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 § 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 15-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Claim 15 recites a generic processor and memory that is used to perform calculations, namely, obtaining data, performing segmentation, and generating a 3D model. This judicial exception is not integrated into a practical application because the recited elements do not improve the functioning of a computer or any other technology or technical field according to MPEP 2106.04(d)(1) and 2106.05(a). The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed apparatus, a generic processor and memory, merely performs calculations and provides output, i.e., mere instructions to apply an exception using generic computer parts in accordance with MPEP 2106.05(f).
Dependent claims 16-28, recite with more specificity data for evaluation, judgment and opinion (see MPEP 2106.04(a)(2)(III)). While the claims recite steps that appear to be extra solution activity where data to be analyzed is obtained by the abstract process, they do not recite a practical application that would amount to significantly more as a whole, no more than mere instructions to apply an exception using a generic processor and memory.
Each of the claims recite mathematical calculations based on mathematical relationships and equations (see MPEP 2106.04(a)(2)(I)) that generally link the use of the above-identified abstract idea to a particular technological environment or field of use, namely surgical planning, according to MPEP 2106.05(h). The generically recited computer elements in independent claim 15, namely a processing structure and memory do not improve the functioning of a computer, or any other technology or technical field according to MPEP 2106.04(d)(1) and 2106.05(a). Nor do the additional elements of claims 16-28 serve to apply the above-identified abstract idea with, or by use of, a particular machine according to MPEP 2106.05(b), effect a transformation according to MPEP 2106.05(c), provide a particular treatment or prophylaxis according to MPEP 2106.04(d)(2) or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment (MPEP 2106.04(d)(2) and 2106.05(e)).
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.
Claims 15-28 are 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. In claim 15, the recitation “receive a 3D point cloud….” Applicant’s disclosure does not describe how the 3D point cloud is received. For e.g. is this retrieved from memory based on surgeon input or is it based on images from the camera?
Appropriate correction is required.
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 15-28 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.
In claim 15, the recitation “receive a 3D point cloud….” renders the claim vague and indefinite because Applicant’s disclosure does not describe how the 3D point cloud is received. For e.g. is this retrieved from memory based on surgeon input or is it based on images from the camera?
In claims 22-25, the recitation “first enclosed N-sided polygon is a first circle” renders the claim vague and indefinite because it is unclear what Applicant is trying to claim. A circle is not a polygon.
Appropriate correction is required.
Conclusion
Non-application of prior art indicates allowable subject matter provided the rejections made in this office action are overcome.
The closest prior art is: Pack (US 2022/0202495 A1) which discloses a planning computer or device 216 including processors and memory, software and utilities that review pre-operative or intra-operative images to plan the entry and exit points of bone tunnels during revision ACL surgery. Medical imaging data is read and segmented followed by constructing three-dimensional (3D) virtual models to aid a user in planning a surgical procedure (para [0040]); and Lang (US 11348257) which discloses 3-D modeling based on point cloud data.
However, no references or a reasonable combination thereof, could be found which disclose all the elements of obtaining a 3D object model from 3D point cloud representing a bone tunnel, according to Applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anu Ramana whose telephone number is (571)272-4718. The examiner can normally be reached 8:00 am-5:00 pm.
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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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August 11, 2026
/Anu Ramana/Primary Examiner, Art Unit 3775
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