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 Objections
Claims 4 and 17 are objected to because of the following informalities: the phrase “capable” should be removed/cancelled, as it has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform, thus the term “capable” has little and/or no patentable weight. Appropriate correction is required.
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 1-20 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1: claims 1 recite a surgical apparatus, and claim 14 recites a series of steps or acts to perform a surgery. Thus, the claims are directed to a product and a process. which are ones of the statutory categories of invention.
STEP 2A PRONG ONE: Claims 1 and 14 recite(s) specific limitations/method steps of: receive a first biomarker value and a second biomarker value;
determine, based on the first biomarker value and the second biomarker value, that a close-loop control condition associated with a control parameter for a surgical device is satisfied; generate a control signal for the surgical device based on the determined control parameter value; receive a third biomarker value and a fourth biomarker value; determine, based on the third biomarker value and the fourth biomarker value, that the close-loop control condition associated with the control parameter for the surgical device is failed; and generate a second control signal configured to display a value associated with the intraoperative metric.
These limitations recite a mental process, because the claimed limitation describes a concept performed in the human mind (including an observation, evaluation, judgment, opinion). For example, a surgeon can determine biomarker values and determine if the close-loop control condition associated with the control parameter for the surgical device is satisfied or failed. Thus, the claims are drawn to a Mental Process, which is an Abstract Idea. Examiner also notes that nothing from the claims suggest that the limitations cannot be practically performed by a human, or using simple pen/paper.
STEP 2A PRONG TWO: Claims 1 and 14 does not recite additional elements that integrates the judicial exception into a practical application. Claims 1 and 14 recites the following additional elements beyond the judicial exception: a) processor.
Accordingly, the combination of the additional element/step A does not integrate the exception into a practical application of the exception because the use of a controller/processor amounts to merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)).
Accordingly, each of the additional elements or a combination of the additional elements do not integrate the abstract idea into a practical application as they fail to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception.
STEP 2B: Claims 1 and 14 does/do not include additional structural elements that are sufficient to amount to significantly more than the judicial exception because the claims recite additional elements, such as, a) processor.
Element a) does not amount to significantly more than the judicial exception because adding a controller is simply appending well-understood, routine and conventional activities previously known in the industry, specified at a high level of generality, to the judicial exception, e.g. a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry (see MPEP 2106.05(d)II). Furthermore, the element a) is well-understood, routine, and conventional, as is evidenced by Jagaa et al (US 2018/0042681) and Shelton et al (EP 3420972), which all show a processor used in robotic surgery as claimed in claims 1 and 14 evidencing that this element is well-understood, route, and conventional in the applanation arts.
Accordingly, the additional elements individual or in co do not integrate the abstract idea into a practical application as they fail to recite additional element(s) or a combination of additional elements to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception.
When viewed alone or in combination, the limitations of claims 1-20 merely instruct the practitioner to implement the concept of collecting data with routine, conventional activity specified at a high level of generality in a particular technological environment. The inventive concept cannot be furnished by the abstract idea; instead, the application must provide something inventive, beyond mere “well-understood, routine, conventional activity” (Genetic Technologies Limited v. Merial L.L.C.). The additional elements of independent claims when viewed alone or as whole, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea and does not amount to significantly more than the abstract idea itself. In other words, this claim merely applies an abstract idea to a computer and does not (i) improve the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAY A ABOUELELA whose telephone number is (571)270-7917. The examiner can normally be reached 8-5.
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/MAY A ABOUELELA/Primary Examiner, Art Unit 3791
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