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 .
Notice to Applicant
Status of Claims
1. Claims 1 and 8-11 have been amended. Now, claims 1-11 are 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.
2. Claims 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
3. Step 1 – Statutory Categories of Invention:
Claims 1-10 are drawn to a device and claim 11 is drawn to a method which are one of the statutory categories of invention.
4. Step 2A – Judicial Exception Analysis, Prong 1:
Independent claims 1 and 11, the claims set forth a device and method that include limitations that recite at least one abstract idea. Specifically, independent claim 1 recites, in part:
creates an actual surgical cue sheet data based on a surgical image imaged in a surgical process or based on data obtained;
determine whether at least one surgical error is included in the actual surgical cue sheet data,
wherein the at least one surgical error includes at least one of an unnecessary detailed surgical operation, a missing detailed surgical operation, and an incorrect detailed surgical operation, and
in determining whether the at least one surgical error is included in the actual surgical cue sheet data: compare by comparing a plurality of detailed surgical procedures included in the actual surgical cue sheet data with a plurality of detailed surgical procedures included in a reference cue sheet data, and determine, based on a result the comparison, whether the unnecessary detailed surgical operation, the missing detailed surgical operation, or the incorrect detailed surgical operation is present in the actual surgical cue sheet data; and
provide the feedback indicating the determined surgical error, by sending a notification related to the feedback to the surgeon when a surgery is finished.
These steps amount to obtaining surgical data and providing feedback indicating a surgical error, which is directed to functions performable in the mind or with pen and paper and are only concepts relating to organizing or analyzing information in a way that can be performed mentally or is analogous to human mental work (MPEP § 2106.04(a)(2)(III)(B) citing the abstract idea grouping for mental processes with or without physical aid).
Additionally, these steps could also amount to obtaining surgeon data and providing feedback indicating a surgical error to the surgeon, which falls under the sub-grouping "managing personal behavior or relationships or interactions between people" include social activities, teaching, and following rules or instructions, which is the abstract idea grouping for Certain Methods of Organizing Human Activity (MPEP § 2106.04(a)(2)(II)(C)).
5. Step 2A – Judicial Exception Analysis, Prong 2:
This judicial exception is not integrated into a practical application because the additional elements within the claims only amount to instructions to implement the judicial exception using a computer [MPEP 2106.05(f)].
Independent Claims 1 and 11 recite a processor, a surgery robot, through a website displayed on a mobile terminal, an application installed in the mobile terminal.
These additional elements merely amount to the general application of the abstract idea to a technological environment (“a processor”, “a surgery robot”, “through a website displayed on a mobile terminal”, and “an application installed in the mobile terminal”) and insignificant pre-and-post solution activity (creating, determining, including, providing). The specification makes clear the general-purpose nature of the technological environment. Paragraphs 45, 49-52, 103, 129 indicate that while exemplary general purpose systems may be specific for descriptive purposes, any elements or combinations of elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim.
Therefore, considered both individually and as an ordered combination, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional limitations are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, do not effect a transformation or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea. Accordingly, the Examiner concludes that the claim fails to integrate the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
The above claims, as a whole, are therefore directed to an abstract idea.
6. Step 2B – Additional Elements that Amount to Significantly More:
Under step 2B of the Alice/Mayo framework, it must finally be considered whether the claim includes any additional element or combination of elements that provide an inventive concept (i.e., whether the additional element or elements are sufficient to amount to significantly more than the abstract idea). As indicated above, considered both individually and as an ordered combination, the additional elements do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim, do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea
Further, the additional elements (recited above) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Communicating information (i.e., receiving or transmitting data over a network) has been repeatedly considered well-understood, routine, and conventional activity by the Courts (See MPEP 2106.05(d)). Accordingly, the Examiner asserts that the additional elements, considered both individually, and as an ordered combination, do not provide an inventive concept, and the claim is ineligible for patent.
Independent Claim 11 is parallel in scope to claim 1 and ineligible for similar reasons.
Dependent claims:
Each of the steps of the dependent claims 2-10 only serve to further limit or specify the features of independent claims 1 and11 accordingly, and hence are nonetheless directed towards fundamentally the same abstract idea as the independent claim and utilize the additional elements already analyzed in the expected manner.
For example, Claim 9 sets forth:
obtain information about prognosis corresponding to each of one or more actual surgical cue sheet data including the actual surgical cue sheet data,
perform reinforcement learning based on information about the one or more actual surgical cue sheet data and the prognosis, and
determine a correlation between at least one detailed surgical operation included in the one or more actual surgical cue sheet data and the prognosis based on a result of the reinforcement learning.
Such a recitation merely embellishes the abstract idea of obtaining surgical data and providing feedback indicating a surgical error, which is directed to Certain Methods of Organizing Human Activity. While the claim does set forth the additional limitation of “wherein the processor is further configured”, this recitation is similar to the additional limitations in claim 1, as it does no more than generally link the use of the abstract idea to a particular technological environment. As such, it does not integrate the abstract idea into a practical application, and does not provide an inventive concept. Accordingly, the claim does not confer eligibility on the claimed invention and is ineligible for similar reasons to claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
7. The 35 U.S.C. 102(a)(1) rejection of claims 1-11 as being anticipated by United States Patent Application Publication Number 2011/0119224, Mangione-Smith, et al., hereinafter Mangione-Smith is hereby withdrawn pursuant to the amendments filed on January 20, 2026. Mangione-Smith fails to disclose, suggest, or otherwise render obvious the claimed combination of features presently set forth in amended independent claim 1, including the combination of: "wherein the at least one surgical error includes at least one of an unnecessary detailed surgical operation, a missing detailed sursgical operation, and an incorrect detailed surgical operation, and wherein the processor is further configured to, in determining whether the at least one surgical error is included in the actual surgical cue sheet data: compare a plurality of detailed surgical procedures included in the actual surgical cue sheet data with a plurality of detailed surgical procedures included in a reference cue sheet data, and determine, based on a result the comparison, whether the unnecessary detailed surgical operation, the missing detailed surgical operation, or the incorrect detailed surgical operation is present in the actual surgical cue sheet data" (emphasis added).
Response to Arguments
8. Applicant's arguments filed have been fully considered but they are not persuasive.
A. Applicant argues that claims recite additional elements that integrate the judicial exception into a practical application of the claimed subject matter, by greatly reducing unnecessary processes in performing the surgery and improving efficiency of the surgical process, in a non-conventional way.
In response, Examiner respectfully disagrees. The additional elements as outlined above in the current 35 U.S.C. 101 rejection are recited as a tool to apply data to provide a feedback on a surgical outcome (MPEP § 2106.05(f)(2) see case involving a commonplace business method or mathematical algorithm being applied on a general purpose computer within the “Other examples.. i.”) amounting to instruction to implement the abstract idea using a general purpose computer. Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 1357 (2014). As drafted, the claim elements represent a process that, under its broadest reasonable interpretation, encompassed obtaining surgical data and providing feedback indicating a surgical error, which is a Mental Process and further encompasses obtaining surgeon data and providing feedback indicating a surgical error to the surgeon, which is a process that falls under Certain Method of Organizing Human Activity. Examiner finds the claims recite mere instructions to implement the abstract idea on a computer (using “a processor”, “a surgery robot”, “through a website displayed on a mobile terminal”, and “an application installed in the mobile terminal”) and uses the computer as a tool to perform the abstract idea without reciting any improvements to a technology, technological process or computer-related technology. The method does not improve the computer or technology and can be performed using a generic computer. The newly claimed features are just tools used to perform the steps of the claim.
Questions of preemption are inherent in the two-part framework from Alice Corp. and Mayo (incorporated in the 2014 IEG as Steps 2A and 2B), and are resolved by using this framework to distinguish between preemptive claims, and "those that integrate the building blocks into something more…the latter pose no comparable risk of pre-emption, and therefore remain eligible". This framework found that the claims do tie up the exception. (See the 35 U.S.C. 101 rejection above).
The claims do not integrate the abstract idea into a practical application, and does not include additional elements that provide an inventive concept (are sufficient to amount to significantly more than the abstract idea). (Digitech Image Tech., LLC v. Electronics for Imaging, Inc. (Fed. Cir. 2014)). The claims do not recite any unconventional computer functions. The structural elements as claimed are for mere convenience and the recited claim elements constitute a Mental Process and Certain Methods of Organizing Human Activity, which are still considered an abstract idea under the 2019 PEG. As a result, there are no meaningful limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself, and the claims are properly rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. The claim is silent on any computer operation and specific technological implementation that would move the claim beyond a general link to a technological environment.
Dependent Claims 2-10 add further limitations to independent claims 1 and 11, which are also directed to an abstract idea.
Accordingly, the claims do not amount to significantly more, and the application of the abstract idea is therefore not eligible.
Conclusion
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
A. Medical user interface (US 11721431 B2) teaches .
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amber A. Misiaszek whose telephone number is (571) 270-1362. The examiner can normally be reached on M-Th 7:30-5, F 7:30-4, every other Friday Off.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fonya Long can be reached on 571-270-5096. The fax phone numbers for the organization where this application or proceeding is assigned are (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) computer-accessible medium. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR computer-accessible medium, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR computer-accessible medium, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information computer-accessible medium, call 800-786-9199 (IN USA OR CANADA) or (571) 272-1000.
/AMBER A MISIASZEK/Primary Examiner, Art Unit 3682