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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, claims 1-13, in the response of 22 December, 2025 is acknowledged. Claims 14-20 are withdrawn, and claims 1-13 are examined.
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Each of Claims 1-13 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 1: Is the claim to a process, machine, manufacture or composition of matter?
Claims 1-13 are directed to a process, and thus meet the requirements for step 1.
Step 2A, Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Each of Claims 1-13 recites at least one step or instruction for analysis, which is grouped as a mental process under the 2019 PEG or a certain method of organizing human activity under the 2019 PEG. The claimed limitations involve analysis with insignificant extra-solution activity. Accordingly, each of Claims 1-13 recites an abstract idea.
Specifically, Claim 1 recites
“A method of endoscopic imaging, comprising:
receiving calibration data, the calibration data generated from imaging data taken from an endoscopic probe:
receiving, from the endoscopic probe while it is still deployed, imaging data that includes at least one image of the renal calculus;
applying the calibration data to the imaging data to determine a size of the renal calculus; and
displaying the determined size.”
Receiving information, processing images, outputting signals, measuring, (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Therefore, claim 1 recites an abstract idea of a mental process.
Further, dependent Claims 2-13 merely include limitations that amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental.
Step 2A, Prong 2
The above-identified abstract idea in independent Claim 1 (and dependent Claims 2-13) is not integrated into a practical application under 2019 PEG because the additional elements (bolded above in independent Claim 1), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use.
The additional element: endoscopic probe is generically recited hardware in Claims 1, 5, 8 and 10 which do not improve the functioning of any technology or technical field. Nor does this above-identified additional element serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation 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. Furthermore, the above-identified additional element does not add a meaningful limitation to the abstract idea because it amounts to simply implementing the abstract idea in relation to generic hardware. For at least these reasons, the abstract idea identified above in independent Claim 1 (and dependent claims) is not integrated into a practical application under 2019 PEG.
Accordingly, Claims 1-13 are directed to an abstract idea under 2019 PEG.
Step 2B
None of Claims 1-13 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
These claims require the additional elements of: endoscopic probe
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, 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, endoscopic probe is described in terms of being a device having imager 104, which itself “can be any endoscopic imaging device”. The endoscope is not depicted, and the imager is drawn as an empty schematic box. The endoscope is only otherwise described in terms of its action.
Accordingly, in light of Applicant’s specification, the claimed term endoscopic probe is reasonably construed as a generic 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 devices, with their already available basic functions, to use as tools in executing the claimed process.
Mere instructions to apply an exception using generic components cannot provide an inventive concept. The additional element is well-understood and routine, and therefore the endoscopic probe is amounts to an element to implement an abstract idea. Furthermore, the endoscopic probe is not used to implement the steps, but is merely an object on which the method operates, as the method only takes data from the endoscopic probe. Mere data gathering has been held to be insignificant extra-solution activity [see MPEP 2106.05(g)].
Therefore, none of the Claims 1-11 amounts to significantly more than the abstract idea itself.
Accordingly, Claims 1-11 are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas
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.
Claims 1-13 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 pre-AIA the applicant regards as the invention.
In regards to claim 1, the claim reads “receiving calibration data, the calibration data generated from imaging data taken from an endoscopic probe” [lines 1-2]. It is not clear if the method of calibration data generation is positively claimed. Therefore the claim is unclear. For the purposes of prosecution, it will be assumed that it is not positively claimed and that the calibration data could be from elsewhere, analogous to a product-by-process limitation in a device claim.
In regards to claim 1, the claim reads “applying the calibration data to the imaging data” [line 6]. It is not clear if this is the imaging data of line 2 or the imaging data of line 4. Therefore, the claim is unclear. For the purposes of prosecution, it will be assumed that the latter interpretation is correct.
In regards to claims 2, 7-8 and 10, the claims read “the imaging data”. It is unclear if this is the “imaging data” of line 2 or line 4 of claim 1. Therefore, the claims are unclear. For the purposes of prosecution, it will be assumed that the latter is the case.
In regards to claim 3, the claim reads “the predetermined size” [line 2]. There is insufficient antecedent basis for this limitation in the claim. Therefore, the claim is unclear. For the purposes of prosecution, it will be assumed this is a newly recited item.
In regards to claim 7, the claim reads “determining a focal length for the imaging data based on the calibration data”. While there is text mirroring this language in the specifications, this is either a clear 112 (a) error for lack of support in the original disclosure, (whereas relating other parameters to focal length in (claim 1 line 4) imaging data is supported) [see applicant’s para.51, 64], or a drafting error that is unresolvable in scope without resorting to undue speculation. For the purposes of prosecution, the latter is held to be the case.
Before a proper rejection can be rendered, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Since dependent claim 7 fails to satisfy the requirements of the second paragraph of 35 U.S.C. 112, no rejection on the art may be rendered. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite."). See MPEP 2173.06
Claim Rejections - 35 USC § 102
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.
Claims 1-6, 8 and 10-12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Ludwig et al. Endoscopic Stone Measurement During Uretroscopy, Journal of Endourology, Vol.32, no.1, January, 2018, pp.34-39 (henceforth “Ludwig”).
In regards to Claim 1, Ludwig discloses a method of endoscopic imaging [abstract], comprising:
receiving calibration data [page 34, col.2 to page 35, col.2, sections “Geometric Model” and “Calibration”], the calibration data generated from imaging data taken from an endoscopic probe [section “Calibration”, also as this is not a positively claimed step, but one possible way for the calibration data to be generated];
receiving, from the endoscopic probe while it is deployed, imaging data that includes at least one image of a renal calculus [page 35 col.2 section “Measurement”, page 35 col.2- page 36 col.1, section “Study”; page 36 col.2 “discussion”, first paragraph. Further as “deployed” is very broad as set forth here- note that receiving and analyzing data during an endoscopic procedure is routine in the art.];
applying the calibration data to the imaging data to determine a size of the renal calculus [section “Measurement”]; and
displaying the determined size [Figs.1b, 1d].
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In regards to claim 2, Ludwig discloses the method of claim 1, wherein displaying the determined size comprises displaying the imaging data with the determined size visually associated with the at least one image of the renal calculus [Figs.1b, 1d; note in particular the caption discussing parts of the image, also see Figs.1b and 1d provided hereinabove for illustrative purposes.]
In regards to claim 3, Ludwig discloses the method of claim 1, wherein displaying the determined size comprises displaying the image of the renal calculus labeled with the predetermined size [Figs.1b, d, also see Figs.1b, d provided hereinabove for illustrative purposes.].
In regards to claim 4, Ludwig discloses the method of claim 3, further comprising:
Displaying a shape overlaid on the image of the renal calculus, wherein the determined size is visually associated with the overlaid shape [the bar over the calculus next to the numerical size, Figs.1a, 1d].
In regards to claim 5, Ludwig discloses the method of claim 1, wherein the calibration data is generated from at least three images taken of one or more predetermined objects of known dimensions by the endoscopic probe [supplementary Fig.S2, also note generation of the calibration data is not a positively claimed method step].
In regards to claim 6, Ludwig discloses the method of claim 1, wherein the calibration data comprises a plurality of camera parameters and a plurality of distortion parameters [“Calibration”, page 39, col.1. As set forth here, this is mathematically indistinguishable from having an arbitrary number of parameters set forth which pertain to the camera and distortion. If the applicant seeks to concretely claim multiple calibration parameters, name and define them. This claim should otherwise be cancelled.].
In regards to claim 8, Ludwig discloses the method of claim 1,
wherein the imaging data further includes at least one image of a surgical device component having one or more known dimensions [basket, Figs.1b, d, page 38 col.1], and
wherein determining the size of the renal calculus comprises determining a distance from the camera of the deployed endoscopic probe to the renal calculus based on the image and one or more known dimensions of the surgical device component [page 38, col.1-2: supplementatry Figs.S1-S2].
In regards to claim 10, Ludwig discloses the method of claim 1, wherein the steps of applying the calibration data to the imaging data to determine a size of the renal calculus and displaying the determined size occur while the endoscopic probe is deployed [page 36, col.2 “discussion”, first paragraph- the measurement method is for use during flexible uteroscopy. And as “deployed” is an unusually broad term as set forth in this claim, this could be any time whatsoever].
In regards to claim 11, Ludwig discloses the method of claim 1, further comprising:
while the endoscopic probe is still deployed, receiving additional imaging data including at least one image of the renal calculus [this is repetition of the procedure- see below];
based on the additional imaging data, determining an updated size for the renal calculus [this is repetition of the procedure- see below]; and
displaying the updated size [page 38 col.2, “extraction would commence once all fragments were small enough to be effectively removed”, indicating repetition of the procedure during the same deployment. Also note “deployed” as set forth here is unusually broad and could refer to any time whatsoever.].
In regards to claim 12, Ludwig discloses the method of claim 1, wherein displaying the determined size further comprises:
comparing the determined size to at least one threshold value [Figs.1b, d: the numerical size displayed depends on the determined size, which is logically indistinguishable from comparison of the determined size with a threshold value];
selecting one or more display parameters based on the comparison of the determined size to the at least one threshold value [the number placed on the display]; and
displaying the determined size with the selected one or more display parameters [Figs.1b, 1d].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ludwig et al. Endoscopic Stone Measurement During Uretroscopy, Journal of Endourology, Vol.32, no.1, January, 2018, pp.34-39 (henceforth “Ludwig”) in view of Ward (US 2006/0116692).
In regards to claim 9, Ludwig discloses the method of claim 8, wherein the surgical device component is a laser [page 38 col.1], however does not positively disclose wherein the surgical device component is a laser fiber.
Ludwig further discloses wherein the surgical device could be any ureteroscopic instrument [page 38 col.1].
Ward discloses that a laser fiber is a ureteroscopic instrument [para.4, 7, 64].
Therefore, it would have been obvious to one having ordinary skill in the art to modify the method taught by Ludwig such that the surgical device is a laser fiber. This would be done as Ludwig indicates the surgical device may be any ureteroscopic instrument.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Ludwig et al. Endoscopic Stone Measurement During Uretroscopy, Journal of Endourology, Vol.32, no.1, January, 2018, pp.34-39 (henceforth “Ludwig”) in view of Miyayashiki et al. (US 2012/0078043)
In regards to claim 13, Ludwig discloses the method of claim 12, however does not positively disclose wherein the selected one or more display parameters comprises a color selected from a plurality of colors each associated with a range of size values,
Ludwig further discloses wherein the selected one or more display parameters comprises a number selected from a plurality of numbers each associated with different ranges of size values to be indicated [Figs.1b, d].
Miyayashiki teaches a method of displaying endoscopic images [abstract, Figs.1-2, para.46-47] wherein display parameters include a color selected from a plurality of colors for different values of a variable to be indicated [Figs.1-2, para.45-47].
Therefore, it would have been obvious to one having ordinary skill in the art to modify the selected one or more display parameters each associated with a range of size values taught by Ludwig such to comprise a color selected from a plurality of colors in accordance with the teaching of Miyayashiki. This would be done for the predictable result of readier communication with a user.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON B FAIRCHILD whose telephone number is (571)270-5276. The examiner can normally be reached 8:30am-5pm Monday-Friday.
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/AARON B FAIRCHILD/Primary Examiner, Art Unit 3795