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 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 1-2, 4-13, 15-16, 23-24, and 26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more.
As to claim 1, the claim(s) recite(s) acquiring a shape data sequence representing a temporal change of a shape category of an endoscope scope inserted into the body, determining, based on the shape data sequence, a target category suitable as a transition destination of the shape category of the endoscope scope, and outputting target information that is information regarding the target category, wherein determining the target category includes: acquiring, from state transition models and as corresponding to a currently used insertion method, a state transition model, each of the state transition models representing respective ones of time transition patterns of shape categories of the endoscope scope defined for each of a plurality of insertion methods of the endoscope scope, the currently used insertion method being one of the plurality of insertion methods, and the shape category being one of the shape categories; and determining the target category using the acquired state transition model.
The limitation of “determining, based on the shape data sequence, a target category suitable as a transition destination of the shape category of the endoscope scope”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, but for the recitation of generic computer components. For example, but for the “processor/computer” language, this “determining” step in this claim encompasses a user recognizing/recalling the next shape category (target category) of the endoscope based on what is known to be the next shape in the sequence (e.g. a known shape or path of the colon). The limitation of “determining the target category using the acquired state transition model”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, but for the recitation of generic computer components. For example, but for the “processor/computer” language, this “determining” step in this claim encompasses a user making a judgement as to the target category after evaluating data acquired from a state transition model. Thus, the “determining” functions in this claim amount to abstract ideas that fall 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 (“processor”), then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites abstract ideas.
This judicial exception is not integrated into a practical application because, in particular, the claim only additionally recites (a) a memory and processer; (b) the steps of “acquire a shape data sequence…” and “acquiring…a state transition model”, and (c) the step of “output target information that is information regarding the target category”. 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 limitations of “acquiring” and “outputting” are mere data gathering and outputting steps 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 and thus, 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 does 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 acquiring, determining, and outputting 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 “acquire a shape data sequence”, “acquiring…a state transition model”, and “output target information” are recited at a high level of generality, amount to receiving or transmitting data by a computer, and are well-understood, routing, 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. Therefore, claim 1 is not patent eligible.
As to claims 2 and 4-6, these claims further recite that the “determining” recitation “inputs the shape data sequence to a trained identification model” (claim 2), additional abstract ideas related to data gathering from the “state transition model”, and “determining” processes that can be in the human mind, including observation, evaluation, judgement, and opinion. These recitations, as a whole, and based on the analysis applied above with respect to claim 1, are nothing more than mere instructions to implement an abstract idea on a generic computer without placing any limits on how the “trained identification model” function. Additionally, these recitations merely indicate a field of use or technological environment in which the judicial exception is performed and thus fails to add an inventive concept to the claims. See MPEP 2106.05 (h). Claims 2 and 4-6 are not patent eligible.
Claim 7-8 further recites that the “determining” performs certain decision making determinations which covers performance of the limitation in the mind, but for the recitation of generic computer components. Thus, the “determining” functions, based on the analysis applied above with respect to claim 1, amount to an abstract ideas 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 (“processor”), then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims are not patent eligible.
Claims 9-11 further define the “target information” that is output, and based on the analysis applied above with respect to claim 1, does not integrate the recited judicial exception into a practical application of the exception or amount to significantly more than the recited exception, i.e. whether an additional element, or combination of additional elements adds to the inventive concept of the claim. Thes claims are not patent eligible.
Claims 12-13 and 15-16 are rejected for the same reasons as claims 1-2 and 4-5 as set forth above, the only difference being that the statutory claim category recited in these claims is directed to a method executed by a computer.
Claims 23-24 and 26 are rejected for the same reasons as claims 1-2 and 4 as set forth above, the only difference being that the claims are directed to a non-transitory computer readable medium storing a program.
Response to Arguments
Rejections and objections from the previous Office Action that have not been repeated in this Office Action should be considered as addressed or corrected, and thus hereby withdrawn.
Applicant's arguments filed October 28, 2025 have been fully considered but they are not persuasive.
Regarding the 35 USC 101 rejection, Applicant argues that the claims are patent eligible under 35 USC 101 because the claims provide an improvement to endoscope technology or technical field of endoscopy. Applicant points to specification paragraphs [0002]-[0008], [0061]-[0072], and other portions of the specification as describing problems in the technological field regarding the decision as to which shape the endoscope should take within the body. However, a review of these paragraphs as well as other portions of the specification neither explicitly or implicitly assert that a “problem” exists in the art or that the disclosed abstract ideas provide any particular improvement in the art. In fact, the determination as to how to bend an endoscope so as to take on a particular shape is not a technical problem at all. Deciding on which way to bend the endoscope relies on at least the shape of the lumen being accessed (which is known by a user), the particular insertion method being used (which is known by a user), and the images of the lumen in front of the endoscope being displayed to a user. With this immediately available information, a user can easily determine which shape (which way the endoscope needs to be bent) the endoscope should take to navigate the lumen. Applicant has not demonstrated, within the disclosure of the application or in the instant remarks, where the problem exists OR how the claimed invention provides a “solution” (or improvement) to any particular associated problem. Instead, the instant application merely discloses and claims a particular way to achieve a desired outcome. It is important to note that the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. MPEP 2106.05(a).
Therefore, the 35 USC 101 rejections have been maintained.
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