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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
It is noted that the PCT search report included (US2024/013050) is not for the commonly assigned PCT application of the instant application (which is PCT/US2024/022365) and appears to have no relation with the instant application. It is believed that this was cited as a typo with the references cited also, however the references were initialed and considered by the Examiner in the IDS.
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 a judicial exception (i.e., an abstract idea) without integration into a practical application or recitation of significantly more.
In the analysis below, the method of independent claim 18 is considered representative of independent claims 1, 16 and 18 since all of the independent claims recite identical steps despite being directed to different statutory matter. Furthermore, each of independent claims 1, 16, and 18 are directed to one of the four statutory categories of eligible subject matter; thus, the claims pass Step 1 of the Subject Matter Eligibility Test (See flowchart in MPEP 2106).
Step 2A, prong 1: Yes
The independent claims are directed to
A system configured to assess a joint, comprising: an image acquisition device configured to acquire at least one image of the joint; a memory configured to store information, the information including imaging data related to the at least on acquired image, wherein the imaging data includes a cross-sectional area and position of at least one identified portion of the bone of the joint; a controller configured to: execute an algorithm to determine, based on the at least one acquired image and/or the stored imaging data, one or more adjustment parameters, wherein the algorithm applies an equation that receives, as input, the cross-sectional area of the at least one identified portion of the bone, and outputs the one or more adjustment parameters, wherein the one or more adjustment parameters include an adjustment to a bone resection parameter and/or an adjustment to an implant parameter; and a display configured to display the determined one or more adjustment parameters.
When viewed under the broadest most reasonable interpretation, the instant claims are directed to Judicial Exception – an abstract idea belong to the group of mental process. The limitations above specifically (with the exception of the parts in italics) are directed to a mental process that can be carried out by a doctor in a consultation with a patient to assess a joint .
Additional elements
The additional elements recited in each of the independent claims are an image acquisition device, a memory, a controller, and a display.
Step 2A, prong 2: No
The above-identified additional elements do not integrate the judicial exception into a practical application.
The steps of an image acquisition device to acquire an image amounts to data gathering which is insignificant pre-solution activity which does not integrate the claimed mental process into a practical application (See MPEP 2106.05(g)). Furthermore, the limitation of a display to display the parameters is also considered to be insignificant extra solution activities that are merely added to the judicial exception (See MPEP 2106.05(g)).
Each of the other additional elements (a memory and a controller) amounts to merely using a generic computer as a tool to perform the claimed mental process. Implementing an abstract idea on a computer does not integrate a judicial exception into a practical application (See MPEP 2106.05(f)).
Moreover, the additional elements of the claims do not recite an improvement in the functioning of a computer or other technology or technical field, the claimed steps are not performed using a particular machine, the claimed steps do not effect a transformation, and the claims do not apply the judicial exception in any meaningful way beyond generically linking the use of the judicial exception to a particular technological environment (See MPEP 2106.04(d)). Therefore, the analysis under prong two of step 2A of the Subject Matter Eligibility Test does not result in a conclusion of eligibility (See flowchart in MPEP 2106).
Step 2B: No
The pending claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As explained above in Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer. Each of the additional elements are generic computer features which perform generic computer functions that are well-understood, routine, and conventional and do not amount to more than implementing the abstract idea with a computerized system.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation, and mere implementation on a generic computer does not add significantly more to the claims. Accordingly, the analysis under step 2B of the Subject Matter Eligibility Test does not result in a conclusion of eligibility (See flowchart in MPEP 2106).
The dependent claims are also directed to an abstract idea as human activities that can be performed for example by a doctor to assess a joint of a patient.
Examiner’s Comment
No art rejection is presented for the pending claims, thus if the 101 rejection is overcome the application would be in condition for allowance with the following reason given.
Examiner notes in the copending PCT (PCT/US2024/022365) that the search report found novelty and cited US 20210082115 (cited in the IDS) as closest prior art. The Examiner agrees with the opinion that the claim limitations are novel.
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The Examiner further notes the pertinent prior art of Schoenefeld et al. US 2011/0092804 which discloses in figure 6 a patient specific preoperative planning device which identifies osteophytes in an image and allows a surgeon to control for the location, depth and orientation of the osteophyte removal (see paragraph 0052).
However, similar to the conclusion reached in the related PCT Schoenefeld does not explicitly disclose nor suggest identifying a cross-sectional area of the first osteophyte; executing an algorithm to determine one or more adjustment parameters based on the identified cross-sectional area of the first osteophyte, wherein the algorithm applies an equation that receives, as input, the identified cross-sectional area, and outputs the one or more adjustment parameters, wherein the one or more adjustment parameters include: a predicted change in soft tissue laxity after the identified first osteophyte is removed; an adjustment to a planned bone resection depth of the one or more bone cuts; an adjustment to a planned bone resection angle of the one or more bone cuts; and/or an adjustment to a planned thickness of the implant.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached 892 notice of references cited.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN B STREGE whose telephone number is (571)272-7457. The examiner can normally be reached M-F 9-5 (PST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chan Park can be reached at (571)272-7409. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN B STREGE/ Primary Examiner, Art Unit 2669
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