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 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the method can be performed by a human in his/her mind.
Each of Claims 1-22 recites at least one step or instruction for a method od identify, track initiate and cease a process, which is grouped as a mental process under the 2019 PEG or a certain method of organizing human activity under the 2019 PEG. The claimed limitations involve managing interactions between people, namely, by observation, judgment, evaluation in interaction by starting or stopping a machine or a observation process by his/her choosing, which is one of certain methods of organizing human activity under the 2019 PEG.]] Accordingly, each of Claims 1-22 recites an abstract idea.
Specifically, Claim 1 recites:
1. A method of controlling a medical instrument for examining tissue during a medical procedure, the method comprising: identifying a volume of operation in which the medical procedure will be performed; repeatedly tracking a status of the instrument during the medical procedure; automatically initiating operation of the instrument based on a first location of the instrument; and automatically ceasing operation of the instrument based on a second location of the instrument.
Specifically, Claim 15 recites:
15. A system for controlling a medical instrument for examining tissue during a medical procedure, the system comprising: an automated surgical system; a medical instrument coupled to the automated surgical system and comprising a probe; a communication link between the automated surgical system and the optical instrument; and means for automatically activating and deactivating the medical instrument.
Furthermore, claims 1-22 involve observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
Accordingly, as indicated above, each of the above-identified claims recites an abstract idea.
Further, dependent Claims 2-14 and 16-22 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 process steps are performed.
None of Claims 1-22 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
For at least the above reasons, the system and method of Claims 1-22 are directed to applying an abstract idea (e.g., mental process or certain method of organizing human activity) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 1-22 provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1-22 (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. As such, the above-identified additional elements, when viewed as whole, 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. Thus, Claims 1-22 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, none of the Claims 1-22 amounts to significantly more than the abstract idea itself.
Accordingly, Claims 1-22 are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas implemented on a generic computer in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Austin et al. (US 2018/0368656 A1).
With respect to claim 1, Austin discloses a method of controlling a medical instrument for examining tissue during a medical procedure, the method comprising: identifying a volume of operation in which the medical procedure will be performed (see paragraph 1345 indicating the technique may be useful to identify and/or highlight the location and/or boundaries of specific features of interest such as tumors as the claimed volume of interest); repeatedly
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tracking a status of the instrument during the medical procedure (see paragraph 1806 constantly tracking an endoscope’s position as the claimed medical instrument; see Figure 1A showing the surgical instrument #17, viewing platform #9, imaging system #18 and display device #13); automatically initiating operation of the instrument based on a first location of the instrument (see paragraphs 1662 and 1670 discussing how the user activates the operation of the endoscope based on the location and hold/pause/stop in a location); and automatically ceasing operation of the instrument based on a second location of the instrument (see paragraph 1530).
With respect to claim 2, Austin discloses coupling the instrument to an automated surgical system; wherein the automated surgical system performs said repeated tracking of a status of the instrument with one or more sensors (see paragraph 1686).
With respect to claims 3 and 17, Austin discloses the status of the instrument comprises a location and/or an orientation of the instrument (see paragraphs 1613, 1714, 1806-1809).
With respect to claim 4, Austin discloses the status of the instrument comprises a measure of radiation to which the tissue has been exposed during the medical procedure (see paragraph 0924, 1032, 1345, 1358, 1363 and 1567).
With respect to claim 5, Austin discloses communicating data to the automated surgical system from the instrument (see paragraph 1670).
With respect to claims 6 and 16, Austin discloses at the automated surgical system, displaying the data (Abstract and paragraph 1255).
With respect to claim 7, Austin discloses storing the data (see paragraphs 1562 and 1564).
With respect to claims 8 and 22, Austin discloses forwarding the data to a surgical microscope (see paragraphs 1257 and 1646).
With respect to claim 9, Austin discloses measuring, with the instrument, fluorescence signals from endogenous and/or exogenous fluorophores (see paragraphs 1596 and 1711 disclosing it being exogenous).
With respect to claim 10, Austin discloses performing spectrally-resolved and/or time-resolved measurements of the fluorescence signals (see paragraph 1532 and 1573).
With respect to claims 11 ad 19, Austin discloses fluorescence acquiring, with the optical instrument, one or more of: a diffuse optical spectroscopy signal; an optical coherence tomography (OCT) signal; and an interferometric near-infrared spectroscopy signal (see paragraph 1696 discussing interferometric near-infrared spectroscopy signal).
With respect to claim 12, Austin discloses the first location is inside the volume of operation (see paragraph 1463); and the second location is outside the volume of operation (see paragraphs 1452 and 1446 as shown in Figure 14A).
With respect to claim 13, Austin discloses pausing operation of the instrument based on a first estimated radiation exposure of tissue associated with the medical procedure; and resuming the paused operation based on a second estimated radiation exposure of the tissue (see paragraph 1530).
With respect to claim 14, Austin discloses adjusting the volume of operation in response to removal of tissue during the surgery (see paragraph 1445 discussing the use of hand retractor #513).
With respect to claim 15, Austin discloses a system for controlling a medical instrument for examining tissue during a medical procedure, the system comprising (system as seen on Figure 1A): an automated surgical system; a medical instrument coupled to the automated surgical system and comprising a probe see Figure 1A showing the surgical instrument #17, viewing platform #9, imaging system #18 with probe #17); a communication link between the automated surgical system and the optical instrument (see paragraph 1670); and means for automatically activating and deactivating the medical instrument (see paragraphs 1530, 1662 and 1670 discussing how the user activates the operation of the endoscope based on the location and hold/pause/stop in a location).
With respect to claim 18, Austin discloses the display of the position of the probe is overlaid upon an existing medical image; and the image is obtained via one of: magnetic resonance imaging (MRI); positron emission tomography (PET); and computed tomography (CT) (see paragraph 0035 and 1358 discussing the use of CT or MRI).
With respect to claim 20, Austin discloses at least one processor; and memory storing instructions that, when executed by the at least one processor (see paragraphs 1119 and 1257 discussing a processor as shown in Figure 1A inside console #3), cause the automated surgical system to: track a location of a probe of the instrument during the surgery (see paragraph 1806 constantly tracking an endoscope’s position as the claimed medical instrument); automatically initiate operation of the medical instrument based on a first location of the probe; and automatically cease operation of the medical instrument based on a second location of the probe (see paragraphs 1530, 1662 and 1670 discussing how the user activates the operation of the endoscope based on the location and hold/pause/stop in a location).
With respect to claim 21, Austin discloses the memory of the automated surgical system further stores instructions that, when executed by the at least one processor, cause the automated surgical system to: automatically pause operation of the medical instrument when the probe departs a volume of operation in which the medical procedure is performed; and automatically resume operation of the medical instrument when the probe reenters the volume of operation within a predetermined period of time after departing the volume of operation (see paragraphs 1319, 1385, 1530, 1662 and 1670).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIXOMARA VARGAS whose telephone number is (571)272-2252. The examiner can normally be reached Monday-Friday 8am-5pm.
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/DIXOMARA VARGAS/Primary Examiner, Art Unit 3798
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