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 .
Response to Amendment
This office action is responsive to the amendment filed on March 5, 2026. As directed by the amendment: claim(s) 1, 3, 5, 8-10, and 19-20 have been amended, claim(s) 2, 4, and 6-7 have been cancelled, and no claim(s) have been added. Thus, claims 1, 3, 5 and 8-20 are currently pending in the application.
Response to Arguments
Applicant’s arguments, see pgs. 14-16, filed March 5, 2026, with respect to the 35 U.S.C. 102 and 103 rejection of the claims have been fully considered and are persuasive. The 35 U.S.C. 102 and 103 rejection of the claims has been withdrawn.
Applicant's arguments filed March 5, 2026 have been fully considered but they are not persuasive. The applicant principally argues that the newly amended claims overcome the previous 35 U.S.C. 101 rejection of the claims. The examiner respectfully disagrees. Mainly the applicant argues that the human mind is not equipped to:
receive one or more images
analyze the one or more images using at least one machine learning classifier to identify a surgical tool from a plurality of surgical tools and at least one feature associated with use of the surgical tool
automatically pair the surgical input device with the surgical tool
automatically select a mode of the plurality of modes based on the at least one feature associated with use of the surgical tool
automatically set the surgical tool to operate in the selected mode
The examiner would like to note that these tasks are a mental process and the use of tools does not automatically take the tasks out of a mental process. For example, a person of ordinary skill in the art (POSITA) would receive the images with their eyes, utilize their brain (which is inherently a machine learning classifier) to analyze the images to identify the tools from a plurality of tools, and to pair and select based on what the POSITA has analyzed. Furthermore, a POSITA would be able to automatically do these tasks as they would be familiar with the tools. For instance, if a POSITA received the image of forceps, they would know that these are forceps and would automatically pair the surgical input device and select a mode that is based on the forceps.
Additionally, the MPEP 2106.04(a)(2)(III) states “Claims can recite a mental process even if they are claimed as being performed on a computer. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.”
The applicant further argues that steps that occurs “automatically” are an improvement to the technical field of computer assisted surgery by improving efficiency and reducing the potential for human error in pairing and configuring these pieces of equipment. The examiner respectfully disagrees. Referring to MPEP 2106.04(d), the courts have identified limitations that do not integrate a judicial exception into a practical application “Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f).” Therefore, the examiner is not convinced; and the 35 U.S.C. 101 rejection is maintained with the newly added limitations addressed below.
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, 3, 5 and 8-20 are rejected under 35 U.S.C. 101 because the claimed invention details a system (Step 1) directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In accordance with MPEP 2106.04, each of Claims 1, 3, 5 and 8-20 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 2A, Prong 1 per MPEP 2106.04(a)
Each of Claims 1, 3, 5 and 8-20 recites at least one step or instruction for analyzing images for automatically configuring a surgical tool and a surgical input device for the surgical tool, which is grouped as a mental process in MPEP 2106.04(a)(2)(III) or a certain method of organizing human activity in MPEP 2106.04(a)(2)(II) or mathematical concept in MPEP 2106.04(a)(2)(I). Accordingly, each of Claims 1, 3, 5 and 8-20 recites an abstract idea.
Specifically, Claim 1 recites
A system for automatically configuring a surgical tool and a surgical input device for the surgical tool, the system comprising one or more processors (additional element),configured to cause the system to:
receive one or more images (additional element);
analyze the one or more images using at least one machine learning classifier to identify, the surgical tool from a plurality of surgical tools and at least one feature associated with use of the surgical tool (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
automatically pair the surgical input device with the surgical tool, the surgical tool having a plurality of modes in which the surgical tool can operate (additional element)
automatically select a mode of the plurality of modes based on the at least one feature associated with use of the surgical tool; and(observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
automatically set the surgical tool to operate in the selected mode. (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III)).
Similarly, Claim 19 recites
A method for automatically configuring a surgical tool and a surgical input device for the surgical tool, the method comprising:
receiving one or more images (additional element);
analyzing the one or more images using at least one machine learning classifier to identify, the surgical tool and at least one feature associated with use of the surgical tool (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
automatically pairing the surgical input device with the surgical tool, the surgical tool having a plurality of modes in which the surgical tool can operate (additional element)
automatically selecting a mode of the plurality of modes based on the at least one feature associated with use of the surgical tool; and(observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
automatically setting the surgical tool to operate in the selected mode. (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III)).
Specifically, Claim 20 recites
A non-transitory computer-readable storage medium storing instructions for automatically configuring a surgical tool and a surgical input device for the surgical tool, the instructions configured to be executed by one or more processors of a system to cause the system to:
receive one or more images (additional element);
analyze the one or more images using at least one machine learning classifier to identify, the surgical tool and at least one feature associated with use of the surgical tool (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
automatically pair the surgical input device with the surgical tool, the surgical tool having a plurality of modes in which the surgical tool can operate (additional element)
automatically select a mode of the plurality of modes based on the at least one feature associated with use of the surgical tool; and(observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
automatically set the surgical tool to operate in the selected mode. (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III)).
Step 2A, Prong 2 per MPEP 2106.04(d)
The above-identified abstract idea in each of independent Claims 1, 19 and 20 (and their respective dependent Claims 3, 5, 8-18) is not integrated into a practical application under MPEP 2106.04(d) because the additional elements (identified above in independent Claims 1, 19 and 20) either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use according to MPEP 2106.05(h) or represent insignificant extra-solution activity according to MPEP 2106.05(g). More specifically, the additional elements of: processor, images, and instruction are generic and used for data gathering adding insignificant extra-solution activity to the judicial exception in independent Claims 1 and 19-20 (and their respective dependent claims) which do not improve the functioning of a computer, or any other technology or technical field according to MPEP 2106.04(d)(1) and 2106.05(a). Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine according to MPEP 2106.05(b), effect a transformation according to MPEP 2106.05(c), provide a particular treatment or prophylaxis according to MPEP 2106.04(d)(2) or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception according to MPEP 2106.04(d)(2) and 2106.05(e). Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer in accordance with MPEP 2106.05(f). For at least these reasons, the abstract idea identified above in independent Claims 1, 19 and 20 (and their respective dependent claims) is not integrated into a practical application in accordance with MPEP 2106.04(d).
Moreover, the above-identified abstract idea is not integrated into a practical application in accordance with MPEP 2106.04(d) because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process) using rules (e.g., computer instructions) executed by a computer (e.g., external programming device or computer as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer according to MPEP 2106.05(f). Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims according to MPEP 2106.05(a). That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 1, 19 and 20 (and their respective dependent claims) is not integrated into a practical application under MPEP 2106.04(d)(I).
Accordingly, independent Claims 1, 19 and 20 (and their respective dependent claims) are each directed to an abstract idea according to MPEP 2106.04(d).
Step 2B per MPEP 2106.05
None of Claims 1, 3, 5, 8-20 include additional elements that are sufficient to amount to significantly more than the abstract idea in accordance with MPEP 2106.05 for at least the following reasons.
These claims require the additional elements of: processor, images, and instruction. The above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, MPEP 2106.05(d)(II) along with Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Per Applicant’s specification, [0060] and [0139] details the use of a processor/computing system that can be any suitable processor-based system such as a personal computer, workstation server, phone, tablet or etc. that they are generic and commercially available. Further, in applicant’s specification [0054] the images are captured utilizing an image capture device that can include any image sensor such as a camera that is generic and commercially available. Per Applicant’s specification, [0080]-[0081] and [0140], details a display device that displays the suggested actions (e.g. pairing surgical and the output can be on an output device or display device such as a monitor, display or touch screen and etc. that is generic and commercially available.
Accordingly, in light of Applicant’s specification, the claimed term computer is reasonably construed as a generic computing device. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available technology, with their already available basic functions, to use as tools in executing the claimed process. See MPEP 2106.05(f).
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for computers. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a) (see MPEP 2106.05(d)(I)(2) and 2106.07(a)(III)). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications along with MPEP 2106.05(d)(I)).
The recitation of the above-identified additional limitations in Claims 1, 19 and 20 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See MPEP 2106.05(f) along with Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. See MPEP 2106.05(a) along with McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, per MPEP 2106.05(a), the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the method and system of Claims 1, 3, 5, and 8-20 are directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself or providing a technical solution to a problem in a technical field according to MPEP 2106.05(a), or (ii) providing meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e).
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1, 19 and 20 (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment according to MPEP 2106.05(h). When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment according to MPEP 2106.05(h). When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e). Moreover, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity according to MPEP 2106.05(g). As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application as required by MPEP 2106.05.
Therefore, for at least the above reasons, none of the Claims 1, 3, 5, and 8-20 amounts to significantly more than the abstract idea itself. Accordingly, Claims 1, 3, 5, and 8-20 are not patent eligible and rejected under 35 U.S.C. 101.
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 JESSANDRA F HOUGH whose telephone number is (571)270-7902. The examiner can normally be reached Monday-Thursday 7 am - 4 pm.
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, David Hamaoui can be reached at (571)270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Jessandra Hough June 6, 2026
/J.F.H./Examiner, Art Unit 3796
/William J Levicky/Primary Examiner, Art Unit 3796
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