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 .
This Office Action is responsive to the Preliminary Amendment filed 05/24/2022. The Examiner acknowledges the cancellation of claims 1-48 and new claims 49-68. Claims 49-68 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 49-68 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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 49 recites “determine a mode of operation for the flexible elongate instrument from a plurality of modes of operation based on the monitoring, the plurality of modes of operation including a retraction mode, an insertion mode, and a parking mode” at lines 8-10. It is unclear what a parking mode is (i.e., what does it mean for the flexible elongate instrument to be in a parking mode?). The examiner respectfully requests clarification of this claim limitation. For examination purposes, it will be interpreted that in a parking mode, the flexible elongate instrument is stationary. Claims 58-61, 63 and 68 are similarly rejected and interpreted for their respective recitations of “parking mode”.
Dependent claims are similarly rejected and interpreted as their base claim.
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 49-68 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. A streamlined analysis of claim 63 follows.
Regarding claim 63, the claim recites a series of steps or acts, including monitoring movement of a flexible elongate instrument, determining an extent of motion of the flexible elongate instrument based on the monitoring, and determining a mode of operation for the flexible elongate instrument from a plurality of modes of operation based on the monitoring. Thus, the claim is directed to a process, which is one of the statutory categories of invention.
The claim is then analyzed to determine whether it is directed to any judicial exception. The steps of determining an extent of motion of the flexible elongate instrument based on the monitoring, and determining a mode of operation for the flexible elongate instrument from a plurality of modes of operation based on the monitoring set forth judicial exceptions. These steps describe concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Thus, the claim is drawn to a Mental Process, which is an Abstract Idea.
Next, the claim as a whole is analyzed to determine whether the claim recites additional elements that integrate the judicial exception into a practical application. The claim fails to recite an additional element or a combination of additional elements to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception. Claim 63 recites altering a rigidity of the flexible elongate instrument with a rate of rigidity change that is based on an extent of motion in response to a change in the mode of operation, which is merely adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)). The alteration of the rigidity of the flexible elongate instrument does not provide an improvement to the technological field, the method does not effect a particular treatment or effect a particular change based on the altered rigidity of the flexible elongate instrument, nor does the method use a particular machine to perform the Abstract Idea.
Next, the claim as a whole is analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception. Besides the Abstract Idea, the claim recites additional steps of monitoring movement of a flexible elongate instrument. The monitoring step is recited at a high level of generality such that it amounts to insignificant presolution activity, e.g., mere data gathering step necessary to perform the Abstract Idea. When recited at this high level of generality, there is no meaningful limitation, such as a particular or unconventional step that distinguishes it from well-understood, routine, and conventional data gathering and comparing activity engaged in by medical professionals prior to Applicant's invention. Furthermore, it is well established that the mere physical or tangible nature of additional elements such as the monitoring step do not automatically confer eligibility on a claim directed to an abstract idea (see, e.g., Alice Corp. v. CLS Bank Int'l, 134 S.Ct. 2347, 2358-59 (2014)).
Consideration of the additional elements as a combination also adds no other meaningful limitations to the exception not already present when the elements are considered separately. Unlike the eligible claim in Diehr in which the elements limiting the exception are individually conventional, but taken together act in concert to improve a technical field, the claim here does not provide an improvement to the technical field. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, the claim as a whole does not amount to significantly more than the exception itself. The claim is therefore drawn to non-statutory subject matter.
Regarding claims 49 & 68, the devices recited in each claim are generic devices comprising generic components configured to perform the abstract idea. The recited flexible elongate instrument is a generic sensor configured to perform pre-solutional data gathering activity, and the control system and non-transitory machine-readable medium comprising machine-readable instructions that are executed by processors of a control system are configured to perform the Abstract Idea. According to section 2106.05(f) of the MPEP, merely using a computer as a tool to perform an abstract idea does not integrate the Abstract Idea into a practical application.
The dependent claims also fail to add something more to the abstract independent claims as they generally recite method steps pertaining to data gathering. The monitoring step recited in the independent claims maintains a high level of generality even when considered in combination with the dependent claims.
Allowable Subject Matter
Claims 49, 63 & 68 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a list of art that is relevant to applicant’s invention:
US Patent Application Publication 20150011830 –as cited by applicant--, see figs. 2A-2B and 3B, which discloses a flexible elongate shaft, a plurality of wires, and a computer system.
US Patent Application Publication 20190231449 –as cited by applicant--, see figs. 5A-5B, par 0063-0067, which discloses altering the rigidity of a flexible elongate instrument relative to the extent of motion of the flexible elongate instrument.
US Patent Application Publication 20120289777, see fig. 2, which discloses a flexible elongate shaft, plurality of wires, and a computer system.
US Patent Application Publication 20060089531 –as cited by applicant--, see fig. 2A, par 0048-0060, which discloses a flexible elongate shaft, a plurality of wires, and a computer system.
US Patent Application Publication 20090299343, see par 0028, figs. 1, 2A-2B, 3, 4A-4F, which discloses a stiffenable structure of an endoscope that can be transitioned between a flexible and rigid stiffness state.
The following are statements of reasons for the indication of allowable subject matter:
Regarding claim 49, none of the prior art teaches or suggests, either alone or in combination, a control system configured to determine a mode of operation for a flexible elongate instrument from a plurality of modes of operation based on monitoring of the flexible elongate instrument, wherein the plurality of modes of operation include a retraction mode, an insertion mode, and a parking mode, and in response to a change in the mode of operation, alter a rigidity of the flexible elongate instrument with a rate of rigidity change that is based on an extent of motion using one or more of a plurality of wires of the flexible elongate instrument, in combination with the other claimed elements.
Regarding claim 63, none of the prior art teaches or suggests, either alone or in combination, a method comprising determining a mode of operation for a flexible elongate instrument from a plurality of modes of operation based on monitoring of the flexible elongate instrument, wherein the plurality of modes of operation include a retraction mode, an insertion mode, and a parking mode, and in response to a change in the mode of operation, altering a rigidity of the flexible elongate instrument with a rate of rigidity change that is based on an extent of motion using one or more of a plurality of wires of the flexible elongate instrument, in combination with the other claimed steps.
Regarding claim 68, none of the prior art teaches or suggests, either alone or in combination, a non-transitory machine-readable medium comprising machine-readable instructions which, when executed by one or more processors of a control system, cause the one or more processors to perform determining a mode of operation for a flexible elongate instrument from a plurality of modes of operations based on monitoring of the flexible elongate instrument, wherein the plurality of modes of operation include a retraction mode, an insertion mode, and a parking mode, and in response to a change in the mode of operation, altering a rigidity of the flexible elongate instrument with a rate of rigidity change that is based on an extent of motion using one or more of a plurality of wires of the flexible elongate instrument, in combination with the other claimed steps.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Destiny J Cruickshank whose telephone number is (571)270-0187. The examiner can normally be reached M-F, 9am-6pm.
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/CHARLES A MARMOR II/Supervisory Patent Examiner
Art Unit 3791
/D.J.C./Examiner, Art Unit 3791