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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Arguments
Applicant's arguments filed December 16, 2025 have been fully considered but they are not persuasive.
Examiner notes that previous prosecution of a parent application has no bearing on the prosecution of the instant application. The instant application must still be examined as per the MPEP.
Examiner notes the terminal disclaimer filed 12/17/2025 has overcome the double patenting rejections.
Regarding the 101 rejection:
Independent claim 16 recites:
determining, by the computer system, from the implant orientation data, a range of motion volume corresponding to orientations between the first implant and the second implant in which the first implant and the second implant do not impinge upon each other; and
determining, by the computer system, whether a required range of motion for the activity is encompassed within the range of motion volume.
Independent claim 26 recites:
determine, from the implant orientation data, a range of motion volume corresponding to orientations between the first implant and the second implant in which the first implant and the second implant do not impinge upon each other, and
determine whether a required range of motion for the activity is encompassed within the range of motion volume.
The above claim limitations are tied to the abstract idea of mental processes in that they are concepts that can be performed in the human mind. This group encompasses concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Examiner notes that nothing from the claims suggests that the limitations cannot be practically performed by a medical, biomedical or engineering professional with the aid of a pen and paper; their knowledge gained from education, background, or experience; or by using a generic computer as a tool to perform mental process steps in real time. Examiner additionally notes that nothing from the claims suggests and undue level of complexity that the mental process steps cannot be practically performed by a human with the aid of a pen and paper, or using a generic computer as a tool to perform the mental process steps. They merely claim a computer system as an additional element which does not provide significantly more.
Examiner had identified the following as additional elements: ‘a computer system’ in claims 16 and 26, ‘obtaining, via a camera communicably coupled to a computer system, implant orientation data by tracking (i) the first implant relative to a bone to which the first implant is mounted and (ii) the second implant;’ in claim 16, ‘a processor’ in claim 26, ‘a memory’ in claim 26, ‘obtain, via the camera, implant orientation data by tracking (i) the first implant relative to a bone to which the first implant is mounted and (ii) the second implant’ in claim 26.
Applicant states on Page 9 of their remarks filed 12/16/2025: “Specifically, the claim is not merely performing mathematical concepts or algorithms, methods of organizing human interactions, or mental processes. Instead, the claim is directed toward determining impacts of multiple implants on a patient. For example, "[a]n aspect of the present invention is to obtain a set of one or more desired activities of a patient who will receive the artificial joint and to judge whether or not the orientation of the first implant part will allow all desired activities."” (Emphasis added).
Examiner reminds Applicant per MPEP 2106.04(a): “The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) 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) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).“ (Emphasis added).
And further per MPEP 2106.04(a)(2) III A:
“Examples of claims that recite mental processes include:
• • a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);” (emphasis added).
Applicant’s own argument clearly is stating that a mental process is being claimed as the claims merely require obtaining a data set and evaluation said data set to make a judgement. This is merely implemented with a generic computer which would not provide significantly more.
Per MPEP 2106.05(a): “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements.” Thus the determining steps cannot provide the improvement given they are the abstract ideas as identified in the 101. Further obtaining implant orientation with a camera is well known in the art and is conventional as can be seen by the prior art listed on the previous PTO-892 and per Paragraph 0053 of Applicant’s published specification which appears to state a camera as being a conventional option for the acquisition of data and further Paragraph 0048 of Applicant’s published specification appears to disclose the computer as being conventional in the art. Thus the additional elements do not provide significantly more.
Applicant’s arguments are not persuasive.
Response to Amendment
Claim Objections
Claims 16 and 26 are objected to because of the following informalities:
-In claims 16 and 26: “orientations” should read “a plurality of orientations”
Appropriate correction is required.
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 16-35 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding Step 1, claims 16-35 are all within at least one of the four categories (claims 16-25 being methods and claims 26-35 being apparatuses).
Regarding Step 2, the independent claim 16 recites:
determining, by the computer system, from the implant orientation data, a range of motion volume corresponding to orientations between the first implant and the second implant in which the first implant and the second implant do not impinge upon each other; and
determining, by the computer system, whether a required range of motion for the activity is encompassed within the range of motion volume.
Independent claim 26 recites:
determine, from the implant orientation data, a range of motion volume corresponding to orientations between the first implant and the second implant in which the first implant and the second implant do not impinge upon each other, and
determine whether a required range of motion for the activity is encompassed within the range of motion volume.
The above claim limitations are tied to the abstract idea of mental processes in that they are concepts that can be performed in the human mind. This group encompasses concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
The claimed steps of determine(ing) can be practically performed in the human mind using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas. Examiner notes that nothing from the claims suggests that the limitations cannot be practically performed by a medical, biomedical or engineering professional with the aid of a pen and paper; their knowledge gained from education, background, or experience; or by using a generic computer as a tool to perform mental process steps in real time. Examiner additionally notes that nothing from the claims suggests and undue level of complexity that the mental process steps cannot be practically performed by a human with the aid of a pen and paper, or using a generic computer as a tool to perform the mental process steps.
Examples of ineligible claims that recite mental processes include:
• a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group, LLC v. Alstom, S.A.;
• claims to “comparing BRCA sequences and determining the existence of alterations,” where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics Corp.
• a claim to collecting and comparing known information, which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC.
See p. 7-8 of October 2019 Update: Subject Matter Eligibility.
Regarding Step 2A (prong 2):
This judicial exceptions (abstract ideas) in claims 16-35 are not integrated into a practical application because:
•The abstract idea amounts to simply implementing the abstract idea on a computer. For example, the recitations regarding the generic computing components for determine(ing) merely invoke a computer as a tool.
•The data-gathering step (obtain(ing)) do not add a meaningful limitation to the method as they are insignificant extra-solution activity.
•There is no improvement to a computer or other technology. “The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process", unlike cases such as Alice where a computer was merely used as a tool to perform an existing process.” MPEP 2106.05(a) II. The claims recite a computer that is used as a tool for obtain(ing) and determine(ing).
•The claims do not apply the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition. Rather, the abstract idea is utilized to determine a relationship among data to provide a medical measurement.
•The claims do not apply the abstract idea to a particular machine. “Integral use of a machine to achieve performance of a method may provide significantly more, in contrast to where the machine is merely an object on which the method operates, which does not provide significantly more.” MPEP 2106.05(b). II. “Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not provide significantly more.” MPEP 2106.05(b) III. The pending claims utilize a computer for determine(ing) The claims do not apply the obtained response measurement to a particular machine. Rather, the data is merely output in a post-solution step.
When considered in combination, the additional elements (i.e. the generic computer functions and conventional equipment/steps) do not amount to significantly more than the abstract idea. Looking at the claim limitations as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Regarding Step 2B:
The additional elements are identified as follows: ‘a computer system’ in claims 16 and 26, ‘obtaining, via a camera communicably coupled to a computer system, implant orientation data by tracking (i) the first implant relative to a bone to which the first implant is mounted and (ii) the second implant;’ in claim 16, ‘a processor’ in claim 26, ‘a memory’ in claim 26, ‘obtain, via the camera, implant orientation data by tracking (i) the first implant relative to a bone to which the first implant is mounted and (ii) the second implant’ in claim 26.
Those in the relevant field of art would recognize the above-identified additional elements as being well-understood, routine, and conventional means for data-gathering and computing, as demonstrated by
Applicant's specification (Pages 11-14) which discloses that the processor and memory comprise generic computer components that are configured to perform the generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry; and
The prior art cited in the parent applications and on the PTO-892
Thus, the claimed additional elements “are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).” Berkheimer Memorandum, III. A. 3. Furthermore, the court decisions discussed in MPEP § 2106.05(d)(ll) note the well-understood, routine and conventional nature of such additional elements as those claimed. See option III. A. 2. in the Berkheimer memorandum.
Per the camera, it is only used to acquired data. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception into a practical application or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011). See MPEP 2106.05(b).
Regarding the dependent claims, the dependent claims are directed to either 1) steps that are also abstract or 2) additional data output that is well-understood, routine and previously known to the industry or 3) further recite additional elements at a high level of generality which are conventional in the art.
Claims 17-25 and 27-35 are steps that are also abstract as a mental process through additional data gathering or analysis or further limiting the abstract ideas recited in the independent claims.
Although the dependent claims are further limiting, they do not recite significantly more than the abstract idea. A narrow abstract idea is still an abstract idea and an abstract idea with additional well-known equipment/functions is not significantly more than the abstract idea.
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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/PATRICK FERNANDES/Primary Examiner, Art Unit 3791