DETAILED ACTION
Response to Amendment
This action is in response to the amendment filed on May 14, 2025. Claims 10-11 and 21 have been amended. Claim 24 has been added. Claims 1-4, 7-15, and 18-24 have been examined and are currently pending.
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 .
Inventorship
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 1-4, 7-15, and 18-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2019 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 1-4, 7-15, and 18-24 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.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1 is directed to a surgical hub and independent claim 12 is directed to a method.
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Mental Processes
Independent claims 1 and 12 recite the limitations, “detecting a first surgical device in the surgical environment, wherein the first surgical device comprises a first plurality of features, and wherein a surgical hub comprises a plurality of resources; detecting a second surgical device in the surgical environment, wherein the second surgical device comprises a second plurality of features; based on the plurality of resources and the determined surgical context, determining one or more features from the first plurality of features for the first surgical device to perform and one or more features from the second plurality of features for the second surgical device to perform; generating an indication signal, wherein the indication signal is configured to indicate the determined one or more features to a user of the first surgical device and a user of the second surgical device; and transmitting the indication signal to the user of the first surgical device and the user of the second user of the second surgical device.” which are directed to the abstract idea of mental processes. Specifically, the claims are directed to concepts performed in the human mind (e.g., observation, evaluation, and judgment). In the currently pending claims, a person can evaluate a first surgical device and its corresponding features and a second surgical device and its corresponding features in an operating/surgery room. The person can judge or select the features associated with the first and second surgical devices based on resources (e.g., network connectivity, bandwidth, power, etc.) and surgical context. Additionally, a user (e.g., nurse or technician) can notify or inform (e.g., indication signal) another user (e.g., a doctor or surgeon) whether the first and second surgical devices can perform one or more features autonomously in preparation for a surgical procedure. These are steps that can be performed by a human.
PRONG 2: The judicial exception (i.e., an abstract idea) is not integrated into a practical application.
The applicant has not shown or demonstrated any of the requirements described above under "integration into a practical application" under step 2A. Specifically, the applicant's limitations are not "integrated into a practical application" because they are adding words "apply it" with the judicial exception, or mere instructions to implement an abstract idea merely as a tool to perform an abstract idea (see MPEP 2106.05(f)). Additionally, improvements to the functioning of a computer or any other technology or technical field has not been shown or disclosed (see MPEP 2106.05(a)). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the applicant’s limitations are not “significantly more” because they are adding words “apply it” with the judicial exception, or mere instructions to implement an abstract idea merely as a tool to perform an abstract idea (see MPEP 2106.05(f)) and generally linking use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). The applicant’s claimed limitations do not demonstrate an improvement to another technology or technical field, an improvement to the functioning of the computer itself, effecting a transformation or reduction of particular article to a different state or thing. The current application does not amount to 'significantly more' than the abstract idea as described above. The claim does not include additional elements or limitations individually or in combination that are sufficient to amount to significantly more than the judicial exception. Specifically, the individual elements of a processor, surgical hub, first surgical device, and second surgical device amount to no more than implementing an idea with a computerized system and they are adding words “apply it” with the judicial exception, or mere instructions to implement an abstract idea merely as a tool to perform an abstract idea. The additional elements taken in combination add nothing more than what is present when the elements are considered individually. Therefore, based on the two-part Alice Corp. analysis, there are no meaningful limitations in the claims that transform the exception (i.e., abstract idea) into a patent eligible application.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Dependent claims 2-4, 7-11, 13-15, and 18-24 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend. Claims 2 and 13 recite a surgical hub, claims 2-3, 7, 9, 11, 13-14, 18, 20, and 22-24 recite a first surgical device and second surgical device, claims 7-8 and 18-19 recite third surgical device, claims 10 and 21 recite a first surgical instrument and a second surgical instrument and claims 7-9, 11, 22, and 24 recite a processor. Claims 2-3, 7-11, 13-14, and 18-24 do not recite additional elements that amount to significantly more than the judicial exception.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
determine a surgical context associated with the surgical environment;
and based on the plurality of resources and the determined surgical context, determine one or more features from the first plurality of features for the first surgical device to perform and one or more features from the second plurality of features for the second surgical device to perform.
Response to Arguments
Applicant's arguments filed May 5, 2025 have been fully considered but they are not persuasive.
According to applicant’s arguments on page 9 of the remarks discloses, “In the present case, independent claim 1 recites, in part, determining "a surgical context associated with the surgical environment" and, "based on the plurality of resources and the determined surgical context, determin[ing] one or more features from the first plurality of features for the first surgical device to perform and one or more features from the second plurality of features for the second surgical device to perform." The ability to recognize one or more features to be used to configure the surgical device to perform enables improved surgical outcomes for a surgical task.7 Specifically, the one or more features selected for the surgical device to perform may be based on "a higher priority, for example, based on the complexity of the task that is being performed by those features...." Further, the one or more features selected for the surgical device to perform may be based on a higher priority "based on the surgical outcomes of the surgical tasks when performed manually versus automatically."8 The specification further recites that some features may be given a higher priority based on "historical data from past procedures including that task performed by that feature." Such prioritizations, when selecting one or more features, may provide an improved surgical task outcome "when a task is performed autonomously by a feature, and the optimization may therefore prioritize the enablement of that feature to autonomously perform the surgical task."9 As such, areas of improvement for a surgical task and the outcome described in the specification further lead to "improved surgical outcomes, reduced costs, and improved patient satisfaction"10 and/or "improved recovery outcomes, reduced costs, and improved patient satisfaction."11 The specification also provides that prioritizing the selection, as described in the claims, provides "improving the interpretation of sensed and collected data, which would in turn improve the processing accuracy and/or the usage of the data during the course of a surgical procedure."12 Therefore, the specification sets forth an improvement in technology that is also reflected in independent claim 1.” The examiner respectfully disagrees.
The examiner notes limitations directed to higher priority are recited by dependent claim 24 not independent claims 1 and 12. Dependent claim 24 recites the limitations, “determine at least one feature with a high priority associated with the first surgical device to perform, determine at least one feature with a low priority associated with the first surgical device, determine at least one feature with a high priority associated with the second surgical device, and determine at least one feature with a low priority associated with the second surgical device; and determine a feature with the highest priority associated with the first surgical device and determine a feature with the highest priority associated with the second surgical device.” Therefore, independent claims 1 and 12 do not capture or recite limitations directed to the applicant’s alleged improvement.
Under the 2019 Revised Patent Subject Matter Eligibility Guidance, determining whether a claim integrates a judicial exception into a practical application, examiners should consider whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field. Additionally, making this determination, examiners should determine whether there is a technical explanation as to how to implement the invention in the specification and the claim itself reflects the improvement in technology. The recited claims do not recite and reflect an improvement in the technology or technical field as required in the 2019 Revised Patent Subject Matter Eligibility. Specifically, the applicant cites improvements such as the selection one or more features for the surgical device to perform based on higher priority, the selection of the feature(s) the higher priority may be based on historical data from past procedures, and improvement of surgical outcomes. These features are not recited within the body of independent claims 1 and 12. The examiner notes the specification and claims do not provide a technical explanation as how the invention/computer is improved with regards to selecting one or more features for the surgical device to perform based on a higher priority and/or selecting higher priority based on historical data from past procedures. Additionally, the applicant recites in the remarks improvements directed improved recovery outcomes, reduced costs, improve patient satisfaction, and processing accuracy and usage of data. These elements are the intended end result or outcome of the applicant’s invention, but does not address how the improvements are achieved or carried out. Last, there is no explicit recitation of a machine(s) performing critical aspects/improvements within the independent method claim. Therefore, the examiner maintains the rejection.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW L HAMILTON whose telephone number is (571)270-1837. The examiner can normally be reached Monday-Thursday 9:30-5:30 pm EST.
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/MATTHEW L HAMILTON/Primary Examiner, Art Unit 3681