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 .
Response to Preliminary Amendment
This Office Action is responsive to communications filed on 10/14/2021. Claims 1-20 were previously pending in the instant application. Claims 1-20 have been canceled and claims 21-40 are now pending. Claims 21, 32 and 40 are independent. An Office Action on the merits follows here below.
Priority
This application discloses and claims only subject matter disclosed in prior application number 17/463,009, filed 08/31/2021, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application has been examined as a continuation.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/14/2024, 04/14/2025 and 08/25/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
35 U.S.C. 101 requires that a claimed invention must fall within one of the four eligible categories of invention (i.e. process, machine, manufacture, or composition of matter) and must not be directed to subject matter encompassing a judicially recognized exception as interpreted by the courts. MPEP 2106. The four eligible categories of invention include: (1) process which is an act, or a series of acts or steps, (2) machine which is an concrete thing, consisting of parts, or of certain devices and combination of devices, (3) manufacture which is an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery, and (4) composition of matter which is all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids. MPEP 2106(I).
Claim 40 is rejected under 35 U.S.C. 101 as not falling within one of the four statutory categories of invention because the broadest reasonable interpretation of the instant claims in light of the specification encompasses transitory signals. But, transitory signals are not within one of the four statutory categories (i.e. non-statutory subject matter). See MPEP 2106(I). However, claims directed toward a non-transitory computer readable medium could qualify as a manufacture and make the claim patent-eligible subject matter. MPEP 2106(I). Therefore, amending the claims to recite a “non-transitory computer-readable medium” could resolve this issue. Appropriate correction is required.
Allowable Subject Matter
There are no prior art rejections in view of independent claims 21, 32 or 40 and their subsequent dependent claims.
Prior art reference Lee et al. (US 20100030063 A1) discloses “… tracking an instrument relative to an anatomical structure. The system can include an elongated flexible body, which can have a proximal end and a distal end for insertion into the anatomical structure. The system can also include at least one tracking device, which can be coupled to the proximal end, the distal end, a portion of the elongated flexible body between the proximal end and the distal end or combinations thereof. The system can include at least one optical fiber coupled to the elongated flexible body that includes a plurality of strain sensors, and a tracking system that can track a position of the tracking device relative to the anatomical structure. The system can further include an optical system that can read the plurality of strain sensors on the at least one optical fiber. The system can include a navigation system that can determine a position of the elongated flexible body based on the tracking of the first tracking device and a shape of the elongated flexible body based on the reading of the plurality of strain sensors. The system can also include a display that can display an image of the anatomical structure with the position and shape of the elongated flexible body superimposed on the anatomical structure.”
Prior art reference Hartig (US 20170136238 A1) discloses “…implanting an implantable stimulator into a patient; implanting a lead into the patient, the lead having a MEMS film comprising: a plurality of electrodes; a plurality of periphery traces at least partially encircling each of the plurality of electrodes; and at least two connection points coupling each of the plurality of periphery traces with a respective one of the plurality of electrodes; driving the lead toward a first target location in the patient, wherein the first target location comprises one of a first, a second, a third, or a fourth gyms of an anterior insular cortex; a superior-anterior insula; an inferior-anterior insula; an anterior-anterior insula; a posterior-anterior insula; a large insular gyms of a posterior insula; a superior-posterior insula; or an inferior-posterior insula; generating, by the implantable stimulator, an electrical signal; and delivering the electrical signal to the first target location via at least one of the plurality of electrodes.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Related Applications/Similarly Assigned: Stevenson et al. US 20230120840 A1
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MIA M. THOMAS
Primary Examiner
Art Unit 2665
/MIA M THOMAS/Primary Examiner
Art Unit 2665
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