DETAILED CORRESPONDENCE
Prosecution is hereby reopened in accordance with the decision of the Pre-Appeal Brief Conference mailed 07/23/2026. The following grounds of rejection are set forth in view of the issues considered during the Pre-Appeal Conference.
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 .
Status of claims
Claims 10 and 20-33 are cancelled. Claims 1-9, 11-19, and 34-35 are pending and considered below.
Claim Rejections - 35 USC § 112
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, claim 1 recites “dynamically revise, during the procedure, the procedure plan based on the comparison; and automatically adjust, during the procedure, a configuration of the robot-assisted manipulator based on the revised procedure plan.”
The specification discloses at paragraph [0034] that the results of an evaluation may be used during implementation of a procedure to “adjust, modify, update, or otherwise recalculate” subsequent stages of the procedure plan so that the procedure plan may be dynamically responsive to observations, sensor data, and other inputs. The specification further discloses at paragraph [0028] the recommended set-up information for the robot-assisted manipulator, including the recommended placement of the manipulator and a recommended manipulator set up joint arrangement. Additionally, paragraph [0042] discloses configurations of the robot-assisted manipulator, including manipulator arm configuration, medical instrument configuration, and joint configuration, and discloses that motors of the manipulator may move in response to commands from the control system.
However, paragraphs [0028], [0034], and [0042] do not describe automatically adjusting, during the procedure, a configuration of the robot-assisted manipulator based on a procedure plan that has been dynamically revised as a result of the claimed comparison between the kinematic information obtained during implementation of the procedure and the planned kinematic information. Instead, paragraph [0034] describes revising subsequent stages of the procedure plan based on an evaluation, and paragraphs [0028] and [0042] describe manipulator set-up, configuration, and operation. The specification does not describe the claimed functional relationship in which the dynamically revised procedure plan is used to automatically adjust the configuration of the robot-assisted manipulator during the procedure.
Accordingly, the specification fails to reasonably convey to one of ordinary skill in the art that the inventor had possession of the subject matter of claim 1 at the time of filing.
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 1-9, 11-19, and 34-35 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Under step 1, the analysis is based on MPEP 2106.03, and claims 1-9, 11-19, and 34-35 drawn to a system. Thus, each claim, on its face, is directed to one of the statutory categories (i.e., useful process, machine, manufacture, or composition of matter) of 35 U.S.C. §101.
Step 2A Prong One
Claim 1 recites the limitations of generate a procedure plan for performing the procedure with a robot-assisted manipulator, wherein the procedure plan is based on a first plurality of procedure inputs and includes planned kinematic information; generate a performance metric based on the received sensor information from the implementation of the procedure, wherein the performance metric includes kinematic information about the robot-assisted manipulator during the implementation of the procedure; evaluate, during the procedure, the implementation of the procedure based on the performance metric to generate an implementation score by comparing the kinematic information about the robot-assisted manipulator during the implementation of the procedure to the planned kinematic information from the procedure plan; and dynamically revise, during the procedure, the procedure plan based on the comparison. These limitations, as drafted, are processes that, under their broadest reasonable interpretations, cover performance of the underlying processes in the human mind or by using a pen and paper. Specifically, the underlying processes encompass reviewing the procedure inputs to generate a procedure plan, reviewing the received information to determine a performance metric, comparing the actual kinematic information to the planned kinematic information to evaluate performance and generate an implementation score, and revising the procedure plan based on the comparison. These steps constitute observations, evaluations, comparisons, and judgments that can practically be performed in the human mind.
Although the claim requires these operations to be performed by computer-readable instructions executed by a processor, the underlying processes of reviewing information, comparing actual information to planned information, evaluating the results of the comparison, generating a score representing that evaluation, and revising a plan based on the evaluation are processes that can practically be performed in the human mind. The use of a computer to perform these mental processes does not remove the limitations from the mental processes grouping. Specifically, the recited comparison and evaluation constitute observation and evaluation of information, while generating the implementation score and revising the procedure plan based on the comparison constitute judgments made based on that evaluation. The nominal recitation of a processor and a memory having computer readable instructions stored thereon does not take the claim limitations out of the mental processes grouping because the processor and memory merely provide a technological mechanism for performing the recited information analysis, comparison, evaluation, and plan revision. Accordingly, the claim recites a mental process, which is an abstract idea.
Under Step 2A Prong Two
The claimed limitations, as per claim 1, include:
a sensor located in a medical environment and configured to detect sensor information from an implementation of a procedure;
a processor; and a memory having computer readable instructions stored thereon, the computer readable instructions, when executed by the processor, cause the system to:
generate a procedure plan for performing the procedure with a robot-assisted manipulator, wherein the procedure plan is based on a first plurality of procedure inputs and includes planned kinematic information;
receive the sensor information detected by the sensor in the medical environment;
generate a performance metric based on the received sensor information from the implementation of the procedure, wherein the performance metric includes kinematic information about the robot-assisted manipulator during the implementation of the procedure;
evaluate, during the procedure, the implementation of the procedure based on the performance metric to generate an implementation score by comparing the kinematic information about the robot-assisted manipulator during the implementation of the procedure to the planned kinematic information from the procedure plan;
dynamically revise, during the procedure, the procedure plan based on the comparison; and
automatically adjust, during the procedure, a configuration of the robot-assisted manipulator based on the revised procedure plan.
Examiner Note: underlined elements indicate additional elements of the claimed invention identified as performing the steps of the claimed invention.
The judicial exception expressed in claim 1 is not integrated into a practical application. The claim further recites the additional elements: a sensor configured to detect sensor information from an implementation of a procedure; a processor; a memory having computer readable instructions stored thereon; receive the sensor information detected by the sensor in the medical environment; and automatically adjust, during the procedure, a configuration of the robot-assisted manipulator based on the revised procedure plan.
The limitations of a sensor configured to detect sensor information from an implementation of a procedure and receive the sensor information detected by the sensor in the medical environment are recited at a high level of generality (i.e., as a general means of collecting and receiving information for subsequent analysis and evaluation) and amount to mere data gathering. The sensor merely provides the information used to generate the recited performance metric, comparison, and evaluation, without requiring particular sensor configuration or technological improvement to the manner in which the sensor information is detected or received. Accordingly, these limitations constitute insignificant extra-solution activity (MPEP 2106.05(g)).
The limitations of a processor and a memory having computer readable instructions stored thereon merely apply the abstract idea using generic computer components performing their ordinary functions of receiving and processing information and executing instructions. The processor and memory are used as tools to perform the recited planning, analysis, comparison, evaluation, and revision and do not reflect an improvement to the functioning of the computer itself. Accordingly, these limitations amount to merely using a computer as a tool to perform the abstract idea (MPEP 2106.05(f)).
Additionally, the abstract idea is merely carried out in a particular technological environment or field, specifically, a medical environment in which a robot-assisted procedure is performed. The claim generally limits the recited procedure planning, performance evaluation, comparison, and plan revision to the context of a robot-assisted medical procedure, but fails to contain meaningful limitations beyond generally linking the use of the abstract idea to this particular technological environment. Specifically, the additional elements recite a sensor located in the medical environment and the performance of certain operations during the procedure, which specify the environment in which the information is collected and the abstract processes are performed. These limitations merely confine that abstract idea to a particular field of a robot-assisted medical procedure instead of describing an improvement to the functioning of the sensor, computer, or other technology or technical field. Accordingly, merely limiting the recited abstract idea to its performance in a medical environment during a robot-assisted procedure does not integrate the judicial exception into a practical application (MPEP 2106.05(h)).
Further, the limitation of automatically adjust, during the procedure, a configuration of the robot-assisted manipulator based on the revised procedure plan recites the result of automatically adjusting the configuration of the robot-assisted manipulator in accordance with the revised procedure plan. Although this limitation applies the result of the recited planning, comparison, evaluation, and revision to the robot-assisted manipulator, the claim does not reflect an improvement to the functioning of the robot-assisted manipulator or to another technology or technical field. Rather, the limitation applies the result of the abstract information analysis and plan revision in the technological environment of a robot-assisted medical procedure (MPEP 2106.05(f)).
When considered as an ordered combination, the additional elements do not integrate the judicial exception into a practical application. The sensor and receiving limitations gather the information used in the recited evaluation, the processor and memory provide generic computer components for performing the recited information processing, and the medical environment and robot-assisted procedure generally provide the particular technological environment in which the judicial exception is applied. The automatic adjustment of the robot-assisted manipulator applies the result of the recited planning, comparison, evaluation, and revision without an improvement to the functioning of the computer or robot-assisted manipulator or to another technology or technical field. Thus, considered individually and as an ordered combination, the additional elements do not impose a meaningful limit on the judicial exception or integrate the judicial exception into a practical application. Accordingly, the claim is directed to the abstract idea.
Therefore, under step 2A, the claims are directed to the abstract idea, and require further analysis under Step 2B.
Under step 2B
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed with respect to Step 2A, Prong Two the abstract idea is merely carried out in a technical environment or field, however fails to contain meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea.
As discussed with respect to Step 2A, Prong Two, the additional elements comprise generic computing components (i.e., a processor and a memory having computer readable instructions stored thereon) performing well-understood functions of receiving, storing, and processing information and executing computer-readable instructions. Accordingly, these generic computer components merely provide the conventional computer implementation for performing the recited abstract processes and do not provide an inventive concept sufficient to amount to significantly more than the judicial exception.
As noted in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016), merely collecting information for analysis without a technological improvement does not add significantly more to an abstract idea. The use of the claimed system is no more than collecting and receiving sensor information before performing the recited analysis, comparison, and evaluation of the information, and the sensor is used according to its ordinary function of detecting information for subsequent processing. This data gathering activity, in combination with the generic computer implementation of the abstract idea, does not provide an inventive concept sufficient to amount to significantly more than the judicial exception.
Additionally, the limitation of “automatically adjust, during the procedure, a configuration of the robot-assisted manipulator based on the revised procedure plan” merely applies the results of the abstract idea to the robot-assisted manipulator (MPEP 2106.05(f)). Specifically, after performing the recited planning, comparison, evaluation, and revision, the claim merely instructs that the resulting revised procedure plan be applied by automatically adjusting a configuration of the robot-assisted manipulator. Therefore, the limitation amounts to an instruction to “apply” the result of the abstract idea in the context of a robot-assisted medical procedure, without reciting additional features that provide an inventive concept to the manner in which the adjustment is accomplished. The limitation recites only the desired result of automatically adjusting the configuration based on the revised procedure plan, instead of a specific technological implementation that transforms the abstract idea into patent-eligible subject matter. Accordingly, this limitation does not amount to significantly more than the judicial exception.
Viewed individually and as an ordered combination, the additional elements do not provide an inventive concept sufficient to transform the judicial exception into patent-eligible subject matter. Instead, the sensor collects information used in the abstract analysis, the processor and memory provide generic computer implementation of the recited information processing, and the automatic adjustment limitation applies the result of that processing to the robot-assisted manipulator without adding a technological improvement or other meaningful limitation sufficient to amount to significantly more than the judicial exception. See Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017).
Claims 2-5, 7-9, 11-17, and 34 recite no further additional elements, and only further narrow the abstract idea. The previously identified additional elements, individually and as a combination, do not integrate the narrowed abstract idea into a practical application for reasons similar to those explained above, and do not amount to significantly more than the narrowed abstract idea for reasons similar to those explained above.
Claims 6, 18-19, and 35 recite the additional elements of to display the procedure plan on a display device in an environment of the robot-assisted manipulator (claim 6), the computer readable instructions (claims 6, 18-19, and 35), store the implementation score (claim 19), and to display, during the procedure, the implementation score as performance feedback on the display device (claim 35). However, these additional element amount to implementing an abstract idea on a generic computing device, mere linking to a particular environment, or merely displaying a result (i.e., an insignificant extra-solution activity)). As such, these additional elements, when considered individually or in combination with the previously identified additional elements, do not integrate the abstract idea into a practical application or amount to significantly more than the abstract idea.
Thus, as the dependent claims remain directed to a judicial exception, and as the additional elements of the claims do not amount to significantly more, the dependent claims are not patent eligible.
Therefore, the claims here fail to contain any additional element(s) or combination of additional elements that can be considered as significantly more and the claims are rejected under 35 U.S.C. 101 for lacking eligible subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jiang et al. (Jiang et al., Evaluation of robotic surgery skills using dynamic time warping, 2017, Computer Methods and Programs in Biomedicine,152, pages 71–83. (Year: 2017)) teaches a method for objectively evaluating surgical skills in robot-assisted minimal invasive surgeries by comparing actual instrument tip trajectories with predefined optimal trajectories using dynamic time warping to generate performance evaluations and provide real time feedback to surgical trainees.
Jiang et al., Evaluation of robotic surgery skills using dynamic time warping, 2017, Computer Methods and Programs in Biomedicine,152, pages 71–83. (Year: 2017)
Lacal et al. (U.S. Patent Publication US/2019 0151031 A1) teaches a computer implemented method that analyzes data from prior robotic medical procedures to identify patterns and automatically generate and display guidance for performing a future robotic procedure on a patient.
Mitra et al. (U.S. Patent Publication 2021/0322148 A1) teaches a surgical planning method for planning and placing a ligament graft by capturing knee joint kinematics with tracking markers and probes, generating a 3D knee model, and computing a graft tunnel surgical plan based on the collected motion and anatomical data.
Farley et al. (U.S. Publication 2021/0307833 A1) teaches a method for determining patient-specific implant parameters by generating and updating surgical plans based on preoperative and intraoperative input factors such as using initial transfer functions, ultimately guiding implant selection for the patient.
Farley (U.S. patent 12,127,791) teaches a computer-implemented method for updating a surgical plan for joint implant placement by selecting performance equations from a library, calculating and graphically displaying output responses across parameter ranges, receiving user selected parameter values, and updating the surgical plan, accordingly.
Couture (U.S. patent 11,967,422) teaches a system that uses robotic surgical device and a processor to generate and provide real-time, intraoperative recommendations to a surgeon based on past surgical information.
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/K.R.L./Examiner, Art Unit 3685
/KAMBIZ ABDI/Supervisory Patent Examiner, Art Unit 3685
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