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, 5-11, 15, 21, 25, and 32-35 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) acquiring a shape data sequence representing a temporal change of a shape data of an endoscope scope, determining an insertion method used for insertion of the endoscope scope based on the shape data sequence, and outputting insertion method information regarding the determined insertion method, computing, for each of a plurality of insertion methods of the endoscope scope, a likelihood that the insertion method is used based on the shape data sequence, determining the insertion method being used based on the computed likelihood, acquiring, for each of the plurality of insertion methods, a state transition model representing a pattern of a temporal change of a shape of the endoscope scope in a case where the insertion method is used, computing a likelihood that the insertion method is used based on a degree of matching between the state transition model and the shape data sequence, displaying, on the display device, the insertion method in a first display manner, and displaying, on the display device, the likelihood in a second display manner different from the first display manner.
The limitations of “determining an insertion method used for insertion of the endoscope scope based on the shape data sequence” and “determining the insertion method being used based on the computed likelihood”, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations in the mind or using pen and paper, but for the recitation of generic computer components. For example, but for the “memory/processor” and “display device” language, the “determining” in this claim encompasses a user recognizing the insertion method after reviewing the temporal change in shape data or computed likelihood. Thus, the “determining” functions amount to an abstract ideas that falls within the mental process group of concepts performed in the human mind, including observation, calculation, evaluation, judgement, and opinion. The limitations of “computing…a likelihood that the insertion method is used based on the shape data sequence” and “computing a likelihood that the insertion method is used based on a degree of matching between the state transition model and the shape data sequence”, as drafted, is are processes that, under its broadest reasonable interpretation, covers performance of the limitations in the mind or using pen and paper, but for the recitation of generic computer components. For example, but for the “memory/processor” and “display device” language, the “computing” in this claim encompasses an unpatentable abstract idea of performing mathematical calculations. 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.
This judicial exception is not integrated into a practical application because, in particular, the claim only additionally recites (a) a memory, processor and display device; (b) the steps of “acquire a shape data sequence representing a temporal change of shape category of an endoscope scope inserted into the body” and “acquiring… a state transition model representing a pattern of a temporal change of a shape of the endoscope scope in a case where the insertion method is used”, and (c) the steps of “output target information that is information regarding the target category or the target position”, “displaying, on the display device, the insertion method in a first display manner”, and “displaying, on the display device, the likelihood in a second display manner different from the first display manner”. 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” , “outputting” and “displaying” (on the display device) 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”). The mere presence of a “display device” to perform the displaying is considered as an insignificant additional element that only adds insignificant extra-solution activity that is well-known, routine and conventional in the technological environment. In addition, all uses of the recited judicial exception require such data gathering and outputting, 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 acquiring, determining, and outputting/displaying 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”, “output target information”, and “displaying” are recited at a high level of generality, amount to receiving, transmitting, and displaying 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. Claim 1 is not patent eligible.
As to claims 5-6, further recites that the “determining” performs certain decision making and mathematical determinations which covers performance of the limitation in the mind or by pen and paper, but for the recitation of generic computer components. Thus, the further defined “determining” functions in these claims, based on the analysis applied above with respect to claim 1, amounts to an abstract idea that falls within the mental process group of concepts performed in the human mind, including observation, calculation, 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 7 and 9 further define the “information” used in the method, 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. Thus, these claims are not patent eligible.
Claim 8 further recites “inputting the shape data sequence to a trained identification model that is configured to output 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 “trained identification model” is used to generally apply the abstract idea without placing any limits on how the trained identification model functions. Rather, these limitations only recite the outcome of “determining the insertion method” and do not include any details about how the “determining” 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).
Claim 10 further defines the “shape data” used in the method, 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. Thus, these claims are not patent eligible.
Claims 11 and 15 are rejected for the same reasons as claims 1 and 5 as set forth above, the only difference being that the statutory claim category recited in these claims is directed to a method.
Claims 21 and 25 are rejected for the same reasons as claims 1 and 5 as set forth above, the only difference being that the claims are directed to a non-transitory computer readable medium storing a program.
As to claims 32-35, recites further “determining” steps of performing certain decision making and mathematical determinations which covers performance of the limitation in the mind or by pen and paper, but for the recitation of generic computer components. Thus, the further defined “determining” functions in these claims, based on the analysis applied above with respect to claim 1, amounts to an abstract idea that falls within the mental process group of concepts performed in the human mind, including observation, calculation, evaluation, judgement, and opinion. The further “displaying” steps are mere data organization 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 organizing and outputting, and, as such, these limitations do not impose any meaningful limits on the claim. These limitations amount to necessary data gathering and outputting. 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.
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 December 4, 2025 have been fully considered but they are not persuasive. Applicant argues that the independent claims have been amended to recite a practical application. However, the only additional element that is now claimed is a “display device”, which is considered as an insignificant additional element that only adds insignificant extra-solution activity that is well-known, routine and conventional in the technological environment. In addition, the “display device” is recited at a high level of generality and thus such limitation does not impose any meaningful limits on the claim. Other limitations have been added to the claim that fall under either the abstract idea itself or extra-solution activity (e.g. “displaying”). 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. It is important to note that the judicial exception alone can not provide the improvement or practical application. 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.
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/JOHN P LEUBECKER/Primary Examiner, Art Unit 3795