a reconsideration of the priority at least in light of the amended claims.
Examiner disagrees and asserts that even in light of the amendments, applicant is still not entitled to the priority dates of the prior filed applications. If applicant believes they are entitled, then they should point out the specific portions in the prior-filed applications that provides adequate support. Therefore, applicant is still not entitled to the priority dates of the prior filed applications.
Regarding the USC 112(b) rejection, applicant has deleted the recitation of situational awareness system from claim 21. Therefore, the USC 112(b) rejection has been withdrawn.
Regarding the USC 101 rejection, citing the August 2025 USPTO Guidance, applicant argues the amended claim 21 is not directed to an abstract idea for it improves computer functionality. Applicant states that the claimed language is an improvement to a surgical system set forth in the specification. Applicant cites [0028] of the specification which states that “the stratified analysis for determining interrelationships of influencing factors can be utilized to create an improved causational response for the surgical hub and instrument control program updates." For claim 41, applicant asserts that the claimed language improves causational response for the surgical hub via the robotic system. For claim 42, applicant asserts that the claimed language is a specific improvement to a surgical procedure through a hierarchical resolution of the contextual threshold difference related to adjusting the positioning of the surgical instrument. Under Step 2B, applicant asserts that the claim as a whole amount to significantly more than the alleged abstract idea. Citing MPEP 2106.05, applicant asserts that examiner oversimplifies the claims as the claimed features patentably define over the cited references. Applicant requests withdrawal of the USC 101 rejection.
Examiner disagrees with the applicant’s arguments. While claim 41 has overcome USC 101 as indicated above, examiner asserts the applicant’s arguments are not persuasive for the remaining claims because under Step 2A Prong 2, the present specification still provides a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art. Applicant points to [0351] as providing the detail necessary for the improvement to be apparent to one of ordinary skill in the art, but examiner points out that there is no nexus between [0351] and what is actually claimed. The cited portion from [0351] discloses determining interrelationships of influencing factors which is not in claim 21. Citing the 2025 USPTO Guidance doesn’t help the applicant because the claims are still generic and still absent specific details on exactly how the computer is programmed to achieve the results in a non-abstract way. For instance, the present machine learning claimed is a black box algorithm with no clarity on the actual computer processing or how the computer is programmed to achieve the results in a non-abstract way different from how humans analyze/process data. The MPEP provides that improvements to the functioning of a computer or to any other technology or technical field can signal eligibility, see MPEP 2106.05(a), and provides examples of improvements to computer functionality, MPEP 2106.05(a)(I), and improvements to any other technology of technical field, MPEP 2106.05(a)(I). “In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool”. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. Id. The court concluded the claims were not directed to an abstract idea, but rather an improvement to computer functionality. Id. It was the specification' s discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility. 822 F.3d at 1339, 118 USPQ2d at 1691. The claim was not simply the addition of general-purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691. Unlike Enfish, the instant claimed invention appears to improve upon a judicial exception rather than a problem in the software arts or computer technology. Rather than improving a computer's algorithm (i.e., solving a technically based problem), the claimed invention purports to solve the non-technological problem of medical systems and facilities lacking communication and shared knowledge with other neighboring or similarly situated facilities ([0008] of the specification) by adjusting a parameter of a surgical instrument for use in a surgical procedure. Examiner asserts the problem outlined by the applicant does not point to any issue with the functionality of comparable software-based surgical technologies or instruments; rather, the problem seems to be directed towards lack of communication and shared knowledge. One of the main/glaring issues with the present invention is that the problem solved by the applicant is not a technological problem. The problem pointed out by the applicant does not fall within any of the considerations set forth by the courts of inventions that integrate a judicial exception into a practical application (MPEP 2106.04). All the applicant is doing is applying existing/generic computer components on new data and calling it an improvement.
The examiner asserts the following facts which the applicant has not been able to dispute:
1) the invention does NOT involve a novel algorithm or data structure that significantly improves the computer's functionality,
2) the invention does NOT involve a new hardware component or configuration that works with the computer to achieve a specific technical benefit, and
3) the computer is NOT used in a completely new way demonstrating a significant technical advancement.
An improvement to the abstract idea is not an improvement to computer technology. Thus, examiner does not see how the present claims improve the functioning of a computer or provide improvements to any other technology or technical field. The claimed invention appears similar to the example of improvements that are insufficient to show an improvement in computer-functionality such as arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly, Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019). See MPEP 2106.05(a)(I)(viii). There is no indication in the specification that the operations recited invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (fed Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). Most importantly, in DDR Holdings & unlike the present claims, the claims at issue specified how interactions with the Internet were manipulated to yield a desired result—a result that overrode the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. 773 F.3d at 1258; 113 USPQ2d at 1106. The examiner also points out that there is no indication in the specification that the claimed invention affects a transformation or reduction of a particular article to a different state or thing. Furthermore, examiner also points out that improving efficiency/performance ([0040] & [0293] of the specification) and improving speed ([0257] of the applicant’s specification) are not sufficient to show an improvement in computer functionality as set forth by the courts in Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015); claiming the improved speed or efficiency inherent with applying the abstract idea on a computer does not integrate a judicial exception into a practical application or provide an inventive concept. This further supports the examiner’s assertion that the present invention does not integrate the abstract idea into a practical application. With respect to claim 42, examiner asserts that the claim language is a results-oriented claim language that describes what the invention achieves without detailing how it actually achieves it; thus, it is ineligible under USC 101. To show an involvement of a computer assists in improving technology, the claims must recite details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology (MPEP 2106.05(a)(II)). In Finjan, Inc. v. Blue Coat Systems the courts found that the claims were “directed to a non-abstract improvement in computer functionality…” (MPEP 2106.04(d)). The present invention still does not meet the condition set forth by the courts and thus is not integrated into a practical application.
With respect to Step 2B, the same “apply it” analysis as well as the well-
understood, routine, conventional analysis was performed with court case
citations, which didn’t result in the claims being eligible under USC 101. In
comparison to Bascom, examiner points out that Bascom is not similar to the
present application because Bascom claimed a technical improvement in the art
i.e., a technology-based solution to filter content on the internet while the present
application is not presenting an improvement to computer technology (as
indicated above). Furthermore, the use of a computer or other machinery in its ordinary capacity for economic or other tasks or simply adding a general-
purpose computer or computer components after the fact to an abstract idea
does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253,
1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI
Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744,
1748 (Fed. Cir. 2016) (computer server and telephone unit). The "significantly
more" standard has not been satisfied. The applicant has not demonstrated that
their invention is in fact inventive; thus, the present invention is not patent-eligible
under USC 101. The applicant has not demonstrated that their invention is inventive, and thus the present invention is still not patent eligible under USC 101. Therefore, the USC 101 rejection is maintained.
Regarding the USC 103 rejection, applicant’s arguments have been considered but are moot since they do not apply to the newly cited references of record: Shelton IV and Aldridge.
Prior Art Cited but Not Relied Upon
Franke, S., Rockstroh, M., Hofer, M., & Neumuth, T. (2018). The intelligent OR: design and validation of a context-aware surgical working environment. International Journal of Computer Assisted Radiology and Surgery, 13, 1301-1308.
This reference is relevant because is discloses an intelligent surgical working environment for endoscopic ear–nose–throat surgery.
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 WINSTON FURTADO whose telephone number is (571)272-5349. The examiner can normally be reached Monday-Friday 8:00 AM to 4:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mamon Obeid can be reached at (571) 270-1813. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WINSTON R FURTADO/Examiner, Art Unit 3687
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