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 .
Claim 1 has been amended. Claims 2-9 have been cancelled. Claim 1 is pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recite “in any known standard image file format, DICOM, MP4, PDF.” It is unclear if the file formats are required or merely exemplary, rendering the claim indefinite. If they are intended to be required and given patentable weight, it is unclear from the claim language if it requires all the formats listed or if they are listed in the alternative as there is no operator. For purposes of examination, it will be construed as exemplary and therefore, not given patentable weight.
Appropriate correction is required.
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 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is drawn to a method for displaying a human anatomy diagram as an overlay on a medical image which is within the four statutory categories (i.e. process).
Claims 1 recites a method of displaying a human anatomy diagram as an overlay on a medical image specifying the area of concern location on the overlay human anatomy diagram in real time including live viewing and archived medical imagery, said method comprising:
receiving an input medical image from a medical acquisition system;
selecting the type of human anatomy diagram image desired;
selecting the location to mark the area of concern for that image on the human anatomy diagram saving the image with the overlay human anatomy diagram in any known standard image file format, DICOM, MP4, PDF (MPEP § 2106.05(f), apply it).
The bolded limitations, given the broadest reasonable interpretation, cover a certain method of organizing human activity because it recites fundamental economic practices, commercial or legal interactions, and/or managing personal behavior or relationships or interactions between people. Any limitations not identified above as part of the abstract are deemed “additional elements,” and will be discussed in further detail below.
Examiner notes that with the current amendment, there are no longer any dependent claims.
Furthermore, Claim 1 is not integrated into a practical application because the additional elements (i.e. the limitations not identified as part of the abstract idea) amount to no more than limitations which:
amount to mere instructions to apply an exception – for example, the recitation of a medical image acquisition system computer adapted for acquisition of at least one medical image wherein signals are acquired from a transmitting medical device in the medical device's native resolution having a central processing unit, a display, at least one input device, a storge device and output device wherein the medical images are displayed on the output device and any known standard medical image file format, DICOM, MP4, PDF, which amounts to merely invoking a computer as a tool to perform the abstract idea, see MPEP 2106.05(f)
generally link the abstract idea to a particular technological environment or field of use – for example, the recitation of standard file types, which amounts to limiting the abstract idea to the field of computers, see MPEP 2106.05(h)).
Furthermore, the Claims do not include additional elements that are sufficient to amount to “significantly more” than the judicial exception because, the additional elements (i.e. the elements other than the abstract idea) amount to no more than limitations which are recited at the apply it level as indicated above.
Thus, taken alone, the additional elements do not amount to “significantly more” than the above-identified abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, and there is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation.
Therefore, whether taken individually or as an ordered combination, Claim 1 is nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chan (U.S. Pub. No. 2019/0259481 A1).
Regarding claim 1, Chan discloses a method of displaying a human anatomy diagram as an overlay on a medical image specifying the area of concern location on the overlay human anatomy diagram in real time including live viewing and archived medical imagery, said method comprising:
receiving an input medical image from a medical acquisition system (Paragraph [0048] discusses receiving a photograph or image of the patient.);
selecting the type of human anatomy diagram image desired (Paragraph [0072] discusses the user selecting a body part image to be used.);
selecting the location to mark the area of concern for that image on the human anatomy diagram saving the image with the overlay human anatomy diagram in any known standard image file format, DICOM, MP4, PDF (Paragraphs [0075] and [0160] discuss being able to add a note, arrow or text box to the image and overlaying the body part image on top of a photograph.).
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references or how the language overcomes the subject matter eligibility rejection.
Regarding subject matter eligibility, the claims recite an abstract idea that does not result in a practical application or significantly more than the abstract idea.
Regarding the prior art rejection, the amendments to the claims do not overcome the previous rejection.
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 Rachelle Reichert whose telephone number is (303)297-4782. The examiner can normally be reached M-F 9-5 MT.
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RACHELLE L REICHERT/Primary Examiner, Art Unit 3686