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 .
DETAILED ACTION
The amendment filed on July 07, 2026 is acknowledged and entered. Claims 1-21 are amended. Claim 22 is new. Claims 1-22 are pending and under examination in this Office action.
Response to Amendment
The objection to claims 2, 5-11 and 17 is now withdrawn in view of the claim amendment. New grounds of objection are now made.
The rejection to claims 1-21 under 35 U.S.C. 101 is now withdrawn in view of the claim amendment. A new ground of rejection to the newly added claim 22 is now made.
The rejections to claims 1-21 under 35 U.S.C. 112(b) are now withdrawn in view of the claim amendment. New grounds of rejection are now made.
The rejection to claims 1, 3-4, 13 and 20-21 under 35 U.S.C. 102(a)(1) is now withdrawn in view of the claim amendment.
Claim Objections
Claim 21 is objected to because of the following informalities:
Claim 21, line 1: “A storage medium” should be corrected to –A non-transitory storage medium--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claims 1, 20 and 21: the claim limitation of “the endoscope control device executes an insertion operation of the endoscope insertion part” in the last two lines has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “device” coupled with functional language “execute” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “device”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
Claims 1, 20 and 21: “an endoscope control device” refers to the specification, PG Pub US 2024/0423452 A1, [0125]: the endoscope control device 50 is typically a fully automatic or semi-automatic endoscope operating robot.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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 22 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the subject matter eligibility test (see MPEP 2106.03).
Claim 22 is drawn to a “system” which describes one of the four statutory categories, i.e., a machine.
Step 2A of the subject matter eligibility test (see MPEP 2106.04).
Prong One:
Claim 22 recites (“sets forth” or “describes”) the abstract idea of “a mental process” (MPEP 2106.04(a)(2).III.), substantially as follows: (A) determine a priority to use at least one of an insertion status learning model or a shape category determination logic…based on the shape information and at least one of (1) a reliability of an insertion status category, (2) a conformity between an insertion shape category, (3) a priority information preliminarily assigned, (4) a determination of whether the insertion shape category is classifiable, and (5) an adoption history, (B) execute, (1) entering the shape information to the model and acquire an insertion status category, and (B) applying the shape information to the shape category determination logic and acquire an insertion shape category, and (C) generate the insertion assisting information using at least one of the insertion status category and the insertion shape category.
In claim 22, the above recited steps can be practically performed in the human mind, with the aid of a pen and paper. A person may evaluate any of the conditions (A)(1)-(5) mentally and determine the priority by comparing any of the parameters (the reliability, the conformity, the priority information, whether classifiable, and an adoption history) to a reference status, a baseline value, or a look-up table, along with the shape information. He or she may further use the model or the logic to acquire the insertion status category and/or the insertion shape category. The insertion status category and the insertion shape category may be as simple as a selection from a list of different bending condition of the insertion part of the endoscope. To generate the insertion control information can be achieved mentally by evaluating the status category and providing a justification based on the person’s experience or some look-up table. For example, a person may determine that the shape category determination logic should be used because the reliability of the insertion status category is too low. He or she can select an insertion shape category based on the shape information, and determines that the selected insertion shape category deviates from an ideal arrangement and recommends that an adjust of the endoscope position is needed. There is nothing recited in the claim to suggest an undue level of complexity in how the above steps are performed. Therefore, a person would be able to perform these determining, executing and generating steps mentally.
Prong Two: Claim 22 does not include additional elements that integrate the mental process into a practical application.
This judicial exception is not integrated into a practical application. In particular, the claims recites (1) an additional step of one or more processor having hardware to acquire shape information of an endoscope insertion part, (2) performing above identified abstract idea of determining, executing and generating steps with the processor, and (3) display the insertion assisting information on a display device.
The step (1) represents merely data gathering or pre-solution activities that are necessary for use of the recited judicial exception and are recited at a high level of generality. The step (3) represents merely data output or post-solution activities that are recited at a high level of generality.
In regard to the step (2), “A claim that requires computer may still recite a mental process. MPEP 2106.04(a)(2).III.C.: Performing a mental process on a generic computer, in a computer environment, or using a computer as a tool to perform the steps are considered a mental process”.
As a whole, the additional elements merely serve to gather and feed information to the abstract idea and to output the outcome of the abstract idea, while generically implementing it on conventionally used tools. There is no practical application because the abstract idea is not applied, relied on, or used in a meaningful way. No improvement to the technology is evident, and the estimated bio-information is not outputted in any way such that a practical benefit is realized. Therefore, the additional elements, alone or in combination, do not integrate the abstract idea into a practical application.
Step 2B of the subject matter eligibility test (see MPEP 2106.05).
Claim 22 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the claims recite (1) an additional step of one or more processor having hardware to acquire shape information of an endoscope insertion part, (2) performing above identified abstract idea of determining, executing and generating steps with the processor, and (3) display the insertion assisting information on a display device. These steps represents mere data gathering or pre/post/extra-solution activities and a tool that are necessary for use of the recited judicial exception and are recited at a high level of generality. For similar reasons set forth in Step 2A, Prong Two above, the additional elements do not provide an inventive concept under Step 2B.
Accordingly, these additional steps amount to no more than insignificant conventional extra-solution activity. Mere insignificant conventional extra-solution activity cannot provide an inventive concept. The claims hence are not patent eligible.
Based on the above consideration and analysis, claim 22 is patent ineligible, i.e., rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 112
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 1-22 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 pre-AIA the applicant regards as the invention.
Claim 1, line 6 recites “determine a priority” that renders the scope of th claim indefinite. By definition to determine a priority is to decide an order. However, it is unclear if the claimed invention is set forth for selecting only one of the model and the logic to use, or for deciding an order of using the model and the logic. In FIG.3, the model 33a and the logic 34a are illustrated as possible paths 33 and 34 from the endoscope shape acquisition unit 31. It is unclear if only one of the paths can be selected or both can be selected to proceed but there is an order of which one to perform first.
Claim 1, lines 6-8 recites “determine a priority to use at least one of an insertion status learning model or a shape category determination logic…” that renders the scope of the claim indefinite. The term “at least one of” includes one or both of the model and the logic. To determine a priority to use is to decide which one of them to use. It is hence unclear (1) if both of the model and the logic are to be used, what does it mean by determine a priority; and (2) whether the priority refers a priority among a. to use the model, b. to use the logic and c. to use both the model and the logic.
Claim 1, line 12 recites “the insertion status category output” lacks proper antecedent basis.
Claim 1, lines 19-20 recites “execute, based on the determined priority, at least one of [the entering step and the applying step]” that renders the scope of the claim indefinite. The term “at least one of” covers either one or both of the entering step and the applying step”. Since the entering step refers to the model, and the applying step refers to the logic, it is reasonably assumed that there is a corresponding relationship between the priority determined in lines 6-8 and the step to execute in lines 21-26. However, it is unclear under what condition which of the model, the logic, or both are to be determined to be used (i.e., to have a priority). The claim recites in lines 9-18 5 different conditions, yet the claim has no further recitation in regard to how those 5 conditions are used when determining the priority. These 5 conditions are recited such that “at least one of them” is to be based on. Hence, there are a number of combinations of conditions to consider when the priority is determined, and none of them is clear in regard to when to select the model or when to select the logic to execute their corresponding steps.
Claim 1, lines 21-23 recites “entering the shape information to the insertion status learning model and acquiring, from the insertion status learning model, the insertion status category resulted from categorization of insertion status of the endoscope insertion part” that renders the scope of the claim indefinite. However, this entering step is determined to be executed based on the priority that is determined based on a reliability of an insertion status category recited in lines 9-10. Hence, the insertion status category has already been determined (such that the reliability can be determined to determine the priority), it is unclear how it may be determined again (in lines 21-23) based on the priority that is determined based on a reliability of itself (in lines 9-10).
Claim 1, line 25 recites “…acquiring the insertion shape category resulted from categorization of insertion shape of the endoscope insertion part” that renders the scope of the claim indefinite. Neither the “insertion shape” has been determined, nor the “categorization of insertion shape” has been performed. It is unclear what they are and how the insertion shape category may be resulted from them.
The above rejections apply to claims 20-22 for the substantially identical limitations recited in those claims.
Claim 2, lines 9-12 recites “in a case where an insertion shape category in the insertion status category does not match the insertion shape category acquired from the shape category determination logic, correct the insertion shape category in the insertion status category to…” that renders the scope of the claim indefinite. In claim 1, the insertion status category is acquired as recited in line 9, yet there no further acquisition or determination of an insertion shape category in the insertion status category. Without having it being acquired or determined first, it is unclear how it may be corrected.
Claim 4, line 2 recites “insertion control information” that renders the scope of the claim indefinite. It is unclear whether it refers to the same or different from the identical term recited in claim 1, line 7.
Claim 6, lines 9-12 recites “in a case where a site of the subject in the insertion status category does not match the site of the subject acquired from the site learning model, correct the insertion shape category in the insertion status category to…” that renders the scope of the claim indefinite. In claim 1, the insertion status category is acquired as recited in line 9, yet there no further acquisition or determination of a site of the subject in the insertion status category. Without having it being acquired or determined first, it is unclear how it may be corrected.
Claim 9, line 9 recites “the insertion shape category in the insertion status category”. The underlined portion lacks proper antecedent basis.
Claim 10, line 10 recites “determine, with reference to priority information attached to at least either one of the insertion status category and the insertion shape category” that renders the scope of the claim indefinite. The priority, as recited in claim 1, is determined between using the model or using the logic. It is unclear what is means by the priority information attached to the insertion status category or the insertion shape category. It is unclear whether there is any link between the priority determined in line 6 of claim 1 vs. the priority information recited in this claim.
Claim 10, line 11 recites “the insertion shape category in the insertion status category”. The underlined portion lacks proper antecedent basis.
Claim 11, line 11 recites “the insertion shape category in the insertion status category”. The underlined portion lacks proper antecedent basis.
Claim 12, line 4 recites “in a case where the shape information satisfies none of a set of conditions of the shape category determination logic” that renders the scope of the claim indefinite. It is unclear what the set of conditions refers to. In other words, without knowing that the set of conditions is, it would not be possible to determine whether the shape information satisfies any or none of the conditions.
Claim 13, line 3 recites “a shape of the endoscope insertion part” that renders the scope of the claim indefinite. It is unclear whether this shape of the endoscope insertion part and the “insertion shape of the endoscope insertion part” recited in line 25 of claim 1 refers to the same, and if not, what is the difference between them.
The dependent claims of the above rejected claims are rejected due to their dependency.
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.
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/YI-SHAN YANG/Primary Examiner, Art Unit 3798
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