DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The following office action is a Final Office Action in response to the communications received on 08/25/2025.
Claims 1, 2, 4-12 and 17-27 have been amended; claims 3 and 16 have been canceled. Therefore, claims 1, 2, 4-15 and 17-27 are currently pending in this application.
Claim Rejections - 35 USC § 101
3. Non-Statutory (Directed to a Judicial Exception without an Inventive Concept/Significantly More)
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, 2, 4-15 and 17-27 are rejected under 35 U.S.C.101 because the claimed invention is directed to an abstract idea without significantly more.
(Step 1)
The current claims fall within one of the four statutory categories of invention (MPEP 2106.03).
(Step 2A) [Wingdings font/0xE0] Prong-One:
The claim(s) recite a judicial exception, namely an abstract idea, as shown below:
— Considering each of claims 1, 20 and 24 as representative claims, the following claimed limitations recite an abstract idea (note that the term “pictorial” is substituted for the term “virtual” since the term “virtual” is signifying a pictorial representation, as opposed to a physical/real-world representation).
provide: a pictorial room, a pictorial surgical tool, a pictorial display device, and a pictorial navigation system located within the pictorial room; the pictorial navigation system including a pictorial camera unit, a pictorial patient anatomy located within the room; determine a spatial relationship between the pictorial camera unit and the pictorial tool in the pictorial room; determine a spatial relationship between the pictorial camera unit and the pictorial patient anatomy in the pictorial room; and [show] a pictorial representation of the pictorial tool relative to the pictorial patient anatomy on the pictorial display device, wherein the pictorial representation is based on the determined spatial relationship between the pictorial camera unit and the pictorial tool in the pictorial room, and determined spatial relationship between the pictorial camera unit and the pictorial patient anatomy in the pictorial room.
Thus, the limitations identified above recite an abstract idea since the limitations correspond to certain methods of organizing human activity and/or mental processes, which are part of the enumerated groupings of abstract ideas identified according to the current eligibility standard (see MPEP 2106.04(a)). For instance, the current claims correspond to managing personal behavior, such as teaching, wherein a user is presented with one or more visual scenarios regarding a medical procedure; wherein the visual scenario includes pictorial objects that represent; for example: a surgical tool, a camera unit, a patient anatomy, etc., and wherein the user is presented with pertinent visual feedback based on his/her activities, etc.
Similarly, given the limitations that recite the process of presenting one or more pictorial objects—such as: a pictorial object representing a surgical tool, a pictorial object representing a camera unit, a pictorial object representing a patient anatomy, etc., and performing the process of: determining the spatial relationship between the camera unit and the surgical tool in a pictorial room; determining the spatial relationship between the camera unit and the patient anatomy in the pictorial room, etc., the claims also overlap with the group mental processes; such as, an observation, an evaluation, a judgment process, etc.
(Step 2A) [Wingdings font/0xE0] Prong-Two:
The claim(s) recite additional element(s), wherein a computer-based system that comprises a head-mounted device with a display is utilized to facilitate the recited functions/steps regarding: generating/displaying a visual scenario that depicts virtual elements (e.g., “provide, on the display of the head-mounted device, a virtual surgical operating room and a virtual surgical tool, a virtual display device, and a virtual navigation system located within the virtual surgical operating room, the virtual navigation system including a virtual localizer unit; provide on the display of the head-mounted device, a virtual patient anatomy located within the virtual surgical operating room”); analyzing one or more relationships between virtual elements and/or the virtual environment (e.g., “determine a spatial relationship between the virtual camera unit and the virtual surgical tool in the virtual surgical operating room; determine a spatial relationship between the virtual camera unit and the virtual patient anatomy in eh virtual surgical operating room”); generating one or more results based on the analysis above (e.g., “display a virtual representation of the virtual surgical tool relative to the virtual patient anatomy on the virtual display device, wherein the virtual representation is based on the determined spatial relationship between the virtual camera unit and the virtual surgical tool in the virtual surgical operating room, and the determined spatial relationship between the virtual camera unit and the virtual patient anatomy in the virtual surgical operating room”), etc.
However, the claimed additional element(s) fail to integrate the abstract idea into a practical application since the additional element(s) are utilized merely as a tool to facilitate the abstract idea. Thus, when each claim is considered as a whole, the additional element(s) fail to integrate the abstract idea into a practical application since they fail to impose meaningful limits on practicing the abstract idea. For instance, when each of the claims 1, 2, 4-15 and 17-27 is considered as a whole, none of the claims provides an improvement over the relevant existing technology.
The observations above confirm that the claims are indeed directed to an abstract idea.
(Step 2B)
Accordingly, when the claim(s) is considered as a whole (i.e., considering all claim elements both individually and in combination), the claimed additional elements do not provide meaningful limitations to transform the abstract idea into a patent-eligible
practical application of the claimed abstract idea such that the claim(s) amounts to “significantly more” than the abstract idea itself (also see MPEP 2106). The claimed additional elements are directed to conventional computer elements, which are serving to perform conventional computer functions.
Thus, none of claims 1, 2, 4-15 and 17-27, when considered as a whole, recites an element—or a combination of elements—directed to an inventive concept.
It is also worth noting, per the original disclosure, that the claimed invention is directed to a conventional and generic arrangement of the additional elements. For instance, the specification describes a system that implements one or more commercially available conventional devices—such as, a laptop or a desktop computer and a head-mounted display; and thereby, the system presents the user with one or more picture-based training scenarios for interaction ([0071]; [0073]).
In addition, the utilization of the conventional computer/network technology to facilitate the presentation of interactive audio/visual training materials to one or more users, including a training scenario in the form a virtual medical procedure that the user is required to perform using one or more virtual tools/devices, etc., is already directed to a well-understood, routine or conventional activity in the art (e.g. see US 2015/0049081; US 2011/0107270; US 2009/0177452, etc.).
The above observation confirms that the current claimed invention fails to amount to “significantly more” than an abstract idea.
It is worth noting that the above analysis already encompasses each of the current dependent claims (i.e., claims 2, 4-15, 17-19, 21-23 and 25-27). Particularly, each of the dependent claims also fails to amount to “significantly more” than the abstract idea since each dependent claim is directed to a further abstract idea, and/or a further conventional computer element/function utilized to facilitate the abstract idea.
Thus, none of the current claims, when considered as a whole, implements an element—or a combination of elements—directed to an inventive concept (e.g., none of the current claims is reciting an element—or a combination of elements—that provides a technological improvement over the existing/conventional technology).
► Applicant’s arguments directed to section §101 have been fully considered (the arguments filed on 08/25/2025). However, the arguments are not persuasive at least for the following reasons:
Firstly, while referring the streamlined analysis—MPEP 2106.06—Applicant is asserting that “viewed as a whole, amended independent claims 1, 20, and 24 clearly do not seek to tie up any judicial exception such that others cannot practice it. Amended independent claims 1, 20, and 24 are directed to a complex process that recites meaningful recitations that sufficiently limit its practical application so that a full eligibility analysis is not needed. Amended independent claims 1, 20, and 24 are specifically rooted in the practical implementations of a system, method, and non-transitory computer readable medium for enabling a user to simulate a surgical procedure” (emphasis added).
However, contrary to Applicant’s assumption above, the streamlined eligibility analysis does not apply to any of the current claims. It is worth to note that the streamlined analysis is applied when the eligibility of the claim(s) is self-evident (e.g., see MPEP 2106.06, emphasis added),
examiners may use a streamlined eligibility analysis (Pathway A) when the eligibility of the claim is self-evident, e.g., because the claim clearly improves a technology or computer functionality. However, if there is doubt as to whether the applicant is effectively seeking coverage for a judicial exception itself, the full eligibility analysis (the Alice/Mayo test described in MPEP § 2106, subsection III) should be conducted to determine whether the claim integrates the judicial exception into a practical application or recites significantly more than the judicial exception.
In the instant case, the underlying technology that the claimed (and the disclosed) system/method utilizes is the existing computer/network technology. In particular, except for using this existing technology—merely as a tool—to provide an interactive activity to the user (e.g., a virtual surgical activity), neither the current claims nor the original disclosure contemplates—much less implements—a technological improvement over the existing computer/network technology. In this regard, except for Applicant’s subjective assumption, namely the alleged “complex process” that the current claims are purportedly reciting, Applicant still does not demonstrate whether the claims implement an element (if any)—or a combination of elements (if any)—that provides a technological improvement. Of course, given the lack of technological improvement, none of the current claims—when considered as a whole—integrates the abstract idea into a patent-eligible practical application (i.e., the claims fail to impose meaningful limits on practicing the abstract idea). Consequently, Applicant’s arguments are not persuasive.
In addition, it is immaterial whether one assumes that the current claims do not seek to preempt or “tie up” any judicial exception. This is because the eligibility evaluation is not confined merely to a claim that attempts to “tie up” a judicial exception. Of course, the Supreme Court has described the concern driving the judicial exceptions as preemption; however, the courts do not use preemption as a stand‐alone test for eligibility. Also see MPEP 2106.04(I), emphasis added),
While preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility. Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052, 119 USPQ2d 1370, 1376 (Fed. Cir. 2016). Instead, questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo (the Alice/Mayo test referred to by the Office as Steps 2A and 2B). Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379, 115 USPQ2d 1152, 1158 (Fed. Cir. 2015). It is necessary to evaluate eligibility using the Alice/Mayo test, because while a preemptive claim may be ineligible, the absence of complete preemption does not demonstrate that a claim is eligible. Diamond v. Diehr, 450 U.S. 175, 191-92 n.14, 209 USPQ 1, 10-11 n.14 (1981) ("We rejected in Flook the argument that because all possible uses of the mathematical formula were not pre-empted, the claim should be eligible for patent protection").
Thus, even if Applicant assumes that none of the current claims seeks to tie up any judicial exception, such assumption is not sufficient to demonstrate whether any of the current claims is patent-eligible.
Applicant has also attempted to rely on the features currently added in order to justify the alleged eligibility of the current claims. Applicant asserts, “claims 1, 20, and 24 such that recitations of the ‘virtual environment’ are replaced with a ‘virtual surgical operating room’, recitations of the ‘virtual surgical object’ are replaced with a ‘virtual surgical tool’, and recitations of the ‘virtual localizer’ are replaced with a ‘virtual camera unit’ Additionally, the Applicant has amended independent claims 1, 20, and 24 to disclose ‘providing, on the display of the head-mounted device, a virtual patient anatomy located within the virtual surgical operating room’, ‘determining a spatial relationship between the virtual camera unit and the virtual patient anatomy in the virtual surgical operating room’, and ‘display a virtual representation of the virtual surgical tool relative to the virtual patient anatomy on the virtual display device’. We believe the claims are eligible for at least this reason” (emphasis added).
However, none of the currently recited features, alone or in combination with the rest of the features, negates any of the Office’s ineligibility findings. For instance, replacing term “virtual environment” with the term “virtual surgical operating room” does not make any difference. This is because each term above is describing a pictorial/video scene, but not a structural and/or functional feature, much less an advanced structural and/or functional feature. Accordingly, simply changing the name/label of a pictorial scene does not affect any of the structural and/or functional features of the device unitized to present the scene. Of course, the same is true regarding replacing (i) the term “virtual surgical object” with the term “virtual surgical tool”; and also (ii) replacing the term “virtual localizer” with “virtual camera unit” (i.e., no new structural and/or functional feature is being incorporated; rather, only the name of the object depicted in the picture is being changed). Consequently, Applicant’s arguments are not persuasive.
Similarly, the claimed limitations, which denote the process of displaying, via the head-mounted device, (i) “a virtual patient anatomy located within the virtual surgical operating room”, and (ii) “a virtual representation of the virtual surgical tool relative to the virtual patient anatomy on the virtual display device”, are describing one of more of the virtual scenarios being simulated. In this regard, it is one of the basic/existing functions of a head-mounted device to display, based on the activity being simulated (e.g., the surgical operation), one or more relevant pictorial objects/scenarios to the user.
In addition, the limitation, “determining a spatial relationship between the virtual camera unit and the virtual patient anatomy in the virtual surgical operating room”, is describing the mathematical evaluation that the system is performing in order to simulate the relevant positional relationships between the various pictorial objects in the scene (e.g., the pictorial objects being the virtual camera, the virtual patient anatomy, and/or the virtual room, etc.). However, such mathematical computation to determine spatial relationship between two or more pictorial objects does not constitute a technological improvement over the existing computer/network technology. Instead, this is also part of the existing computer/network technology. In fact, such mathematical computation, namely computing the spatial relationships between two or more pictorial objects in a virtual environment, is a common practice in computer video games. In particular, based on an input(s) received from the player, one or more game-characters are positioned—within a 3D space—at one or more locations relative to one another, etc. Consequently, Applicant’s attempt to substantiate the alleged technological improvement, while relying on the functions of the existing computer technology, is once again not persuasive.
Secondly, regarding prong-one of Step 2A, Applicant is asserting that “the claims do not correspond to certain methods of organizing human activity and/or mental processes . . . the recitations of independent claims 1, 20, and 24 do not recite teaching. Specifically, the recitations of the independent claims provide a virtual reality surgical system, which effectively facilitate simulation of a surgical procedure . . . just because the invention may include some aspects of teaching does not render the invention ineligible. The Federal Circuit, in determining eligibility has specifically explained what types of inventions amount to the abstract idea of teaching” (emphasis added).
As an initial matter, the eligibility analysis presented in the previous office-action, including the current one, applies to all claims even though the Office may identify an independent claim(s) as a representative claim. Thus, just because an independent claim(s) is considered as a representative claim, this does not necessarily mean that the analysis applies to the independent claim(s) only. It is a basic common sense practice (also see various court decisions) to consider at least one independent claim as a representative claim when making such analysis. Thus, one should not pretend that the eligibility analysis applies merely to the independent claims.
In addition, despite asserting that “the claims do not correspond to certain methods of organizing human activity and/or mental processes”, Applicant does not provide any rationale to substantiate the above assertion, Instead, Applicant appears to resort to the claimed computer-elements—such as, the virtual reality surgical system. In contrast, none of the claimed computer-elements is considered under prong-one of Step 2A. This is because none of the computer-elements is part of the abstract idea. Instead, the computer-elements are part of the additional elements; and the additional elements are considered per prong-two or Step 2A and per Step 2B. Consequently, Applicant’s arguments directed to prong-one of Step 2A are already incorrect.
Applicant also appears to fail to properly apply the sequence of steps outlined in the eligibility analysis. Note that when considering prong-one of Step 2A, the inquiry merely requires one to determine whether the claim recites a judicial exception (e.g., an abstract idea, a natural phenomenon, and/or law of nature). Thus, if the claim recites a judicial exception—such as, an abstract idea, then the abstract idea that the claim is reciting is identified per prong-one of Step 2A. However, the result above (i.e., prong-one of Step 2A) does not necessarily mean that the claim is already ineligible. Instead, it merely means that the subsequent steps of the eligibility analysis should be executed BEFORE concluding whether the claim is eligible or ineligible (i.e., the inquiries per prong-two of Step 2A and Step 2B)). However, while failing to properly construe the Office’s analysis, Applicant incorrectly concludes that “Prong 1 . . . just because the invention may include some aspects of teaching does not render the invention ineligible” (emphasis added). In contrast, the Office did not reach the ineligibility finding based merely on prong-one of Step 2A. Instead, the subsequent steps, namely prong-two of Step 2A and Step 2B, have been conducted before reaching the final finding (also see the eligibility analysis above). Thus, Applicant’s arguments are not persuasive.
In addition, while conflating the two abstract idea groups (i.e., mental processes and certain method of organizing human activity), Applicant is attempting to challenge the Office’s findings while listing some court decisions. However, unlike Applicant’s assertions, none of the listed court decisions (e.g., In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed.Cir. 2015); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir.2018)) negates any of the Office’s findings regarding the current claims. In particular, Applicant appears to rely on subjective assertions to substantiate the alleged eligibility of the current claims. For instance, Applicant asserts, “the virtual reality surgical system is claimed according to its components, features, and capabilities, with teaching being a byproduct of the system. On the other hand, the human activity in In Re Meyer was merely a process that a neurologist should follow and that process could be organized in the mind alone; the human activity in Intellectual Ventures I LLC is merely informing a human of a pre-set limit; and the human activity in In re Marco Guldenaar Holding B. V. are rules for organizing humas to play a dice game. The claimed invention is claimed in very specific manner and can operate without a human even being present” (emphasis added).
However, Applicant’s arguments above have several flaws. As an initial matter, Applicant does not even articulate what is implied per the alleged “components, features, and capabilities” of the claimed system/method. It is worth to note that the inquiry—per prong-one of Step 2A—does not consider any of the computer-elements that any of the claims is reciting. Instead, prong-one requires one to identify just the judicial exception (the abstract idea) that the claim is reciting; see MPEP 2106.07(a), (emphasis added).
For Step 2A Prong One, the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception. For example, if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it is an abstract idea.
Thus, Applicant’s analysis is already inaccurate even before Applicant attempts to compare the current claims with any of the court cases.
In addition, unlike Applicant’s assertion, the current claims do rely on a human activity; such as, a user performing a mock medical procedure, so that the user hopefully develops some skills regarding such medical procedure. Thus, the current claims do recite abstract idea—namely, managing personal behavior (e.g., teaching), under the group certain methods of organizing human activity. However, while failing to notice the fact above, which pertains to the current claims, Applicant appears to focus merely on the alleged human activity that pertains to the court cases identified above. Consequently, Applicant’s arguments are not relevant.
Of course, the same is true regarding Applicant’s generic conclusion regarding the alleged “specific manner” of the claimed system/method, and/or the alleged “opera[bility]” of the claimed system/method “without a human even being present”. In fact, per Applicant’s conclusion above, Applicant does not appear to properly consider
the inquiry established per prong-one of Step 2A. Instead, besides failing to demonstrate how the claimed system/method is allegedly operating without a human being present, Applicant appears to once again incorrectly rely on the claimed computer-elements in attempt to challenge the Office’s findings under prong-one of Step 2A.
Moreover, unlike Applicant’s assertion, teaching is certainly not a byproduct of the claimed system/method. Instead, teaching or training is the core of the claimed (and the disclosed) system/method. If Applicant asserts that teaching is merely the byproduct of the system/method, then what is the core of the claimed system/method? Of course, Applicant has not addressed the above issue. Nevertheless, given the context of the current claims, one skilled in the art readily recognizes that teaching/training is the core of the claimed system/method regardless of Applicant’s assumption.
Thirdly, regarding the group mental processes, Applicant asserts that “Applicant believes that none of the recitations of independent claims 1, 20, and 24 recite a mental process. Courts have held that claims do not recite a mental process when they do not contain recitations that can practically be performed in the human mind . . . SRI Int'l, Inc. v. Cisco Systems . . . ‘the human mind is not equipped to detect suspicious activity by using network monitors and analyzing network packets as recited by the claims’). Similar to SRI Int'l, Inc, the claimed invention cannot be practically performed in the human mind, as a human mind cannot ‘provide, on the display of the head-mounted device, a virtual surgical operating room and a virtual surgical tool . . . and ‘display a virtual representation of the virtual surgical tool relative to the virtual patient anatomy on the virtual display device, wherein the virtual representation is based on the determined spatial relationship between the virtual camera unit and the virtual surgical tool in the virtual surgical operating room, and the determined spatial relationship between the virtual camera unit and the virtual patient anatomy in the virtual surgical operating room.’” (emphasis added).
However, Applicant does not appear to properly apply the eligibility test regarding a mental process. Note that the test, per mental process, is referring to concepts that can be performed in the human mind. In the case of SRI Int’l, the claim is not considered to be a mental process since a human cannot mentally analyze network packets and detect suspicious activity. In contrast, regarding the current claims, a human can determine (e.g., via calculation, etc.) the spatial relationship between two or more pictorial objects—such as, estimating the spatial relationship between a first pictorial object (e.g., a pictorial object representing a surgical tool) and a second pictorial object (e.g., a pictorial object representing a camera unit) while both objects being depicted in the same pictorial room, etc. Of course, the same is true regarding determining the spatial relationship between the pictorial object representing the camera unit and the pictorial object representing a patient anatomy, etc.
Accordingly, unlike Applicant’s assertion, the current claims do recite concepts that can practically be performed in the human mind. In fact, one can also consider a scenario where a human—such as, a teacher—is providing the user with an activity to perform (e.g., a mock medical procedure). Thus, as the user is performing/simulating the activity (e.g., the user making one or more movements that mimic one or more procedural actions, etc.), the teacher provides—based on his/her observation/judgment—the user with pertinent visual and/or verbal feedback, etc.
Thus, besides reciting managing personal behavior (e.g., teaching), per the group certain methods of organizing human activity, the current claims also overlap with the
group mental processes. Consequently, Applicant’s arguments are not persuasive. In particular, while conflating the computer-elements with the abstract idea, Applicant is once again relying on the computer-elements in an attempt to challenge the Office’s findings presented under prong-one of Step 2A.
Fourthly, regarding prong-two of Step 2A, Applicant asserts, “the claimed invention is clearly integrated into a practical application . . . One of the examples of a practical application that has been identified by the courts includes ‘An improvement in the functioning of a computer . . . Similarly, amended independent claims 1, 20, and 24 disclose a system, method, and non-transitory computer readable medium that improve the process simulating a surgical procedure. Specifically, amended independent claims 1, 20, and 24 improve the process of simulating a surgical procedure by ‘determin[ing] a spatial relationship between the virtual camera unit and the virtual surgical tool in the virtual surgical operating room’ . . . and the determined spatial relationship between the virtual camera unit and the virtual patient anatomy in the virtual surgical operating room’. Such recitations, in combination with the other recitations of amended independent claims 1, 20, and 24, improve the process of simulating a surgical procedure by enabling simulation of a virtual cutting of the virtual patient anatomy (as shown in FIG. 11 of the Application) and enabling simulation of a registration of the virtual patient anatomy . . . FIGS. 6 and 7 of the Application)” (emphasis added).
However, Applicant does not articulate what is assumed to be integrated into a patent-eligible practical application. Note that when evaluating a claim per prong-two of Step 2A, one has to first identify the judicial exception—such as the abstract idea—that the claim is reciting; and subsequently, determine whether the claim integrates the abstract idea into a patent-eligible practical application. In the instant case, except for making a generic conclusion, “the claimed invention is clearly integrated into a practical application”, Applicant appears to fail to properly apply the eligibility test. In particular, Applicant fails to demonstrate what is being allegedly integrated into a patent-eligible practical application.
In addition, except for simply listing the limitations that the claim (e.g., claim 1) is reciting, including the mathematical calculations (e.g., determining the spatial relationship between the virtual camera unit and the virtual surgical tool in the virtual surgical operating room, etc.), Applicant does not demonstrate the alleged technological improvement that the claimed (or the disclosed) system/method is supposedly providing. It is worth to note that the process of generating an interactive scenario that allows the user to interact with one or more virtual objects (e.g. a pictorial object representing a tool, a pictorial object representing a camera, a pictorial object representing an anatomy, etc.), including the process of providing pertinent feedback to the user based on determining the spatial relationship between two or more pictorial objects (e.g., determining the spatial relationship between a first pictorial object representing a tool and a second pictorial object representing a camara, etc.), does not constitute a technological improvement over the relevant existing technology. This is because neither the claimed implementation nor the originally disclosed implementation provides any technological improvement (e.g., no improvement in terms of the functioning of the computer, etc.). Instead, the claimed (and the disclosed) system/method is utilizing the existing computer/network technology—merely as a tool—to facilitate an abstract idea; such as providing the user with an activity to perform, including presenting pertinent visual feedback based on the user’s activities, etc.
Note also that the content (topic) of the visual scenario that a given system is presenting (e.g., a simulation scenario related to operating a machinery; or a simulation scenario related to a surgical procedure, etc.) has nothing to do with technology, much less a technological improvement. Thus, Applicant’s conclusory assertion, “claims 1, 20, and 24, improve the process of simulating a surgical procedure by enabling simulation of a virtual cutting of the virtual patient anatomy . . . and enabling simulation of a registration of the virtual patient anatomy”, is not persuasive. This is because Applicant is attempting to substantiate the alleged improvement (“improve the process of simulating a surgical procedure”) while relying merely on the interactive content that the system/method is presenting to the user. In this regard, neither the figures that Applicant has identified (i.e., figures 6, 7 and 11), nor any other sections from the original disclosure, signifies any technological improvement. Even when considering the figures that Applicant has identified (e.g., figures 6, 7 and 11), the figures are merely showing a visual scenario that illustrates the positional relationships between two or more pictorial objects, based on a mock medical procedure that the user is assumed to be performing. However, once again such process of displaying a mock medical procedure, including displaying two or more pictorial objects according to one or more spatial relationships, etc., has nothing to do with a technological improvement.
Lastly, while mistaking part of the recited abstract idea for a technological improvement, Applicant asserts that “on pages 6 and 7 of the Office Action, the Examiner found that the prior art failed to disclose ‘determin[ing] a spatial relationship between the virtual camera unit and the virtual surgical tool in the virtual surgical operating room’, further characterizing the improvement over prior art surgical simulation systems enabled by the above recitation. Accordingly, the claim provides a solution that is neither routine, nor conventional, and is clearly implemented in a practical application” (emphasis added).
However, unlike Applicant’s conclusory assertion above, the prior art fails to teach or suggest merely the abstract idea that the claims are reciting, but not the underlying technology that the claimed (and disclosed) system/method is utilizing to facilitate the abstract idea. Thus, it is immaterial whether the office-action indicates the failure of the prior art to teach part of the abstract idea that the claims are reciting. If anything, the Office is merely acknowledging the new abstract idea that the claims are reciting. However, a new abstract idea is still an abstract idea, but certainly not a technological improvement; also see MPEP 2106.06 (I) (emphasis added),
Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) . . . See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a §101 inventive concept is thus distinct from demonstrating §102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103 . . . patentability of the claimed invention under 35 U.S.C.102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C.101.
Consequently, Applicant’s attempt to substantiate the alleged technological improvement, while emphasizing the new abstract idea that the claims are reciting, is also not persuasive.
Furthermore, while citing a section from the MPEP—namely, MPEP 2106.05(e), Applicant is asserting that “[t]he claimed invention applies use of the computer for simulating a surgical procedure and does so specifically with respect to determining a spatial relationship between the virtual camera unit and the virtual surgical tool in the virtual surgical operating room, determining a spatial relationship between the virtual camera unit and the virtual patient anatomy in the virtual surgical operating room, and displaying a virtual representation of the virtual surgical tool relative to the virtual patient anatomy on the virtual display device, wherein the virtual representation is based on the determined spatial relationship between the virtual camera unit and the virtual surgical tool in the virtual surgical operating room, and the determined spatial relationship between the virtual camera unit and the virtual patient anatomy in the virtual surgical operating room. The claim is a practical application in view of this specifically identified exception” (emphasis added).
However, once again except for simply restating part of the limitations that the claim is reciting, Applicant does not demonstrate whether any of the current claims is implementing a claim element—or a combination of claim elements—that integrates the claimed abstract idea into a patent-eligible practical application. Given the underlying
technology of the claimed (and the disclosed) system/method, such integration (if any) is demonstrated when there is a claim element—or a combination of elements—that provides a technological improvement over the existing computer/network technology. In contrast, the claimed (and the disclosed) system/method is utilizing the existing computer/network technology—merely as a tool—to facilitate an abstract idea; such as, presenting a user with an interactive scenario regarding an activity to be performed, including presenting pertinent visual feedback to the user based on analyzing the user’s responses/activity, etc. Of course, the interactive scenario corresponds to a mock surgical procedure that the user is required to perform; and wherein pertinent visual feedback is presented to the user based on spatial relationships determined between two or more pictorial objects (e.g., the spatial relationship between a pictorial object representing a tool and a pictorial object representing a camera, etc.). However, as already pointed out above, the particular content (topic) of the interactive scenario has nothing to do with technology, much less a technological improvement. Of course, the lack of technological improvement is further evident given the fact that the claimed (and the disclosed) system/method—when considered as a whole—is directed to the conventional and generic arrangement of the additional elements (the test per Step 2B). Consequently, Applicant’s conclusory assertions, “the claimed invention does not set forth an abstract idea and the claimed invention recites additional elements that integrate the judicial exception into a practical application. Hence, the claim is not ‘directed to’ a judicial exception”, are not persuasive.
Thus, at least for the reasons discussed above, the Office concludes none of the current claims—when considered as a whole—implements an inventive concept that amounts to “significantly more” than an abstract idea.
Prior Art
● When each of the current claims is considered as a whole, the prior art does not teach or suggest the current claims (see the office-action dated 04/23/2025 regarding the state of the prior art).
Conclusion
Applicant’s amendment necessitated the new grounds of rejection presented in this final 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 filled 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUK A GEBREMICHAEL whose telephone number is (571) 270-3079. The examiner can normally be reached on 7:00AM-3:00PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID LEWIS can be reached on (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRUK A GEBREMICHAEL/Primary Examiner, Art Unit 3715