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 .
Applicant filed a response dated 7/27/2026 in which claims 1, 11-13, 15-19 have been amended, claim 10 has been canceled, and new claim 21 has been added. Thus, the claims 1-9 and 11-21 are pending in the application.
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 and 11-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of determining a duration of a medical procedure without significantly more.
Examiner has identified claim 19 as the claim that represents the claimed invention presented in independent claims 1, 17, and 19.
Claim 19 is directed to a system, which is one of the statutory categories of invention (Step 1: YES).
The claim 19 describes a system comprising: an imaging device configured to acquire at least one image of a patient’s anatomy; a memory configured to store information, the information including patient specific information, clinical data, practitioner specific information, preoperative data received from one or more preoperative measurement systems, and prior procedure data related to a plurality of prior patients that underwent prior procedures; a processor configured to: train a procedure time prediction system to learn one or more patterns or relationships involving the plurality of prior patients using historical imaging data, historical predicted procedure durations, and historical procedure results; execute one or more algorithms to determine, based on the at least one image, at least one parameter of the patient’s anatomy, the parameter including at least one of a B-score determined by quantifying an amount of osteoarthritis damage to a knee joint or a joint-space width; determine, using the procedure time prediction system, and based at least in part on 1) the one or more patterns or relationships involving the plurality of prior patients and 2) the determined at least one parameter and the stored information in the memory, a predicted duration of the medical procedure to be undergone by a patient; determining, based on the predicted duration, an output including at least one of an operating room layout, an operating room schedule, at least one staff member to assist in performance of the medical procedure, a procedure plan, a case difficulty, a risk of infection, a loss of cartilage, or a predicted pain stress level, anxiety level, or mental health status of the patient after the medical procedure; obtain an actual outcome of the medical procedure; and train the procedure time prediction system on the actual outcome of the medical procedure to refine the one or more patterns or relationships involving the plurality of prior patients for use in determining future predicted durations for future medical procedures; and an electronic display configured to display the predicted duration and/or the determined output. These limitations (with the exception of italicized limitations), under their broadest reasonable interpretation, describe the abstract idea of determining a duration of a medical procedure. Furthermore, if a claim limitation, under its broadest reasonable interpretation, covers interactions between people, then it falls within the “certain methods of organizing human activity” grouping of abstract ideas. The additional elements of an imaging device, a memory, measurement systems, a processor, the procedure time prediction system, algorithms, and an electronic display do not necessarily restrict the claim from reciting an abstract idea. Thus, the claim 19 recites an abstract idea (Step 2A-Prong 1: YES).
This judicial exception is not integrated into a practical application because the additional elements of an imaging device, a memory, measurement systems, a controller, the procedure time prediction system, algorithms, and an electronic display result in no more than simply applying the abstract idea using generic computer elements. The additional elements of an imaging device, a memory, measurement systems, a processor, the procedure time prediction system, algorithms, and an electronic display are recited at a high level of generality, and under their broadest reasonable interpretation comprises a generic computing device. The presence of a generic computing device does nothing more than to implement the claimed invention (MPRP 2106.05(f)). The additional limitations of an imaging device, a memory, measurement systems, a processor, the procedure time prediction system, algorithms, and an electronic display are no more than mere instructions to apply the exception using a generic computer element. Therefore, the recitations of additional elements do not meaningfully apply the abstract idea and hence do not integrate the abstract idea into a practical application. Thus, the claim 19 is directed to an abstract idea (Step 2A-Prong 2: NO).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of an imaging device, a memory, measurement systems, a processor, the procedure time prediction system, algorithms, and an electronic display are recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. The additional elements when considered separately and as an ordered combination do not amount to add significantly more as these limitations provide nothing more than to simply apply the exception in a generic computer environment (Step 2B: NO). Thus, the claim 19 is not patent eligible.
Similar arguments can be extended to other independent claims 1 and 17 and hence the claims 1 and 17 are rejected on similar grounds as claim 19.
Dependent claims 2-9, 11-16, 18, and 20-21 further define the abstract idea that is present in their respective independent claims 1, 17, and 19 and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract in nature for the reasons presented above. Dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the claims 2-9, 11-16, 18, and 20-21 are directed to an abstract idea. Thus, the claims 1-9 and 11-21 are not patent-eligible.
Response to Arguments
Applicant's arguments filed dated 7/27/2026 have been fully considered but they are not persuasive due to the following reasons:
With respect to the rejection of claims 1-20 under 35 U.S.C. 101, Applicant states that every functional step recited by each of currently amended independent claims 1, 17, and 19 is performed by a computer or a processor. Thus, Applicant respectfully asserts that the methods and system of currently amended independent claims 1, 17, and 19 do not and cannot be directed to “interactions between people” and therefore do not fall within the “certain methods of organizing human activity” grouping of abstract ideas.
Examiner respectfully disagrees and notes that under Step 2A, Prong 1, the claim is initially considered in the absence of additional elements to determine if the claim recites an abstract idea. The additional elements are then considered in more specific detail under Step 2A, Prong 2 and Step 2B. Even though the claim recites steps performed by a computer or a processor, these recitations do not restrict the claim from reciting an abstract idea. Thus, these arguments are not persuasive.
Applicant also states that the currently amended independent claim 1 reflects the improvement asserted by the specification of the application as filed. For example, currently amended independent claim 1 recites, inter alia, “training, by a computer, a procedure time prediction system to learn one or more patterns or relationships involving a plurality of prior patients using historical imaging data, historical predicted procedure duration, and historical procedure results” and “training, by the computer, the procedure time prediction system on [an] actual outcome of the medical arthroplasty procedure to refine the one more patterns or relationships involving the plurality of prior patients for use in determining future predicted durations for future medical arthroplasty procedures.”
Examiner respectfully disagrees and notes that the claimed invention makes use of technology in predicting/estimating durations for medial arthroplasty procedures. In this way, the technical limitations are utilized as a tool to apply the abstract idea by analyzing the historical data, identify the pattern and mapping the relationship between the historical imaging data, procedure duration and outcome. There is no improvement to technology nor is there any technical improvement. The specification does not identify a technical problem to which a technical solution is needed. If there is an improvement, it is to the abstract idea of predicting duration for medical arthroplasty procedure which is not sufficient to integrate the abstract idea into a practical application. Thus, these arguments are not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 RAJESH KHATTAR whose telephone number is (571)272-7981. The examiner can normally be reached M-F 8AM-5PM.
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RAJESH KHATTAR
Primary Examiner
Art Unit 3684
/RAJESH KHATTAR/Primary Examiner, Art Unit 3684
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