DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is responsive to the Applicant Arguments/Remarks received on 24 February 2026. Claims 1-20 are currently pending.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (i.e. a mental process) without significantly more.
Claims 1-20 are directed toward a system for performing a robotic revision knee arthroplasty (i.e. a process/machine). Hence, the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter) (STEP 1: YES).
However, claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas (see Diamond v. Chakrabarty, 447 U.S. 309 (1980)).
The representative claims recite the following:
Independent claim 1 is directed to “a method for virtual surgical planning, comprising: processing, by one or more processors, preoperative image data of a glenoid to identify defined anatomical landmarks, the defined anatomical landmarks including a glenoid face of the glenoid; generating, by the one or more processors, a virtual representation of the glenoid face based on the defined anatomical landmarks, the visual representation including a dynamically adjustable virtual boundary defined on a virtual surface of the glenoid face; maintaining, by the one or more processors, in a data structure, a virtual model of a surgical guide; providing, by the one or more processors, for presentation, in a user interface, the virtual representation of the glenoid face and the virtual model of the surgical guide, the virtual model of the surgical guide configured to be aligned with the virtual representation of the glenoid face, wherein the virtual model of the surgical guide includes a virtual base plane defined by a number of virtual prongs, each virtual prong to be positioned on the virtual surface of the glenoid face within the virtual boundary such that the virtual base plane aligns with a glenoid plane defined by the virtual surface of the glenoid face; in response to aligning the virtual model of the surgical guide with the virtual representation of the glenoid face, determining, by the one or more processors: a version angle indicating at least one of a backward tilt or a forward tilt of an axis of the surgical guide relative to the glenoid plane; and an inclination angle indicating at least one of a downward tilt or an upward tilt of the axis of the surgical guide relative to the glenoid plane; and adjusting, by the one or more processors, a position or orientation of the virtual model of the surgical guide based on at least one of the version angle or the inclination angle.”
Independent claim 14 is directed to “a system, comprising: one or more processors coupled with memory and configured to: process preoperative image data of a glenoid to identify defined anatomical landmarks, the defined anatomical landmarks including a glenoid face of the glenoid; generate a virtual representation of the glenoid face based on the defined anatomical landmarks, the visual representation including a dynamically adjustable virtual boundary defined on a virtual surface of the glenoid face; maintain, in a data structure, a virtual model of a surgical guide; provide for presentation, in a user interface, the virtual representation of the glenoid face and the virtual model of the surgical guide, the virtual model of the surgical guide configured to be aligned with the virtual representation of the glenoid face, wherein the virtual model of the surgical guide includes a virtual base plane defined by a number of virtual prongs, each virtual prong to be positioned on the virtual surface of the glenoid face within the virtual boundary such that the virtual base plane aligns with a glenoid plane defined by the virtual surface of the glenoid face; determine, in response to aligning the virtual model of the surgical guide with the virtual representation of the glenoid face: a version angle indicating at least one of a backward tilt or a forward tilt of an axis of the surgical guide relative to the glenoid plane; and an inclination angle indicating at least one of a downward tilt or an upward tilt of the axis of the surgical guide relative to the glenoid plane; and adjust a position or orientation of the virtual model of the surgical guide based on at least one of the version angle or the inclination angle.”
The underlined portions of the claims recite an abstract idea because each portion includes one or more mental processes (e.g., observations, evaluations, and/or judgments) that can be performed in the mind or with the aid of pen and paper. (STEP 2A, PRONG 1: YES. The claimed invention recites an abstract idea.).
This judicial exception is not integrated into a practical application because the claims (i.e. at least claims 1 and 14) recite generic steps of processing image data, generating a virtual representation, maintaining a virtual model, providing for presentation the virtual representation, determining angles, and adjusting a position/orientation of the virtual model.
Additional claims (i.e. claims 2, 5-9, 11-13, 15 and 18-20) further define the abstract idea (e.g. presenting for display a view, receiving an interaction, modifying the view, restricting positioning of the virtual model, providing feedback, receiving an input, generating an output, positioning virtual prongs of the virtual model, repositioning the virtual prongs of the virtual model, indicating varying anatomical densities on the virtual representation, determining angles, and determining a spatial relationship). Additional claims (i.e. claims 4, 10 and 17) further define the abstract idea by further defining the maintained virtual model that can be performed in the mind or with the aid of pen and paper. The instant claims do no actually provide any surgical intervention, but rather they provide virtual planning for such a procedure.
The claims recite the additional elements of one or more processors, a data structure, a user interface, an interactive element, a button, a voice command, a joystick, a gesture recognition system, tactile feedback, haptic feedback and memory (i.e. claims 1, 3, 14 and 16) including functional language related thereto (e.g. to...identify anatomical landmarks, move the position/orientation of the virtual model, and adjust the position/orientation of the virtual model) (e.g. claims 1-2, 7, 14-15 and 20). The additional elements are not sufficient to amount to significantly more than the judicial exception because they do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine, (3) do not effect a transformation of a particular article to a different state, (4) do not effect a particular treatment or prophylaxis for a disease or medical condition, and (5) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claimed invention, as a whole, is more than a drafting effort designed to monopolize the exception (see MPEP §§ 2106.04(d)-(d)(2) and 2106.05(a)-(c), (e)-(h)). Therefore, the claims are directed to the judicially recognized exception of an abstract idea. (STEP 2A, PRONG 2: NO. The claimed invention is directed to an abstract idea.)
The claims encompass the following additional element(s) or combination of elements in the claim(s) other than the abstract idea per se: one or more processors, a data structure, a user interface, an interactive element, a button, a voice command, a joystick, a gesture recognition system, tactile feedback, haptic feedback and memory. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
The above-identified additional elements (e.g. one or more processors, a data structure, a user interface, an interactive element, a button, a voice command, a joystick, a gesture recognition system, tactile feedback, haptic feedback and memory) are generically claimed computer components which enable the above-identified abstract idea 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:
[0138] Each of the client devices 1920 can include at least one processor and a memory, e.g., a processing circuit. The memory can store processor-executable instructions that, when executed by processor, cause the processor to perform one or more of the operations described herein. The processor can include a microprocessor, an ASIC, an FPGA, etc., or combinations thereof. The memory can include, but is not limited to, electronic, optical, magnetic, or any other storage or transmission device capable of providing the processor with program instructions. The memory can further include a floppy disk, CD-ROM, DVD, magnetic disk, memory chip, ASIC, FPGA, ROM, RAM, EEPROM, EPROM, flash memory, optical media, or any other suitable memory from which the processor can read instructions. The instructions can include code from any suitable computer programming language. The client devices 1920 can include one or more computing devices or servers that can perform various functions as described herein. The one or more client devices 1920 can include any or all of the components and perform any or all of the functions of the client computing system 2614 described herein in conjunction with FIG. 26.
[0143] The data processing system 1905 is shown as including the database 1915. The database 1915 can be a computer-readable memory that can store or maintain any of the information described herein. The database 1915 can maintain one or more data structures, which may contain, index, or otherwise store each of the values, pluralities, sets, variables, vectors, numbers, or thresholds described herein. The database 1915 can be accessed using one or more memory addresses, index values, or identifiers of any item, structure, or region maintained in the database 1915. The database 1915 can be accessed by the components of the data processing system 1905, or any other computing device described herein, via the network 1910. In some implementations, the database 1915 can be internal to the data processing system 1905. In some implementations, the database 1915 can exist external to the data processing system 1905 and may be accessed via the network 1910. For example, the database 1915 may be distributed across many different computer systems (e.g., a cloud computing system) or storage elements and may be accessed via the network 1910 or a suitable computer bus interface.
[0148] The data processing system 1905 can include an interface provider 1940, which can be a script, module, library, or function that provides a user interface. In certain implementations, the interface provider 1940 can facilitate the visualization and analysis of a surgical guide within a virtual environment. In certain implementations, the interface provider 1940 can present a virtual representation of the glenoid face. Additionally, the interface provider 1940 can present a virtual model of the surgical guide.
[0149] The interface provider 1940 can provide one or more interactive elements that a user can interact with. The interactive elements can include, but are not limited to, interactive buttons, voice commands, joysticks (or other tactile devices), gesture recognition systems, or other haptic devices providing haptic feedback through vibrations or forces. The interactive buttons can enable users to initiate specific actions, such as rotating or anchoring the virtual guide model. For hands-free control, the data processing system 1905 can receive and interpret vocal instructions. The gesture recognition systems can enable the user to control the virtual model of the surgical guide through natural hand movements.
[0209] Server system 2500 can interact with various user-owned or user-operated devices via a wide-area network such as the Internet. An example of a user-operated device is shown in FIG. 4 as client computing system 2514. Client computing system 2504 can be implemented, for example, as a consumer device such as a smartphone, other mobile phone, tablet computer, wearable computing device (e.g., smart watch, eyeglasses), desktop computer, laptop computer, and so on.
[0210] For example, client computing system 2514 can communicate via WAN interface 2510. Client computing system 2514 can include computer components such as processing unit(s) 2516, storage device 2518, network interface 2520, user input device 2522, and user output device 2524. Client computing system 2514 can be a computing device implemented in a variety of form factors, such as a desktop computer, laptop computer, tablet computer, smartphone, other mobile computing device, wearable computing device, or the like.
Accordingly, in light of Applicant’s specification, the claimed term “processor” 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 computers, with their already available basic functions, to use as tools in executing the claimed process.
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for the processor. 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 Berkheimer memo from April 19, 2018, (III)(A)(1) on page 3). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications).
The recitation of the above-identified additional limitations in claims 1-20 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 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.
Taking the claimed elements individually yields no difference from taking them in combination because each element simply performs its respective function as discussed above. The claims do not purport to improve the functioning of a computer itself, nor do they effect an improvement in any other technology or technical field. Instead, the additional features merely amount to an instruction to apply the abstract idea using generic, functional, and conventional components well-known in the art. Viewed as a whole, these additional claim 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. (STEP 2B: NO. The claimed invention does not add significantly more and is not eligible subject matter.)
Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter (see Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014)).
Note: It appears that amending the independent claims to include, for example, "wherein a drill is initiated to perform a surgery, based upon the determined version and/or inclination angles" (see paragraphs 0168 and 0169 of the current specification for support) would add significantly more and overcome the rejections under 35 U.S.C. 101.
Response to Arguments
The applicant's arguments filed 24 February 2026 have been fully considered but they are not persuasive.
Regarding the rejections under 35 U.S.C. 101, the applicant argues 1) that most, if not all, of the elements of Applicant's independent claims cannot practically be performed in the human mind or with the aid or pen and paper, 2) the claimed operations involve complex computational image processing that cannot be performed in the human mind or with the aid of pen and paper, and 3) the recitations are not directed to an abstract idea, as they are a specific improvement to computer functionality. The examiner respectfully disagrees.
Regarding 1) and 2), the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation, nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer (see MPEP 2106.04(a)(2)(III)). The examiner would point out that there is no definitive test for what constitutes “with the aid of pen and paper.” Also, there is nothing claimed to suggest a timeframe for manipulating data, generating models, adjusting virtual model positions, processing image data, identifying landmarks, etc. that is impossible for a human. Therefore, it is the examiner’s position that the claims recite one or more mental processes that can, given enough time, be performed in the mind or with the aid of pen and paper (see rejections above).
Regarding 3), the examiner can find nothing in the current disclose indicating that the claimed invention is directed toward a specific improvement to computer functionality. The specification is replete with passages merely stating that, for example, computing devices (i.e. recognized/interpreted as well understood, routine, and conventional), are used to perform various functions. The examiner respectfully requests the applicant’s assistance in providing evidence proving the “specific improvement to computer functionality.
Conclusion
THIS ACTION IS MADE FINAL. 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 LARRY E WAGGLE, JR whose telephone number is (571)270-7110. The examiner can normally be reached TEAP: Monday - Friday (7:45am - 3:45pm).
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, Kevin Truong can be reached at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775
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