DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/15/2026 has been entered.
Response to Amendment
The amendment of 12/08/2025 has been entered and fully considered by the examiner. Claims 1, 11, 15, and 23 are amended. Claim 13 has been canceled. Claims 1-12, and 14-27 are currently pending in the application with claims 1, and 15 being independent.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-44 of U.S. Patent No. 11241294 hereinafter “patent ‘294”. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 21-44 of Patent ‘294 are directed towards an apparatus for guiding a surgical or cosmetic procedure while claims 1-27 of instant application are directed towards the method performed using that apparatus.
In particular, patent ‘294 discloses an apparatus including a visualization module for producing real time multidimensional visualization of a body part symmetric to an opposing body part and a data processor configured to received pre-operative patient data of opposition body part and create a template based on the preoperative data of the opposing body part and combine the template with real-time visualization and display them. On the other hand, the claims 1-27 of instant application are directed towards the method that would be performed using the apparatus of patent ‘294 comprising the same steps performed. It would have been obvious to a person of ordinary skill in the art at the time of the filing of the invention to use the steps performed by the apparatus of patent ‘294 and use them as a method performed in order to achieve a surgical guidance.
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 1-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the subject matter eligibility test (see MPEP 2106.03).
Claims 1 and 15 are directed to a “method” which describes one of the four statutory categories of patentable subject matter, i.e., a process.
Step 2A of the subject matter eligibility test (see MPEP 2106.04).
Prong One:
Claims 1 and 15 recite (“sets forth” or “describes”) the abstract idea of a mental process, substantially as follows: “creating a template with at least one virtual surgical guide for the body part using the pre-operative or intraoperative patient data of the opposing body part, such that creating the template includes extracting a position of an identifiable anatomical feature related to the opposing body part from the pre-operative or intraoperative patient data; and combining the template with the one or more real-time multidimensional visualizations of the portion of the target surgical site”.
In claims 1 and 15, the above recited steps can be practically performed in the human mind, with the aid of a pen and paper or with a generic computer, in a computer environment, or merely using the generic computer as a tool to perform the steps. If a person were to visually examine, i.e., perform an observation of the surgical site, they can use this pre-operative or intraoperative data to create a surgical guide in their mind or on paper. He/she would further be able to combine them by placing the template on the multidimensional visualization of the target site. There is nothing recited in the claim to suggest an undue level of complexity in how the pre-operative or intra-operative data is gathered, how the virtual guide is created and how it is overlapped. Therefore, a person would be able to perform the creating and combining steps mentally or with a generic computer.
Prong Two: Claims 1 and 15 do not include additional elements that integrate the mental process into a practical application.
This judicial exception is not integrated into a practical application. In particular, the claims recites additional steps of
(1) recording visual data of a portion of the target surgical site using an image capture module including at least one photosensor, producing a multidimensional visualization of the target inducing a 3D stereopsis representation at a frate rate of 25 frames per second; receiving patient data, and
(2) further an addition step of presenting the visualization in conjunction with the template.
The steps in (1) represent merely data gathering or pre-solution activities that are necessary for use of the recited judicial exception and are recited at a high level of generality with conventionally used tools (see below Step IIB for further details).
The step in (2) represents merely notification outputting by a processor as a post-solution activity and is recited at a high level of generality.
As a whole, the additional elements merely serve to gather and feed information to the abstract idea and to output a notification based on the abstract idea, while generically implementing it on conventionally used tools. There is no practical application because the abstract idea is not applied, relied on, or used in a meaningful way. No improvement to the technology is evident, and the estimated bio-information is not outputted in any way such that a practical benefit is realized. Therefore, the additional elements, alone or in combination, do not integrate the abstract idea into a practical application.
Step 2B of the subject matter eligibility test (see MPEP 2106.05).
Claims 1 and 15 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the claims recite additional steps of recording visual data, producing a multidimensional visualization and receiving patient data, as well as presenting the overlapped visualization and template. These steps represent mere data gathering, data outputting or pre/post/extra-solution activities that are necessary for use of the recited judicial exception and are recited at a high level of generality. Mere insignificant conventional extra-solution activity cannot provide an inventive concept. The claims hence are not patent eligible.
In claims 1 and 15, the step of automatically extracting a position of an identifiable anatomical feature related to the opposing body part from the preoperative or intraoperative patient data using the data processor further fails to add significantly to the abstract idea. The step of extraction can be practically performed using a generic computer, in a computer environment, or merely using the generic computer as a tool to perform the steps. With the exception of the automated use of a generic computer, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper. There is nothing to suggest an undue level of complexity in how the position of the anatomical feature is identified or the extraction being processed. Therefore, the addition of the automated step of the abstract idea using the data processor fails to add significantly to the abstract idea.
Dependent Claims
The following dependent claims merely further define the abstract idea and are, therefore, directed to an abstract idea for similar reasons:
Defining the steps of virtual guide creation (claims 2-10)
Defining the steps of combining the guide with the image (claim 11-12).
Describing the type of the guide (claim 22)
Detecting the movement and adjusting the position of the guide (claim 23)
Creating a thermal map of the elevation of the body (claim 24-26)
Creating a topographical map (claim 27)
The following dependent claims merely further describe the extra-solution activities and therefore, do not amount to significantly more than the judicial exception or integrate the abstract idea into a practical application for similar reasons:
describing the outputting step (claim 16, 19 and 20);
Taken alone and in combination, the additional elements do not integrate the judicial exception into a practical application at least because the abstract idea is not applied, relied on, or used in a meaningful way. They also do not add anything significantly more than the abstract idea. Their collective functions merely provide computer/electronic implementation and processing, and no additional elements beyond those of the abstract idea. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. There is no indication that the combination of elements improves the functioning of a computer, output device, improves technology other than the technical field of the claimed invention, etc. Therefore, the claims are rejected as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive.
The applicant has argued that similar to SRI int’l v. Cisco Systems, instant amended claims are more complex than something that can be practically performed in the human mind, with pen or paper or with a generic computer. The applicant has iterated the limitations of the claim as steps of the method in order to support their statement.
In response, the examiner respectfully disagrees and notes that as it has been provided in the abstract idea rejection section above, some of the steps of the claim that are provided as support for the claim being more complex than an abstract idea are themselves directed towards an abstract idea.
For example, the step of creating a template of the body part using pre-operative or intraoperative patient data can be performed by a human practitioner viewing the patient data. The fact that the limitation adds the term “automatically” and “using an image processor” also fails to add significantly to the abstract idea because the step of automatic extraction can be practically performed using a generic computer, in a computer environment, or merely using the generic computer as a tool. With the exception of the automated use of a generic computer, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper. There is nothing to suggest an undue level of complexity in how the position of the anatomical feature is identified or the extraction being processed. Therefore, the addition of the automated step of the abstract idea using the data processor fails to add significantly to the abstract idea.
Other provided steps such as recording visual data using a photosensor, and producing a 3D visualization of the target surgical site are also considered to be merely data gathering and pre-solutionary steps. A photosensor is a generic image collection device used for data gathering and therefore also fails to add significantly more to the abstract idea.
Unlike In re Cisco, that is referenced by the applicant, there are no steps that are “more complex” than something that could be performed in human mind, with the aid of pen and paper or with a generic computer.
The applicant has further argued integration of an abstract idea into a practical application has been held by the court to be patent eligible and warns against oversimplifying the claim.
In response, the examiner respectfully notes that the applicant has merely stated a court decision but has failed to provide any reasoning why the instant claims integrate the abstract idea into a practical application or that how the analysis of the claims are oversimplified. The rejection section provided above has stated why the claims fails to integrate the abstract idea into any practical application.
As a result, applicant’s statement is considered to be a mere speculation without any support and is not persuasive.
Conclusion
No claim is allowed.
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/MARJAN SABOKTAKIN/Examiner, Art Unit 3797
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795