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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12 August 2026 has been entered.
Election/Restrictions
Claims 16, 17, 20-27 and 29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 13 March 2026.
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 1-2, 5-12, 14 and 61 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (i.e. mental process) without significantly more.
Claims 1-2, 5-12, 14 and 61 are directed toward a computer-assisted surgical system (i.e. 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 claim recites the following:
Independent claim 1 is directed to “a computer-assisted surgical system, comprising: a bone preparation tool; and at least one computing device in communication with the bone preparation tool, the at least one computing device comprising: processing circuitry; and a memory coupled to the processing circuitry, the memory comprising instructions that, when executed by the processing circuitry, causing the processing circuitry to: receive operating information of the bone preparation tool during contact of the bone preparation tool with a portion of a patient bone, determine bone hardness information of the portion of the patient bone based on the operating information; determine if an existing bone preparation plan comprising an implant type and an implant size is compatible with the bone hardness information; and based on a determination that the existing bone preparation plane is incompatible with the bone hardness information, generate an updated bone preparation plane by intraoperatively modifying at least one of the implant type and the implant size.”
The underlined portions of the claim 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 claim 1) recite generic steps of receiving operating information, determining bone hardness information, determining if a bone preparation plane is compatible, and updating the bone preparation plan without adding meaningful limitations to the system without using the bone preparation tool. Additional claims (i.e. claims 5-12 and 14) further define the abstract idea (e.g. defining the operating information, accessing an interference fit value, determining at least one implant component property, generating an offset value, generating an interference-fit value map, and generating the updated bone preparation plan.). The instant claims do no actually provide any surgical invention, but rather they provide for planning such a procedure.
The claims recite the additional element of a bone preparation tool (e.g. burring, cutting, saw, reamer or a drill). The additional element is not sufficient to amount to significantly more than the judicial exception because it does not (1) improve the functioning of a computer or other technology, (2) is not applied with any particular machine, (3) does not effect a transformation of a particular article to a different state, (4) does not effect a particular treatment or prophylaxis for a disease or medical condition, and (5) is 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 in the claims other than the abstract idea per se: at least one computing device. Viewed as a whole, this additional element does 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. at least one computing device) is a generically claimed computer 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 claims 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 1363, 115 USPQ2d 1092-93.
The use of a bone preparation tool (i.e. claims 1, 2, 5-12, 14 and 61) does not amount to significantly more, and is well-understood, routine, and conventional. The dependent claims merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or 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 or token additions to the claims that do not alter or affect how the claimed functions/steps are performed.
The recitation of the above-identified additional limitations in claims 1, 2, 5-12, 14 and 61 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/generate/provide/output 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. Direct TV, 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, not 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 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, 2, 5-12, 14 and 61 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 claim to include, for example, “preparing the patient bone based on the updated bone preparation plan and installing an implant based on the modified implant type and the implant size” would add significantly more and overcome the rejection under 35 U.S.C. 101.
Response to Arguments
Applicant’s arguments, see Remarks, filed 12 August 2026, with respect to the objection of claim 12 have been fully considered and are persuasive. The objection of claim 12 has been withdrawn.
Applicant’s arguments, see Remarks, filed 12 August 2026, with respect to rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are persuasive. The rejection of claim 1 under 35 U.S.C. 103 has been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric Gibson whose telephone number is (571)270-5274. The examiner can normally be reached Monday-Thursday ~6:00 A.M. to 4:00 P.M. (CST).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, 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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/ERIC S GIBSON/ Primary Examiner, Art Unit 3775
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