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 .
Formal Matters
Applicant's response, filed 14 November 2025, has been fully considered. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Status of Claims
Claims 1-20 are currently pending and have been examined.
Claims 1-20 have been amended.
Claims 1-20 have been rejected.
Priority
The instant application does not claim the benefit of priority under 35 U.S.C 119(e) or under 35 U.S.C. § 120, 121, or 365(c) to any prior applications. Accordingly, the effective filing date for the instant application is 18 May 2022.
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 1-20 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 – Statutory Categories of Invention:
Claims 1-20 are drawn to a system, method, or device which are statutory categories of invention.
Step 2A – Judicial Exception Analysis, Prong 1:
Independent claim 1 recites a computing system, independent claim 14 recites a method, and independent claim 20 recites a non-transitory computer-readable medium in part performing the steps of obtaining surgical procedure data associated with a patient; annotating the surgical procedure data with surgical context data to generate annotated surgical procedure data; parse the annotated surgical procedure data to identify a data need associated with a subsequent target system task; determine a subset of the annotated surgical procedure data based on the data need, wherein the subset of the annotated surgical procedure data enables a target system to perform the subsequent target system task; generating a data package that comprises the subset of the annotated surgical procedure data; and sending the data package to the target system.
These steps of receiving surgical system data for annotation and dissemination to remote users amount to methods of organizing human activity which includes functions relating to interpersonal and intrapersonal activities, such as managing relationships or transactions between people, social activities, and human behavior; satisfying or avoiding a legal obligation; advertising, marketing, and (MPEP § 2106.04(a)(2)(II)(C) citing the abstract idea grouping for methods of organizing human activity for managing personal behavior or relationships or interactions between people similar to iii. a mental process that a neurologist should follow when testing a patient for nervous system malfunctions, In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982) similar to iii. a mental process that a neurologist should follow when testing a patient for nervous system malfunctions, In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982) – also note MPEP § 2106.04(a)(2)(II) stating certain activity between a person and a computer may fall within the “certain methods of organizing human activity” grouping).
Dependent claim 2 recites, in part, determine the surgical context data based on the biometric data wherein the surgical context data comprises an indication of the current surgical procedure step in a surgical procedure, and an indication of the subsequent target system task.
Dependent claim 3 recites, in part, wherein the data package, when sent to the target system, reduces a delay associated with performing the subsequent target system task.
Dependent claim 4 recites, in part, determine the data need further based on at least one of prioritization data, system utilization data, or hierarchical segmentation information.
Dependent claim 5 recites, in part, determine a risk level based on the biometric data, wherein the data need is further determined based on the risk level.
Dependent claim 6 recites, in part, determine a classification associated with a portion of the subset of the annotated surgical procedure data; and redact the portion of the subset of the annotated surgical procedure data based at least on the classification, wherein the data package is generated in response to the redaction.
Dependent claim 7 recites, in part, wherein the classification is associated with private or outlier data.
Dependent claim 8 recites, in part, redact a portion of the subset of the annotated surgical procedure data based on a determination that the portion of the subset of the annotated surgical procedure data is private data, and that the target system is outside a patient data privacy protection boundary, wherein the data package is generated in response to the redaction.
Dependent claim 9 recites, in part, the subset of the annotated surgical procedure data is stored before the portion of the subset of the annotated surgical procedure data is redacted.
Dependent claim 10 recites, in part, wherein the data need is associated with a determination of a parameter that adjusts control of a surgical stapler while transecting a fissure.
Dependent claim 11 recites, in part, wherein the target system is a billing system, wherein the subsequent target system task is associated with automatically assigning billing codes to respective completed surgical tasks, and wherein the data need comprises one or more of surgical procedure steps, performed surgical tasks, surgical instruments used, or surgical consumables used.
Dependent claim 12 recites, in part, wherein the target system is a surgical instrument, wherein the subsequent target system task is associated with using the surgical instrument, and wherein the data need comprises data associated with using the surgical instrument based on the biometric data.
Dependent claim 13 recites, in part, wherein the target system is a facility system, wherein the subsequent target system task is facility maintenance, and wherein the data need comprises one or more of surgical instruments used, surgical consumables used, a surgical procedure plan, or a surgical procedure schedule.
Dependent claim 15 recites, in part, determining the surgical context data based on the biometric data wherein the surgical context data comprises an indication of the current surgical procedure step in a surgical procedure, and an indication of the subsequent target system task.
Dependent claim 16 recites, in part, wherein the data package reduces a delay associated with performing the subsequent target system task.
Dependent claim 17 recites, in part, determining a classification associated with a portion of the subset of the annotated surgical procedure data, and wherein the classification is associated with private data or outlier data; and reading the portion of the subset of the annotated surgical procedure data based at least on the classification, wherein the data package is generated in response to the redaction.
Dependent claim 18 recites, in part, redacting a portion of the subset of the annotated surgical procedure data based on determining that that the portion of the subset of the annotated surgical procedure data is private data, and that the target system is outside a patient data privacy protection boundary, wherein the data package is generated in response to the redaction.
Dependent claim 19 recites, in part, wherein the target system is a surgical system, wherein the subsequent target system task is associated with a parameter that operated the surgical instrument, and wherein the data need comprises data associated with an adjustment to the parameter based on the biometric data.
Each of these steps of the preceding dependent claims only serve to further limit or specify the features of independent claims 1 or 14 accordingly, and hence are nonetheless directed towards fundamentally the same abstract idea as the independent claim and utilize the additional elements analyzed below in the expected manner.
Step 2A – Judicial Exception Analysis, Prong 2:
This judicial exception is not integrated into a practical application because the additional elements within the claims only amount to instructions to implement the judicial exception using a computer [MPEP 2106.05(f)].
Claim 1 recites a surgical computing system comprising a processor. Claim 20 recites a computer-readable medium. The specification provides a plurality of generic embodiments for the processor and corresponding computer hardware (see the instant specification in ¶ 0053-55). The use of a surgical computing system comprising a processor OR a computer-readable medium only recites computer hardware as a tool to perform an existing process and only amounts to an instruction to implement the abstract idea using a computer (MPEP § 2106.05(f)(2) see case requiring the use of software to tailor information and provide it to the user on a generic computer within the “Other examples.. v.”).
Claim 1, 14, and 20 recite cause the target system to perform the subsequent target system task based on the subset of the annotated surgical procedure data. At the high level of generality claimed, the limiations amount to an attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, and does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it" (MPEP 2106.05(f)(I) see Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015))
Claims 9 and 18 recite store the subset of the annotated surgical procedure data into a local storage. The limitations are only recited as a tool which only serves as output of the data determined from the abstract idea (MPEP § 2106.05(g) - insignificant post-solution activity that amounts to post-solution output on a well-known display device) and is therefore not a practical application of the recited judicial exception.
The above claims, as a whole, are therefore directed to an abstract idea.
Step 2B – Additional Elements that Amount to Significantly More:
The present claims do not include additional elements that are sufficient to amount to more than the abstract idea because the additional elements or combination of elements amount to no more than a recitation of instructions to implement the abstract idea on a computer.
Claim 1 recites a surgical computing system comprising a processor. Claim 20 recites a computer-readable medium. Claim 1, 14, and 20 recite cause the target system to perform the subsequent target system task based on the subset of the annotated surgical procedure data. Each of these elements is only recited as a tool for performing steps of the abstract idea, such as the use of the storage mediums to store data, the computer and data processing devices to apply the algorithm, and the display device to display selected results of the algorithm. These additional elements therefore only amount to mere instructions to perform the abstract idea using a computer and are not sufficient to amount to significantly more than the abstract idea (MPEP 2016.05(f) see for additional guidance on the “mere instructions to apply an exception”).
Each additional element under Step 2A, Prong 2 is analyzed in light of the specification’s explanation of the additional element’s structure. The claimed invention’s additional elements do not have sufficient structure in the specification to be considered a not well-understood, routine, and conventional use of generic computer components. Note that the specification can support the conventionality of generic computer components if “the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” (Berkheimer in III. Impact on Examination Procedure, A. Formulating Rejections, 1. on p. 3).
Claims 9 and 18 recite store the subset of the annotated surgical procedure data into a local storage. The courts have decided that receiving or transmitting data over a network as well-understood, routine, conventional activity when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (MPEP § 2106.05(d)(II) other types of activities example i. receiving or transmitting data over a network, OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network).
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Their collective functions merely provide conventional computer implementation.
Claims 1-20 are therefore rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-9 and 12-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Makrinich et al. (US Patent App No 2021/0313052)[hereinafter Makrinich].
Claim 1 is rejected because Makrinich teaches on all elements of the claim:
a surgical computing system comprising a processor configured to is taught in the Detailed Description in ¶ 0084, ¶ 0322 (teaching on a surgical procedure data database saved on a central processor corrected to remote servers for query);
obtain surgical procedure data assciated with a patient is taught in the Detailed Description in ¶ 0069-70, ¶ 0072, ¶ 0084-85, ¶ 0088, ¶ 0113, ¶ 0132, and ¶ 0153 (teaching on receiving surgical procedure data from a plurality of sensors in a plurality of operating rooms including sound, video, and surgical tool feeds and patient characteristic data to form a database);
annotate the surgical procedure data with surgical context data to generate annotated surgical procedure data is taught in the Detailed Description in ¶ 0089, ¶ 0094-96, and in the Figures at fig. 6 (teaching on labeling each surgical procedure data set in the database and classifying said data set into event categories);
parse the annotated surgical procedure data to identify a data need associated with a subsequent target system task is taught in the Detailed Description in ¶ 0097, ¶ 0102, ¶ 0109, ¶ 0176, and in the Figures at fig. 9 (teaching on querying the database for a particular category in order to perform a particular task related to the category - here to analyze a current surgery and determine if the surgery has deviated from a plan (treated as synonymous to subsequent target system task) );
determine a subset of the annotated surgical procedure data based on the data need is taught in the Detailed Description in ¶ 0097, ¶ 0102, ¶ 0109, ¶ 0176-178, and in the Figures at fig. 9 (teaching on the remote processor (treated as synonymous to the target system) querying the database for a particular category in order to perform a particular task related to the category - here to analyze a current surgery and determine if the surgery has deviated from a plan);
wherein the subset of the annotated surgical procedure data enables a target system to perform the subsequent target system task is taught in the Detailed Description in ¶ 0176-178 and in the Figures at fig. 9 (teaching on determining a follow up task notification to display on the surgical system's interface (treated as synonymous to subsequent target system task));
generate a data package that comprises th subset of the annotated surgical procedure data; and send the data package to the target system is taught in the Detailed Description in ¶ 0097, ¶ 0109, ¶ 0178, ¶ 0322, and in the Figures at fig. 9 (teaching on the remote processor receiving from the database the query results of the surgical procedure data that meets the categorical value related to the current surgery analysis (treated as synonymous to a target system task));
send the data package to the target system to cause the target system to perform the subsequent target system task based on the subset of the annotated surgical procedure data is taught in the Detailed Description in ¶ 0097, ¶ 0109, ¶ 0176-178, ¶ 0322, and in the Figures at fig. 9 (teaching on sending the notification for display on the surgical system's interface wherein the notification is based on the received surgical procedure data).
Claims 14 and 20 are rejected under the same rational.
As per claim 2, Makrinich discloses all of the limitations of claim 1. Makrinich also discloses the following:
the surgical computing system of claim 1, wherein the surgical procedure data comprises biometric data of the patient that is obtained during a current surgical procedure step, and is taught in the Detailed Description in ¶ 0349 (teaching on receiving surgical procedure data including patient characteristic data including "particulars of anatomy of the patient" or any anatomical particulars use to characterize a patient (treated as synonymous to biometric data) to form a database - Examiner notes the instant specification does not include details regarding the "biometric data" only that it is "patient specific surgical data" generally in ¶ 0186 and ¶ 0220);
wherein the processor is further configured to: determine the surgical context data based on the biometric data, wherein the surgical context data comprises an indication of the current surgical procedure step in a surgical procedure, and an indication of the subsequent target system task is taught in the Detailed Description in ¶ 0089, ¶ 0094-96, and in the Figures at fig. 6 (teaching on the surgical procedure data set including classification labels (treated as synonymous to surgical context data) wherein the classification labels include (1) an event tag (treated as synonymous to the procedure step) and (2) are related to the task associated with the remote server query).
Claim 15 is rejected under the same rational.
As per claim 3, Makrinich discloses all of the limitations of claim 2. Makrinich also discloses the following:
the surgical computing system of claim 2, wherein the data package, when sent to the target system, reduces a delay associated with performing the subsequent target system task is taught in the Detailed Description in ¶ 0097, ¶ 0109, ¶ 0176-178, ¶ 0322, and in the Figures at fig. 9 (teaching on sending the notification for display on the surgical system's interface wherein the notification is based on the received surgical procedure data - Examiner notes that the intended use of reducing a delay does not add meaningful limitations to the claim see MPEP § 2144.07 for more detail regarding art recognized suitability for an intended purpose).
Claim 16 is rejected under the same rational.
As per claim 4, Makrinich discloses all of the limitations of claim 1. Makrinich also discloses the following:
the surgical computing system of claim 1, wherein the processor is further configured to determine the data need further based on at least one of prioritization data, system utilization data, or hierarchical segmentation information is taught in the Detailed Description in ¶ 0191-192 (teaching on event sequence threshold value (treated as synonymous to prioritization data) determination needed from the analyzing of the surgical procedure database).
As per claim 5, Makrinich discloses all of the limitations of claim 2. Makrinich also discloses the following:
the surgical computing system of claim 2, wherein the processor is further configured to determine a risk level based on the biometric data, wherein the data need is further determined based on the risk level is taught in the Detailed Description in ¶ 0191-192 and ¶ 0195 (teaching on event sequence threshold value (treated as synonymous to prioritization data of a predetermined acceptable risk level) determination needed from the analyzing of the surgical procedure database).
As per claim 6, Makrinich discloses all of the limitations of claim 2. Makrinich also discloses the following:
the surgical computing system of claim 2, wherein the processor is further configured to: determine a classification associated with a portion of the subset of the annotated surgical procedure data; and redact the portion of the subset of the annotated surgical procedure data based at least on the classification is taught in the Detailed Description in ¶ 0097, ¶ 0102, ¶ 0109, ¶ 0176, and in the Figures at fig. 9 (teaching on the remote processor querying the database for a particular category (treated as synonymous to a first subset) in order to perform a particular task related to the category wherein the system would not include (treated as synonymous to redacting) the data of a non-necessary second category (treated as synonymous to a second subset));
wherein the data package is generated in response to the redaction is taught in the Detailed Description in ¶ 0097, ¶ 0109, ¶ 0176-178, ¶ 0322, and in the Figures at fig. 9 (teaching on sending the notification for display on the surgical system's interface wherein the notification is based on the received surgical procedure data).
Claim 17 is rejected under the same rational.
As per claim 7, Makrinich discloses all of the limitations of claim 6. Makrinich also discloses the following:
the surgical computing system of claim 6, wherein the classification is associated with private data or outlier data is taught in the Detailed Description in ¶ 0089, ¶ 0094-96, ¶ 0320, and in the Figures at fig. 6 (teaching on the first subset of data including labeled surgical procedure data set in the database and classifying said data set into event categories and a second subset of data including patient identification data wherein the patient identification has been anonymized (treated as synonymous to redacted) prior to utilization from remote processors).
As per claim 8, Makrinich discloses all of the limitations of claim 2. Makrinich also discloses the following:
the surgical computing system of claim 2, wherein the processor is configured to: redact a portion of the subset of the annotated surgical procedure data based on a determination that the portion of the subset of the annotated surgical procedure data is private data, and that the target system is outside a patient data privacy protection boundary is taught in the Detailed Description in ¶ 0089, ¶ 0094-96, ¶ 0320, ¶ 0335, and in the Figures at fig. 6 (teaching on the first subset of data including labeled surgical procedure data set in the database and classifying said data set into event categories and a second subset of data including patient identification data wherein the patient identification has been anonymized (treated as synonymous to redacted) prior to utilization from remote processors wherein the local database (treated as synonymous to inside v outside "a boundary") does not anonymize the data prior to storing to the database);
wherein the data package is generated in response to the redaction is taught in the Detailed Description in ¶ 0097, ¶ 0109, ¶ 0176-178, ¶ 0322, and in the Figures at fig. 9 (teaching on sending the notification for display on the surgical system's interface wherein the notification is based on the received surgical procedure data).
As per claim 9, Makrinich discloses all of the limitations of claim 1. Makrinich also discloses the following:
the surgical computing system of claim 8, wherein the processor is configured to: store the subset of the annotated surgical procedure data in a local storage, wherein the subset of the annotated surgical procedure data is stored before portion of the subset of the annotated surgical procedure data is redacted is taught in the Detailed Description in ¶ 0089, ¶ 0094-96, ¶ 0320-321, and in the Figures at fig. 6 (teaching on the first subset of data including labeled surgical procedure data set in the database and classifying said data set into event categories and a second subset of data including patient identification data wherein the patient identification has been anonymized (treated as synonymous to redacted) prior to utilization from remote processors wherein the local database (treated as synonymous to inside v outside "a boundary") does not anonymize the data prior to storing to the database - Examiner notes this is the understood method of a global lookup hash value taught in the instant reference).
Claim 18 is rejected under the same rational as claims 8 and 9.
As per claim 12, Makrinich discloses all of the limitations of claim 2. Makrinich also discloses the following:
the surgical computing system of claim 2, wherein the target system is a surgical instrument, wherein the subsequent target system task is associated with using the surgical instrument, and wherein the data need comprises data associated with using the surgical instrument based on the biometric data is taught in the Detailed Description in ¶ 0089, ¶ 0094-96, ¶ 0217, ¶ 0301, and in the Figures at fig. 6 (teaching on the target remote processor being a remote intra-surgical user device (treated as synonymous to a surgical instrument) and the task being a next operation step using the user device wherein the surgical procedure data set including classification labels (treated as synonymous to surgical context data) wherein the classification labels include an event tag).
As per claim 13, Makrinich discloses all of the limitations of claim 2. Makrinich also discloses the following:
the surgical computing system of claim 2, wherein the target system is a facility system, wherein the subsequent target system task is facility maintenance, and wherein the data need comprises one or more of surgical instruments used, surgical consumables used, a surgical procedure plan, or a surgical procedure schedule is taught in the Detailed Description in ¶ 0089, ¶ 0094-96, ¶ 0185, ¶ 0216, ¶ 0301, and in the Figures at fig. 6 (teaching on target remote processor being a medical facility and the task includes preparing an operating room (treated maintenance task) wherein the surgical procedure data set including classification labels (treated as synonymous to surgical context data) wherein the classification labels include event tags such as preparation, procedure events, and post procedure clean-up).
Claim 19 is rejected under the same rational.
Claim Rejections - 35 USC § 103
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Makrinich et al. (US Patent App No 2021/0313052)[hereinafter Makrinich] in view of Shelton et al. (US Patent App No 20190207773)[hereinafter Shelton].
As per claim 10, Makrinich discloses all of the limitations of claim 2. Makrinich fails to teach the following; Shelton, however, does disclose:
the surgical computing system of claim 2, wherein the data need is associated with a determination of a parameter that adjusts control of a surgical stapler while transecting a fissure is taught in the Detailed Description in ¶ 0323 and ¶ 0363 (teaching on analyzing relevant anonymized historical surgical data packages to determine an adjustment to a stapler parameter when transecting a fissure).
Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself- that is in the substitution of the task being related to a stapler device of Shelton for the generalized target system task of Makrinich. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Makrinich et al. (US Patent App No 2021/0313052)[hereinafter Makrinich] in view of Shelton (US Patent App No 20190207773)[hereinafter Shelton].
As per claim 11, Makrinich discloses all of the limitations of claim 2. Makrinich also discloses the following:
the surgical computing system of claim 2, wherein the target system is a billing system is taught in the Detailed Description in ¶ 0326 (teaching on the target remote processor being an insurance provider (treated as synonymous to a billing system));
wherein the data need comprises one or more of surgical procedure steps, performed surgical tasks, surgical instruments used, or surgical consumables used is taught in the Detailed Description in ¶ 0089, ¶ 0094-96, and in the Figures at fig. 6 (teaching on the surgical procedure data set including classification labels (treated as synonymous to surgical context data) wherein the classification labels include an event tag (treated as synonymous to the procedure steps)).
Makrinich fails to teach the following; Hanning, however, does disclose:
wherein the subsequent target system task is associated with automatically assigning billing codes to respective completed surgical tasks, and is taught in the Detailed Description in ¶ 0039 and in the claims in claim 7 and claim 10 (teaching on a billing code task from annotated surgical data).
One of ordinary skill in the art before the effective filing date of the instant application would combine the billing institution query of Makrinich with the automated billing code task of Hanning with the motivation of “minimize[ing] the effort and time to create the operative note” (Hanning in the Background of the Invention in ¶ 0005).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 14, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent Application No. 17/747,806 in view of Makrinich et al. (US Patent App No 2021/0313052)[hereinafter Makrinich]. Although the claims at issue are not identical, they are not patentably distinct from each other because: claim 14 of the copending application is identical to the instant application’s independent claims while narrower in scope due the nature of the copending claim’s dependency besides the teaching of determine a subset of the annotated surgical procedure data based on the data need wherein the subset of the annotated surgical procedure data enables a target system to perform the subsequent target system task and cause the target system to perform the subsequent target system task based on the subset of the annotated surgical procedure data. Makrinich teaches on the limitations in Detailed Description in ¶ 0097, ¶ 0109, ¶ 0176-178, ¶ 0322, and in the Figures at fig. 9 wherein one of ordinary skill in the art at the time the invention was filed would include the target system performance of the task of Makrinich with the surgical annotation system of U.S. Patent Application No. 17/747,806 with the motivation of “enable[ing] a medical professional to receive support during an ongoing surgical procedure” (Makrinich in the Background Information in ¶ 0004).
Response to Arguments
Applicant's arguments filed 14 November 2025 with respect to 35 USC § 101 have been fully considered but they are not persuasive. First Applicant asserts under Step 2A Prong 1 that a human mind is not able to parse annotated surgical data, generate a data package, or send a data package to a target system. Without commenting on the human mind’s capability to parse or generate data, Examiner has identified the abstract idea as best characterized as a method of organizing human activity wherein the practically of a mental performance is not a part of the analysis – see MPEP § 2106.04(a)(2)(II)(C)).
Next, Applicant asserts that under Step 2A Prong 2 the claims are directed towards a practical application via an improvement to technology, citing the now amended into dependent claims 3 and 16 stating the data package, when sent to the target system, “reduces a delay associated with performing the subsequent target system task”. Examiner disagrees as efficiency is not enough to amount to a practical application via an improvement to computer or technology under Step 2A Prong 2 (see MPEP § 2106.05(a)(I) examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: ii. accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016)) (also see MPEP § 2106.05(f)(2) stating “"claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)”), and, thus, the combination of the generic computer components do not provide a non-conventional and non-generic arrangement of known, conventional pieces; note this is applied to Step 2B as well as Step 2A Prong 2).
Finally, Applicant asserts that the claims amount to an improvement to “anticipating related automated operations” by determining surgical task requirements in advanced and sending the relevant data to a surgical system thereby reducing delays in performing the surgical task. As stated above, applying an abstract idea to a generic computing environment and realizing the improved efficiency inherent in said application is not an improvement to computers or a technological environment.
Applicant's arguments filed 14 November 2025 with respect to 35 USC § 102 have been fully considered but they are not persuasive. Applicant asserts that Makrinich fails to teach on the annotated procedure data enabling the target system to perform a task. Examiner disagrees. Makrinich teaches on sending a follow up task notification for display on the surgical system's interface wherein the notification is based on the received surgical procedure data in Detailed Description in ¶ 0176-178 and in the Figures at fig. 9. The instant claims do not require the target system task to be a specific operation of a machine (like that in amended claim 10) but instead any “task” including a display of a notification generally. Therefore the rejection has been sustained by Examiner.
Applicant has stated that they will address the double patenting rejection when other outstanding rejections and objections are resolved. However, as filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Therefore, an application must not be allowed unless the required compliant terminal disclaimer is filed and/or the withdrawal of the nonstatutory double patenting rejection is made of record by the examiner (see MPEP § 804.02 (IV) for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995). Therefore, the Examiner has updated the provisional nonstatutory double patenting rejection to reflect the amendments made to the claims.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/JORDAN L JACKSON/Primary Examiner, Art Unit 2857