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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 4 recites that “estimating the patient weight using the regression model further comprises using a neural network”. The disclosure sets forth a number of different alternative methods of estimating patient weight, where a regression model is presented as one option and use of a neural network is an additional (third) option, but does not provide for use of both together, nor is there any description of how that model might implement a neural network. See p. 7, lines 20-29, of the specification as filed. As such, the disclosure does not reasonably convey possession of estimating patient weight using a regression model using a neural network at the time the invention was filed.
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 1-4, 6, 7, 10, 11 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 calls for “receiving image data comprising optical image data of an optical image of the patient and depth image data of a depth image of the patient” but then “selecting, from the frames of the optical image data, a first frame in which no body keypoints are present” and “wherein the first frame comprises an image of the patient table without the patient”. As these frames of image data are explicitly defined as comprising images of the patient, it is entirely unclear how this same data that comprises images of the patient could not comprise the patient. It is unclear if this first frame is intended to be from some other source of image data, or if the image data actually does not comprises image data of the patient despite being defined as such. The same issue is found in claims 10, 11.
Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06.
Claim 1 continues by calling for selection of a second frame where “a movement measure of the patient body keypoints in the optical image data between one frame and at least one previous frame is below a second threshold”. It is entirely unclear how the “one frame” and the “at least one previous frame” relate to the “second frame”. The same issue is found in claims 10, 11.
Claim 2 calls for “identifying a set of second frames”; claim 1 already defines “selecting… a second frame”. It is entirely unclear if the selected second frame is part of the set of second frames, or if this “set of second frames” is in reference to the entire set of “the image data comprising frames” as defined in claim 1 potentially serving as a first set of frames.
Claim 2 continues by referring to “the one frame of the set of the second frames”; there is no antecedent basis for this limitation in the claim. It is entirely unclear what frame this might refer to.
Claim 3 calls for “transforming depth image data”; it is unclear if this refers to the received “depth image data of a depth image of the patient” or to some other depth image data, as this lacks an article. Clarification is required.
Claim 6 calls for “receiving the optical image data for different table positions”; per claim 1, “the optical image data” comprises data of “an optical image of the patient” and “a depth image of the patient”. It is unclear how these singular optical image of the patient and depth image of the patient could occur at different table positions. It is unclear if the intent is to receive additional optical image data in addition to the “the optical image data” that has been received, or if “the optical image data” received as defined in claim 1 further includes data and images involving different table positions. Clarification 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.
Claim(s) 1-4, 6, 7 is/are rejected under 35 U.S.C. 101 because the claimed invention, considering all claim elements both individually and in combination as a whole, do not amount to significantly more than a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Claim 1 is a claim to a process, machine, manufacture, or composition of matter and therefore meets one of the categorical limitations of 35 U.S.C. 101. However, claim 1 meets the first prong of the step 2A analysis because it is directed to a/an abstract idea, as evidenced by the claim language of “receiving image data”, “detecting patient body keypoints”, “selecting… a first frame”, “selecting… a second frame”, “determining a patient volume”, and “estimating a patient weight”. This claim language, under the broadest, reasonable interpretation, encompasses subject matter that may be performed by a human using mental steps or with pen and paper that can involve basic critical thinking, which are types of activities that have been found by the courts to represents abstract ideas (i.e., the mental comparison in Ambry Genetics, or the diagnosing an abnormal condition by performing clinical tests and thinking about the results in Grams). The claim language also meets prong 2 of the step 2A analysis because the above-recited claim language does not integrate the abstract idea into a practical application. That is, there appears to be no tangible improvement in a technology, effect of a particular treatment or prophylaxis, a particular machine or manufacture that is integrated, or transformation/reduction of a particular article to a different state or thing as a result of this claimed subject matter. As a result, step 2A is satisfied and the second step, step 2B, must be considered.
With regard to the second step, the claim does not appear to recite additional elements that amount to significantly more. The additional elements are that the method is “computer-implemented”. However, these elements are not “significantly more” because they are well-known, routine, and/or conventional as evidenced by Alice v. CLS Bank and Bilksi v. Kappos, which held that generic computer structure does not otherwise transform a patent-ineligible claim into a patent-eligible one. Therefore, these elements do not add significantly more and thus the claim as a whole does not amount to significantly more than a judicial exception.
Additionally, the ordered combination of elements do not add anything significantly more to the claimed subject matter. Specifically, the ordered combination of elements do not have any function that is not already supplied by each element individually. That is, the whole is not greater than the sum of its parts.
In view of the above, independent claim 1 fails to recite patent-eligible subject matter under 35 U.S.C. 101. Dependent claim(s) 2-5, 6, and 7 fail to cure the deficiencies of independent claim 1 by merely reciting additional abstract ideas or further limitations on abstract ideas already recited. Claims 2 and 3 are directed to aspects of the abstract idea itself; claim 4 recites the use of a “neural network” at a high level of generality only to perform the abstract idea, thus serving as a tool for making a mathematical calculation as it does not include any details of how it operates or how the estimation is accomplished (see 101 Guidance examples 47-49); claims 6-7 merely define acquiring additional data that is input to the abstract idea. Thus, claim(s) 1-5, 6, 7 is/are rejected under 35 U.S.C. 101.
Claim(s) 10 is/are rejected under 35 U.S.C. 101 because the claimed invention, considering all claim elements both individually and in combination as a whole, do not amount to significantly more than a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Claim 10 is a claim to a process, machine, manufacture, or composition of matter and therefore meets one of the categorical limitations of 35 U.S.C. 101. However, claim 10 meets the first prong of the step 2A analysis because it is directed to a/an abstract idea, as evidenced by the claim language of “receive image data”, “detect patient body keypoints”, “select… a first frame”, “select… a second frame”, “determine a patient volume”, and “estimate a patient weight”. This claim language, under the broadest, reasonable interpretation, encompasses subject matter that may be performed by a human using mental steps or with pen and paper that can involve basic critical thinking, which are types of activities that have been found by the courts to represents abstract ideas (i.e., the mental comparison in Ambry Genetics, or the diagnosing an abnormal condition by performing clinical tests and thinking about the results in Grams). The claim language also meets prong 2 of the step 2A analysis because the above-recited claim language does not integrate the abstract idea into a practical application. That is, there appears to be no tangible improvement in a technology, effect of a particular treatment or prophylaxis, a particular machine or manufacture that is integrated, or transformation/reduction of a particular article to a different state or thing as a result of this claimed subject matter. As a result, step 2A is satisfied and the second step, step 2B, must be considered.
With regard to the second step, the claim does not appear to recite additional elements that amount to significantly more. The additional elements are “an optical camera”, “a depth camera”, and “a processor” for executing the abstract idea. However, these elements are not “significantly more” because they are well-known, routine, and/or conventional as evidenced by Alice v. CLS Bank and Bilksi v. Kappos, which held that generic computer structure does not otherwise transform a patent-ineligible claim into a patent-eligible one. Further, as presented, the recited cameras have no relation to the abstract idea such that they do not amount to significantly more. Therefore, these elements do not add significantly more and thus the claim as a whole does not amount to significantly more than a judicial exception.
Additionally, the ordered combination of elements do not add anything significantly more to the claimed subject matter. Specifically, the ordered combination of elements do not have any function that is not already supplied by each element individually. That is, the whole is not greater than the sum of its parts.
In view of the above, independent claim 10 fails to recite patent-eligible subject matter under 35 U.S.C. 101.
Claim(s) 11 is/are rejected under 35 U.S.C. 101 because the claimed invention, considering all claim elements both individually and in combination as a whole, do not amount to significantly more than a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Claim 11 is a claim to a process, machine, manufacture, or composition of matter and therefore meets one of the categorical limitations of 35 U.S.C. 101. However, claim 10 meets the first prong of the step 2A analysis because it is directed to a/an abstract idea, as evidenced by the claim language of “receive image data”, “detect patient body keypoints”, “select… a first frame”, “select… a second frame”, “determine a patient volume”, and “estimate a patient weight”. This claim language, under the broadest, reasonable interpretation, encompasses subject matter that may be performed by a human using mental steps or with pen and paper that can involve basic critical thinking, which are types of activities that have been found by the courts to represents abstract ideas (i.e., the mental comparison in Ambry Genetics, or the diagnosing an abnormal condition by performing clinical tests and thinking about the results in Grams). The claim language also meets prong 2 of the step 2A analysis because the above-recited claim language does not integrate the abstract idea into a practical application. That is, there appears to be no tangible improvement in a technology, effect of a particular treatment or prophylaxis, a particular machine or manufacture that is integrated, or transformation/reduction of a particular article to a different state or thing as a result of this claimed subject matter. As a result, step 2A is satisfied and the second step, step 2B, must be considered.
With regard to the second step, the claim does not appear to recite additional elements that amount to significantly more. The additional elements are “a patient support”, a medical imaging unit”, and an “estimation system” comprising “an optical camera”, “a depth camera”, and “a processor” for executing the abstract idea. However, these elements are not “significantly more” because they are well-known, routine, and/or conventional as evidenced by Alice v. CLS Bank and Bilksi v. Kappos, which held that generic computer structure does not otherwise transform a patent-ineligible claim into a patent-eligible one. Further, as presented, the recited support, imaging unit, and cameras have no relation to the abstract idea such that they do not amount to significantly more. Therefore, these elements do not add significantly more and thus the claim as a whole does not amount to significantly more than a judicial exception.
Additionally, the ordered combination of elements do not add anything significantly more to the claimed subject matter. Specifically, the ordered combination of elements do not have any function that is not already supplied by each element individually. That is, the whole is not greater than the sum of its parts.
In view of the above, independent claim 11 fails to recite patent-eligible subject matter under 35 U.S.C. 101.
Response to Arguments
Applicant's arguments filed 16 June 2026 have been fully considered but they are not persuasive.
Regarding the rejections under 112a and 112b, Applicant asserts that all issues with the claims have been resolved via the newly presented amendments; this is not the case, as set forth above.
Regarding the rejections under 101, Applicant argues that the invention as claimed recites a process than cannot be practically be performed in the human mind because of the steps of “processing optical image frames and depth images frames, detecting body keypoints in optical image data, applying frame-selection criteria based on keypoint presence and inter-frame keypoint movement, and deriving a patient volume map from a difference between depth-image frames at selected times”. It should be noted that no specific algorithms or methods of data processing have been recited for any of these steps. “Processing” image frames requires no more than observation, as does “detecting body keypoints” by observing features in the data; application of “frame-selection criteria” can equally involve mere observation and judgement, and “deriving a patient volume map” requires no more than comparison of areas in different frames. None of these, in the absence of more particular, specific, algorithms or techniques, is beyond the capabilities of the human mind.
Applicant cites to various Court decisions that are not analogous to the instant invention; SRI International is directed to processing of “network packets”, not “optical frames”, where “network packets” require use of a processing device but “optical frames” include physical photographs, for example. SiRF Technology is directed to data processing where the processing itself is a factor of the relative locations of components within the system which change during operation; the instant invention is embodied, at best, entirely on a single processor. Research Corp is directed specifically to particularly digitally generated images; the instant invention involves only frames of optical image data; any single photograph in a series of photographs is also a frame of optical image data. The assertion that these steps cannot be performed as a mental process is entirely unpersuasive.
Applicant further argues that the invention as claimed recites a practical application of the abstract idea as a result of “applies image processing and depth-data processing to estimate a physical property of a patient”; it should be noted that the practical application must be provided by an additional element, not the abstract idea itself, such that this is entirely unpersuasive. Applicant continues by asserting that the capture of data is “not merely collected as insignificant pre-solution activity” because the collected data “controls the selection of the relevant” frames. As the collection of data is not impacted by the selection of frames and all data is collected prior to performing any analysis such as selecting “relevant” frames, this is a clear illustration of where all uses of the recited judicial exception require such data gathering, an insignificant extra-solution activity. See MPEP 2106.05.
Applicant then argues that “The claim also is not a generic instruction to ‘apply’ weight estimation on a computer”; claim 1 recites “estimating a patient weight from the determined patient volume using a regression model”. No part of the estimation is recited beyond a high level of generality; no part of the estimation model is recited whatsoever; it is unclear what part of this is “not a generic instruction”. Applicant cites to various court decisions which indicate that use of a computer does not inherently prevent a method from being statutory; however, Applicant’s assertion that the claims also recite “a specific ordered combination of technical operations on optical image frames and depth image frames” is unpersuasive in the absence of any recitation of what these operations involve or how they are performed. Merely involving a computer for providing a technological environment for executing an abstract idea does not inherently render a claim non-statutory, but nor does the merely presence of a computer for doing no more than providing that technological environment provide anything significantly more to the abstract idea itself.
Applicant concludes this section by asserting that the “ordered combination” of the abstract idea itself “supplies significantly more than the alleged abstract idea; as Applicant’s “ordered combination” merely recites the abstract idea, this does not appear to be relevant to step 2B of the Office’s 101 guidance which is directed to additional elements.
Regarding claims 10 and 11, Applicant merely asserts that these “recite physical systems”; as clearly noted in the analysis, the presence of a “physical system” does not negate the overall analysis of 101 and identification of an abstract idea, as clearly set forth above. The remainder of Applicant’s remarks merely reiterate arguments that were directed to claim 1 and which have been addressed above.
The claims remain rejected.
Conclusion
No art has been applied against the claims at this time; however, as all claims have been rejected under 112a, 11b, and 101 above, they are not presently allowable and the question of prior art will be revisited if applicable when the scope of the claims has been resolved.
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.
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/KAREN E TOTH/ Examiner, Art Unit 3791
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