DETAILED ACTION
Acknowledgments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-6 are pending.
This action is Final.
Response to Amendment
The affidavit under 37 CFR 1.132 filed 1/5/2026 is sufficient to overcome the rejection of claims 1-6 based upon 35 U.S.C. 112(a)/(b).
The affidavit under 37 CFR 1.132 filed 1/5/2026 is insufficient to overcome the rejection of claims 1-6 based upon 35 U.S.C. 101 as set forth in the last Office action because: the arguments in totality of the affidavit set forth that the data gathering are well-known, routine, conventional in the art, such that these steps are to insignificant pre-solution activities related to data gathering for the claimed algorithm which recites the judicial exception. The claims and the application make a determination in planning, but do not have any post solution activities being performed in response to the exception steps as the claims stop at planning by predicting post-surgery features determined before any surgery. For example, performing total hip replacement surgery based on the posture rebalance prediction is not a step claimed and does not appear to be within the bounds of the disclosure as filed. However, the claims, and application as-filed, stop at the prediction. The rejections are respectfully maintained.
Response to Arguments
The examiner acknowledges applicant’s submission of amendments to the claims and affidavit filed 1/5/2026.
Applicant’s arguments regarding the rejections of the claims under 35 U.S.C. 112 have been fully considered and are partially persuasive due to the amendment/affidavit/arguments. However, the amendments introduce new matter.
Applicant’s arguments regarding the rejections of the claims under 35 U.S.C. 101 have been fully considered but are not persuasive. The arguments in totality of the affidavit set forth that the data gathering are well-known, routine, conventional in the art, such that these steps are to insignificant pre-solution activities related to data gathering for the claimed algorithm which recites the judicial exception. The claims and the application make a determination in planning, but do not have any post solution activities being performed in response to the exception steps as the claims stop at planning by predicting post-surgery features determined before any surgery. For example, performing total hip replacement surgery based on the posture rebalance prediction is not a step claimed and does not appear to be within the bounds of the disclosure as filed. However, the claims, and application as-filed, stop at the prediction. The rejections are respectfully maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are 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.
Claim 1 has been amended to recite the limitations “sending the evaluation imaging data, the fixed flexion deformity information of bilateral hip joints and the evaluation result of functionality of hip extension muscle clusters to a processor”, and performing steps of the claimed method “by the processor” which is rejected for being new matter. While applicant states that no new matte was entered, the remarks do not indicate where support from the original disclosure these amendments can be gleaned from. While obtaining image data by a medical imaging equipment is reasonably implied, there is nothing that implies or is inherent that the data is sent to a processor and that the processor performs the claimed functions as set forth in the amended claims. The disclosure as filed contains no Drawings, and the specification as filed is merely the original claims repeated in identical fashion. As such, the additional inclusion of these structures and steps must be considered new matter. As such, one of skill in the art would not have recognized applicant had possession of the claimed invention at the time the application was effectively filed.
The dependent claims are rejected for depending on a rejected claim.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claim(s) recite(s):
Claim 1
2) performing posture analysis on the evaluation imaging data of full body sagittal posture under different body postures obtained to obtain analysis results of degree of sagittal imbalance and severity of hip abduction deformity of the patient before surgery (mathematical concepts, mental processes)
3) predicting pelvic posture rebalance state in a sagittal plane of the patient after hip replacement surgery according to the analysis results of the degree of sagittal imbalance and the severity of hip abduction deformity as well as the evaluation result of functionality of hip extension muscle clusters of the patient before surgery (mathematical concepts, mental processes)
These claim limitations fall within the identified groupings of abstract ideas:
Mathematical Concepts:
mathematical relationships
mathematical formulas or equations
mathematical calculations
Mental Processes
concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
This judicial exception is not integrated into a practical application because:
Under the step 2A, analysis is conducted on the additional features of the claim. Under this analysis, the additional features beyond the judicial exception are:
1) obtaining evaluation imaging data of full body sagittal posture of a patient before surgery under different body postures by a medical imaging equipment, performing physical examination on the patient to obtain fixed flexion deformity information of bilateral hip joints and an evaluation result of functionality of hip extension muscle clusters, and sending the evaluation imaging data, the fixed flexion deformity information of bilateral hip joints and the evaluation result of functionality of hip extension muscle clusters to a processor (steps related to data gathering; insignificant pre-solution activities)
2) 3) by the processor (using computer structures as a tool to implement the exception)
These features in the claim do not integrate the exception into a practical application of the exception as the additional elements in the claim do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is no more than a drafting effort designed to monopolize the exception.
Limitation concepts that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitation concepts that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Under Step 2B, the claim limitations are evaluated for an inventive concept. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and in combination, they do not add significantly more to the exception. Analyzing the additional claim limitations individually, the additional limitation that is not directed to the abstract idea are the same as those identified above in relation to step 2A. Such limitations related to the obtained evaluation imaging data of full body sagittal posture of a patient before surgery under different body postures, and obtained fixed flexion deformity information of bilateral hip joints and an evaluation result of functionality of hip extension muscle clusters through physical examination are recognized by the courts as routine data gathering in order to input data to the mathematical algorithm/mental processes, and thus, do not add a meaningful limitation to the method as it would be routinely used by those of ordinary skill in the art in order to apply the mathematical algorithm/mental process, as argued and evidence presented in the affidavit filed 1/5/2026 that such steps are well-known, routine, and conventional. The computer structures cited above are claimed as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The additional limitations recited in the dependent claims are merely directed to further details of the data gathered, intended results, or to further to further details of the mathematical concepts/mental processes (A more specific abstraction is still an abstraction). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Therefore, analyzing the claims as an ordered combination under the Mayo/Alice analysis the features claimed are directed to patent ineligible limitations.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2007/0083384, US 2015/0088145, US 2017/0128135, US 2020/0168318, US 2021/0369472, US 2021/0059838, US 2022/0249248, US 2023/0285082, US 2023/0368922, US teach related/relevant technology.
No prior art rejections have been applied, but the claims are not allowable due to the rejections under 101/112.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R BLOCH whose telephone number is (571)270-3252. The examiner can normally be reached M-F 11-8 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert (Tse) Chen can be reached at (571)272-3672. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL R BLOCH/Primary Examiner, Art Unit 3791