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 1 is objected to because of the following informalities: as to claim 1, line 12, the semicolon after the word “order” has been deleted and should be reinserted. 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 1, 6 and 8 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.
As to claim 1,
a) term “the endoscope inserted into a lumen” (lines 6-7) lacks antecedent basis. Only an “endoscope…inserted into an examinee” has been previously claimed;
b) term “the shape category” (line 18) lacks antecedent basis. Both a “shape category” estimated from the shape data and a “shape category” estimated using the endoscope image are previously claimed.
As to claim 6, except for a minor difference in wording, it appears that the steps recited in claim 6 are redundant steps that were added to claim 1, thus making it unclear if they further limit claim 1 or not.
As to claim 8, except for a minor difference in wording, it appears that the steps recited in claim 6 are redundant steps that were added to claim 1, thus making it unclear if they further limit claim 1 or not.
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 1-3 and 5-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As to claim 1, the claim(s) recite(s) “acquire an endoscope image captured by the endoscope”, “detect that the endoscope has been inserted into an examinee”, “acquire shape data to identify an insertion shape of the endoscope inserted into a lumen”, “identify a starting point of the shape data based on the endoscope image”, “estimate any one of a plurality of shape categories in the insertion shape from the shape data”, “output display information in the estimated shape category in chronological order”, “estimate any one of the plurality of shape categories further using the endoscope image”, “control display of the output display information on a display apparatus”, “normalize the shape data based on posture data”, “input the normalized shape data into a learned model”, “acquire the shape category as output”, “compare shape categories to which relative elapsed times from examination starting time points correspond”, “calculate presence or absence of a difference in chronological order”, and “display the shape categories so as to make a drawing on a two-dimensional graph by aligning the examination starting time points”.
The limitation of “detect that the endoscope has been inserted into an examinee”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or with aid of pen and paper, but for the recitation of generic computer components. For example, but for the “memory/processor” language, the “detecting” in this claim encompasses observation by a user to determine when the endoscope is inserted into the patient. Thus, the “detecting” function amounts to an abstract idea that falls within the mental process group of concepts performed in the human mind, including observation, evaluation, judgement, and opinion. If a claim limitation, under its broadest reasonable interpretation, covers performance of the abstract idea but for the recitation of generic computer components (“memory/processor”), then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The limitation of “identify a starting point of the shape data based on the endoscope image”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or with aid of pen and paper, but for the recitation of generic computer components. For example, but for the “memory/processor” language, the “identifying” in this claim encompasses observation by a user to determine when the procedure/lumen insertion starts. Thus, the “identifying” function amounts to an abstract idea that falls within the mental process group of concepts performed in the human mind, including observation, evaluation, judgement, and opinion. If a claim limitation, under its broadest reasonable interpretation, covers performance of the abstract idea but for the recitation of generic computer components (“memory/processor”), then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The limitation of “estimate any one of a plurality of shape categories in the insertion shape from the shape data”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or with aid of pen and paper, but for the recitation of generic computer components. For example, but for the “memory/processor” language, the “estimating” in this claim encompasses a user estimating/deciding on a shape category after reviewing the shape data. Thus, the “estimating” function amounts to an abstract idea that falls within the mental process group of concepts performed in the human mind, including observation, evaluation, judgement, and opinion. If a claim limitation, under its broadest reasonable interpretation, covers performance of the abstract idea but for the recitation of generic computer components (“memory/processor”), then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The limitation of “estimate any one of a plurality of shape categories further using the endoscope image”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or with aid of pen and paper, but for the recitation of generic computer components. For example, but for the “memory/processor” language, the “estimating” in this claim encompasses a user estimating/deciding on a shape category after reviewing the endoscope image. Thus, this “estimating” function amounts to an abstract idea that falls within the mental process group of concepts performed in the human mind, including observation, evaluation, judgement, and opinion. If a claim limitation, under its broadest reasonable interpretation, covers performance of the abstract idea but for the recitation of generic computer components (“memory/processor”), then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The limitation of “compare shape categories to which relative elapsed times from examination starting time points correspond”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or with aid of pen and paper, but for the recitation of generic computer components. For example, but for the “memory/processor” language, the “estimating” in this claim encompasses a user estimating/deciding on a shape category after reviewing the endoscope image. Thus, this “estimating” function amounts to an abstract idea that falls within the mental process group of concepts performed in the human mind, including observation, evaluation, judgement, and opinion. If a claim limitation, under its broadest reasonable interpretation, covers performance of the abstract idea but for the recitation of generic computer components (“memory/processor”), then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The limitation of “normalize the shape data based on posture data”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of a mathematical concept in the mind and/or with aid of pen and paper, but for the recitation of generic computer components. For example, but for the “memory/processor” language, the “normalizing” in this claim encompasses a user setting the starting point identified above as the origin (e.g. 0,0,0) for all shape data (mathematical concept for coordinate data). Thus, this “normalizing” function amounts to an abstract idea that falls within the mathematical concepts/mental process groups of concepts performed in the human mind, including observation, evaluation, judgement, and opinion. If a claim limitation, under its broadest reasonable interpretation, covers performance of the abstract idea but for the recitation of generic computer components (“memory/processor”), then it falls within the “Mathematical concepts”/“Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The limitation of “input the normalized shape data into a learned model” provides nothing more than mere instructions to implement the abstract idea on a generic computer. See MPEP 2106.05(f). MPEP 2016.05(f) provides the following considerations for determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer: (1) whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished; (2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and (3) the particularity or generality of the application of the judicial exception. The “learned model” is used to generally apply the abstract idea without placing any limits on how the learned model functions. Rather, these limitations only recite the outcome of “input the normalized shape data” and do not include any details about how the “inputting” is accomplished. See MPEP 2106.05(f). In addition, this type of limitation merely confines the use of the abstract idea to a particular technological environment (neural networks) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h).
The limitation of “calculate presence or absence of a difference in chronological order”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of a mathematical concept in the mind and/or with aid of pen and paper, but for the recitation of generic computer components. For example, but for the “memory/processor” language, the “calculating” in this claim encompasses a user determining if there is a difference in the time order between events. Thus, this “calcuating” function amounts to an abstract idea that falls within the mathematical concepts/mental process groups of concepts performed in the human mind, including observation, evaluation, judgement, and opinion. If a claim limitation, under its broadest reasonable interpretation, covers performance of the abstract idea but for the recitation of generic computer components (“memory/processor”), then it falls within the “Mathematical concepts”/“Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because, in particular, the claim only additionally recites (a) a memory and processer; (b) “acquire an endoscope image captured by the endoscope”; (c) “detect that the endoscope has been inserted into an examinee”; (d) the step of “acquire shape data to identify an insertion shape of an endoscope inserted into a lumen”, (e) the step of “output display information in the estimated shape category in chronological order”; (f) “control display of the output display information on a display apparatus”; (g) “acquire the shape category as output”; and (h) display the shape categories so as to make a drawing on a two-dimensional graph by aligning the examination starting time points”. The processor and memory are recited at a high level of generality (i.e. as a generic processor performing a generic computer function of executing instructions stored in memory) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract ideas into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The steps of “acquiring an endoscope image”, “detecting”, “acquiring shape data” and “outputting”, “controlling display”, “acquiring the shape category”, and “display the shape categories” are mere “data gathering” and “outputting” recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2016.05(g) (“whether the limitation is significant”). In addition, all uses of the recited judicial exception require such data gathering and output, and, as such, these limitations do not impose any meaningful limits on the claim. These limitations amount to necessary data gathering and outputting.
Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application, and the claim is directed to the judicial exception.
Furthermore, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the above mentioned steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. In addition, the recitations of “acquiring”, “controlling”, “displaying” and “output display information” are recited at a high level of generality, amount to receiving or transmitting data by a computer, and are well-understood, routine, conventional activity.
Even when taken in combination, these additional elements represent mere instruction to implement an abstract idea or other exception on a computer and insignificant extra-solution activity, which do not provide an inventive concept. Claim 1 is not patent eligible.
Claims 18 and 19 are rejected for the same reasons as claim 1, as set forth above, the only difference being that the statutory claim category recited in these claims is directed to a method for implementing the abstract idea and a non-transitory computer-readable medium storing a program for implementing the abstract idea, respectively.
As to claims 2 and 3, the steps of “outputting” in these claims amount to additional necessary post-solution activity and do not add a meaningful limitation to the estimating process, based on the analysis applied above with respect to claim 1. Thus, these steps, recited at a high level of generality, amount to receiving or transmitting data by a computer and are well-understood, routine, conventional activity, amounting to insignificant extra-solution activity that does not amount to an inventive concept.
Claim 5 recites additional “estimating” functions that amount to an abstract idea that falls within the mental process group of concepts performed in the human mind, including observation, evaluation, judgement, and opinion, based on the analysis applied above with respect to claim 1, and thus is not patent eligible for the same reasons.
Claims 6-8 recite additional functions (i.e. identifying, normalizing, estimating, and recording) that amount to an abstract idea that falls within the mental process group of concepts performed in the human mind, including observation, evaluation, judgement, and opinion, based on the analysis applied above with respect to claim 1, and thus is not patent eligible for the same reasons.
Claims 9-15 recites additional functions (i.e. receiving, registering, storing, outputting, evaluating, searching) that amount to additional necessary post-solution activity and do not add a meaningful limitation to the estimating process, based on the analysis applied above with respect to claim 1. Thus, these steps, recited at a high level of generality, amount to receiving, transmitting, reviewing or storing data by a computer and are well-understood, routine, conventional activity, amounting to insignificant extra-solution activity that does not amount to an inventive concept.
Claim 16 recites additional functions (i.e. identifying) that amount to an abstract idea that falls within the mental process group of concepts performed in the human mind, including observation, evaluation, judgement, and opinion, based on the analysis applied above with respect to claim 1. This claim also recites “outputting”, amounting to additional necessary post-solution activity and do not add a meaningful limitation to the estimating process, based on the analysis applied above with respect to claim 1. Thus, these steps, recited at a high level of generality, amount to receiving, transmitting, reviewing or storing data by a computer and are well-understood, routine, conventional activity, amounting to insignificant extra-solution activity that does not amount to an inventive concept.
Claim 17 further recites “estimating any one of the plurality of shape categories from the acquired shape data using a learned model learned from learning data labeled with the shape category on each of a plurality of pieces of shape data”. This limitation provides nothing more than mere instructions to implement the abstract idea on a generic computer. See MPEP 2106.05(f). MPEP 2016.05(f) provides the following considerations for determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer: (1) whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished; (2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and (3) the particularity or generality of the application of the judicial exception. The “learned model” is used to generally apply the abstract idea without placing any limits on how the learned model functions. Rather, these limitations only recite the outcome of “estimating any one of the plurality of shape categories” and do not include any details about how the “estimating” is accomplished. See MPEP 2106.05(f). In addition, this type of limitation merely confines the use of the abstract idea to a particular technological environment (neural networks) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h).
Response to Arguments
Applicant's arguments filed February 2, 2026 have been fully considered but they are not persuasive.
Regarding the previous 103 rejections, Applicant argues that, in view of the amendments to claims 1, 18 and 19, the prior art of record, including Tanaka and Graetzel, fails to explicitly teach or fairly suggest, alone or in combination, all of the features of claims 1, 18 and 19. The Examiner agrees. Accordingly, the previous rejections over Tanaka in view of Graetzel have been withdrawn.
Regarding the previous 101 rejections, Applicant argues that certain of the features added to the claim via amendment cannot be practically performed in the human mind. The Examiner respectfully disagrees. A revised 101 rejection that addresses the newly added features appears above.
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 JOHN P LEUBECKER whose telephone number is (571)272-4769. The examiner can normally be reached Generally, M-F, 5:30-2:00.
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/JOHN P LEUBECKER/Primary Examiner, Art Unit 3795
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