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 .
Claim Objections
Claim 38 is objected to because of the following informalities: a colon should be added after the term “comprising” in line 1 of claim 38. Appropriate correction is required.
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 29-48 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.
Regarding claim 29, the phrase “the individual” in line 11 lacks proper antecedent basis. For this examination, the phrase (and all other instances of the phrase “the individual” throughout the claims) is being interpreted as “the subject”. Further regarding claim 29, the phrase “the level of asymmetry” lacks proper antecedent basis. It is unclear what the claimed level of asymmetry is related to. For this examination, the phrase is being interpreted as a level of asymmetry of any part of the subject’s body. The same indefiniteness issues and interpretation also apply to claim 43.
Regarding claims 37, 39, 46, and 47, it is unclear what a “traverse circumference” is. Each “traverse circumference” phrase is being interpreted as “transverse circumference”.
Regarding claim 38, the phrase “each leg” lacks proper antecedent basis. For this examination, the phrase is being interpreted as “each leg of the subject”. Further regarding claim 38, the phrase “the neck” lacks proper antecedent basis. For this examination, the phrase is being interpreted as “the neck of the subject”. The same indefiniteness issues and interpretation also apply to claim 40.
Regarding claim 41, the phrase “from the hip to the shoulder” renders the claim indefinite as the subject has a right hip and a left hip, and a right shoulder and a left shoulder. For this examination, the phrase is being interpreted as “from the hips to the shoulders”. The same indefiniteness issues and interpretation also apply to claim 48.
Regarding claim 43, the claim recites that the system comprises a scanner “in operative communication with” a computing device, and then recites further functional limitations directed towards the non-positively recited computing device. It is unclear in claim 43 whether or not the computing device is part of the claimed system as it is not positively recited as being part of the claimed system. The same indefiniteness issues apply to claims 46-48 as they, too, recite limitations directed to the non-claimed computing device. For this examination, claim 43 is being interpreted as if the system includes the computing device.
Claims not explicitly rejected above are rejected due to their dependence on a rejected 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 29-48 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 29 follows.
Regarding claim 29, the claim recites a series of steps or acts, including scanning a torso of a subject, making assessments based on the scans, and identifying scoliosis based on the assessments. 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 (1) assessing three-dimensional topographic scans to determine a trunk shift, a coronal balance, a clavicle angle, and an angle of trunk rotation, and (2) identifying whether a subject has scoliosis via the trunk shift, the coronal balance, the clavicle angle, the angle of trunk rotation, or a level of asymmetry set forth a judicial exception. These steps describe a concept 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 29 fails to recite any output or use of/application of identifying whether the subject has scoliosis. The identification alone 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 identification, nor does the method use a particular machine to perform the Abstract Idea. It is noted that claim 29 fails to recite any structural element configured to perform the assessing step or the identifying step. Each of these steps is capable of being performed entirely mentally.
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 scanning a torso of a subject in both an upright position and in a bending forward position. The scanning steps are each recited at a high level of generality such that they amount to insignificant presolution activity, e.g., mere data gathering steps 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 them from well-understood, routine, and conventional data gathering 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 obtaining and assessing and identifying steps 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 claim 43, the device recited in the claim is a generic device comprising generic components configured to perform the Abstract Idea. The recited scanner is a generic sensor configured to perform pre-solutional data gathering activity, and the computing device is 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 either data gathering (the types of scans taken), or steps that are also capable of being performed mentally and/or by hand. With specific regard to claims 35 and 36, the steps recited in the claims are capable of being performed mentally and/or by hand. With specific regard to claims 37-42 and 46-48, each of the calculating, identifying, estimating, demarcating, comparing, and determining steps are capable of being performed mentally and/or by hand. The scanning, assessing, and identifying steps recited in the independent claims maintain a high level of generality even when considered in combination with the dependent claims.
Examiner’s Note
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shechtman et al.’839 (US Pub No. 2005/0148839) teaches a method and system for assessment of scoliosis, wherein an angle of trunk rotation is measured and used to identify scoliosis. Shechtman et al.’899 (US Pub No. 2007/0149899) teaches a method and system for assessment of scoliosis, wherein an angle of trunk rotation is measured and used to identify scoliosis. Zheng et al.’914 (US Pub No. 2011/0021914) teaches a method and system for assessment of scoliosis, wherein a three dimensional image is analyzed to determine scoliosis. Akimoto et al.’522 (US Pub No. 2014/0303522) teaches a method and system for assessment of scoliosis, wherein a three dimensional image is analyzed to determine scoliosis. Gupta et al.’860 (US Pub No. 2018/0070860) teaches a method and system for assessment of scoliosis, wherein a coronal balance and clavicle angle are determined and used to identify scoliosis. Kanai et al.’148 (US Pub No. 2019/0117148) teaches a method and system for assessment of scoliosis, wherein a three dimensional scan is analyzed to identify scoliosis. Kimmel et al.’945 (US Pub No. 2021/0345945 teaches a method and system for assessment of scoliosis, wherein a three dimensional optical scan is analyzed to identify scoliosis. Zhang et al.’018 (US Pub No. 2022/0254018) teaches a method and system for assessment of scoliosis, wherein a pre-trained neural network is used to analyze a three dimensional scan in order to identify scoliosis. In general, the prior art teaches identifying whether an individual has scoliosis based on a coronal balance, a clavicle angle, and/or an angle of trunk rotation.
The following is a statement of reasons for the lack of prior art rejections:
Regarding claim 29, none of the prior art discloses or suggests, either alone or in combination, a method for assessment of scoliosis wherein the method comprises assessing an upright three-dimensional topographic scan to determine a trunk shift, in combination with the other claimed elements.
Regarding claim 43, none of the prior art discloses or suggests, either alone or in combination, a system for assessment of scoliosis wherein the system comprises a scanner in operative communication with a computing device, the computing device configured to assess an upright three-dimensional topographic scan to determine a trunk shift, in combination with the other claimed elements.
It is noted that according to the filed Specification, a “trunk shift” is defined as a shift in a midpoint of a first axial line located at the hip or pelvis and a midpoint of a third axial line located at an area of the trunk with largest deformity.
Conclusion
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/ETSUB D BERHANU/Primary Examiner, Art Unit 3791