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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-21 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being, a method of organizing human activity, and/or the rules of a game.
In regard to Claims 1, 14, and 21 the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); claim the teaching/training/evaluation of a human subject’s which has been as identified by MPEP 2106.04(a)(2)(II) as a method of organizing human activity; and/or claim the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming:
[a] method comprising:
(a) displaying a [visual] object as part of a [visual] surgical field, wherein the [visual] object is associated with a susceptibility value;
(b) displaying a movement of a [visual] surgical instrument within the [visual] surgical field based on an input from a hand-held component when a user moves the hand-held component, wherein the [visual] surgical instrument is associated with an affordance value;
(c) determining a [feedback] value based on the susceptibility value, the input, and the affordance value when the [visual] surgical instrument is displayed in an interaction with the [visual] object within the [visual] surgical field; and
(d) transmitting the […] feedback [as an output] wherein a quantity of the […] feedback that is transmitted is determined based on the [feedback] value.
[a] training [method], comprising:
[…]
(i) display a [visual] object as part of a [visual] surgical field, wherein the [visual] object is associated with a susceptibility to damage by a type of interaction with a [visual] surgical instrument and an amount of damage necessary to achieve an effect on the [visual] object;
(ii) display a movement of the [visual] surgical instrument within the [visual] surgical field based on […] input [data regarding] the hand-held component when the user exerts a force upon the hand-held component, wherein the [visual] surgical instrument is associated with a strength of the type of interaction;
(iii) determine an amount of force that must be applied to the [visual] object by the [visual] surgical instrument to provide the amount of damage necessary to achieve the effect on the [visual] object based on the susceptibility to damage by the type of interaction associated with the [visual] object and the strength of the type of interaction associated with the [visual] surgical instrument;
(iv) determine the […] feedback based on the force the user exerts upon the hand-held component and the amount of force that must be applied to the [visual] object by the [visual] surgical instrument in order to provide the amount of damage necessary to achieve the effect on the [visual] object; and
(v) transmit the […] feedback [as an output].
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being, a method of organizing human activity, and/or the rules of a game.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., a computer based surgical training system, comprising: a processor; (b) a hand-held component operatively coupled to the processor and configured to provide a haptic feedback to a user; (c) a non-transitory computer readable storage medium encoded with a computer program that causes the processor to execute a program that embodies Applicant’s abstract idea as computer code, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., a computer based surgical training system, comprising: a processor; (b) a hand-held component operatively coupled to the processor and configured to provide a haptic feedback to a user; (c) a non-transitory computer readable storage medium encoded with a computer program that causes the processor to execute a program that embodies Applicant’s abstract idea as computer code, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., F6 and F8 in Applicant’s PGPUB and text regarding same.
Claim Rejections - 35 USC § 102
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 1-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated over PGPUB US 20140057236 A1 by Meglan et al (“Meglan”), which incorporates by reference PGPUB US 20100041004 A1 by Meglan (“Meglan2”), and also incorporates by reference PGPUB US 20100178644 A1 by Meglan (“Meglan3”).
In regard to Claim 1, Meglan teaches a computer based surgical training system, comprising
(a) a processor;
(see, e.g., F1, 260A);
(b) a hand-held component operatively coupled to the processor and configured to provide a haptic feedback to a user;
(see, e.g., F1, 100 and 110);
(c) a non-transitory computer readable storage medium encoded with a computer program that causes the processor to:
(see, e.g., F1, 260A and 260B);
(i) display a virtual object as part of a virtual surgical field, wherein the virtual object is associated with a susceptibility value;
(see, e.g., p8 and F1, 300, 310 (“virtual object”) that comprises hard and soft tissue; see, e.g., p54 in regard to hard tissue being simulated as numerically having a certain susceptibility to cutting (“susceptibility value”));
(ii) display a movement of a virtual surgical instrument within the virtual surgical field based on an input from the hand-held component when a user moves the hand-held component, wherein the virtual surgical instrument is associated with an affordance value;
(see, e.g., p51 (“display…moves the hand-held component”); see Meglan2 at, e.g., p46 in regard to simulating pressing the drill onto bone without rotating the drill; Meglan2 at, e.g., p71 in regard to simulating drilling bone with perfect/proper alignment of the drill; and Meglan2 at, e.g., p79 in regard to simulating drilling bone with non-ideal/improper alignment of the drill (“associated with an affordance value”);
(iii) determine a haptic value based on the susceptibility value, the input, and the affordance value when the virtual surgical instrument is displayed in an interaction with the virtual object within the virtual surgical field; and
(iv) transmit the haptic feedback to the hand-held component wherein a quantity of the haptic feedback that is transmitted is determined based on the haptic value.
(see, e.g., Meglan at p54 and Meglan2 at p46 and 71 in regard to calculating and providing the haptic feedback (“haptic value”) as being proportional to the simulated bone stiffness (“susceptibility value”), based on the user employing the drill properly/improperly (“affordance value”) while the instrument is displayed in the virtual space interacting with the virtual object).
In regard to Claims 2-3, see rejection of Claim 1.
In regard to Claim 4, Meglan teaches these limitations. See, e.g., p51.
In regard to Claim 5-6, see rejection of Claim 1.
In regard to Claims 7-8, Meglan teaches these limitations. See, e.g., p54 in regard to hard tissue being simulated with having a certain susceptibility to cutting, referencing Meglan2 for the calculation of the haptic feedback provided in regard to that cutting; see, e.g., p69 in regard to soft tissue being simulated with having a certain susceptibility to cutting, referencing Meglan3 for the calculation of the haptic feedback provided in regard to that cutting; see, e.g., Meglan2 at p71 in regard to employing various numerical values in order to simulate the susceptibility of hard tissue to cutting/damage with perfect/ideal loading of the drill (“susceptibility value”); see, e.g., Meglan2 at 79-85 in regard to employing various numerical values in order to simulate the susceptibility of hard tissue to cutting/damage with non-ideal loading of the drill (“susceptibility value”). And see Meglan2 at, e.g., Meglan2 at, p46 in regard to simulating pressing the drill onto bone without rotating the drill; Meglan2 at, e.g., p71 in regard to simulating drilling bone with perfect/proper alignment of the drill; and Meglan2 at, e.g., p79 in regard to simulating drilling bone with non-ideal/improper alignment of the drill; and see, e.g., Meglan2 at p71 in regard to employing various numerical values in order to simulate the strength of interaction by the first virtual surgical instrument with the virtual object with perfect/ideal loading of the drill (“affordance value”).
In regard to Claims 9-13, Meglan teaches these limitations. See, e.g., p62-63 and 69-72.
In regard to Claims 14-16, see rejections of Claims 1-3.
In regard to Claims 17-10, see rejections of Claims 5-8.
In regard to Claim 21, see rejection of Claim 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,698,493. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims a broader version of the same subject matter claimed in the ‘493 patent.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,210,684. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims a broader version of the same subject matter claimed in the ‘684 patent.
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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