DETAILED ACTION
This action is in reference to the communication filed on 21 AUG 2025.
Claim 1 canceled, claims 2-20 added.
Claims 2-20 are present and have been examined.
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 2-20 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. As explained below, the claim(s) are directed to an abstract idea without significantly more.
Step One: Is the Claim directed to a process, machine, manufacture or composition of matter? YES
With respect to claim(s) 2-20 the independent claim(s) 2, 10, 18 recite(s) each recites a statutory category of invention.
Step 2A – Prong One: Is the claim directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea? YES
With respect to claim(s) 2-20, the independent claim(s) (claims 2, 10, 18) is/are directed, in part, to:
A system comprising:
receiving surgical session data representative of surgical procedure operations performed during a surgical session performed with represents one or more of (i) user interaction events comprising distinct user interactions with the
accessing operation pattern data representative of a plurality of historical patterns associated with past surgical procedure operations;
determining a match between the surgical session data and a first historical pattern of the plurality of historical patterns; and
in response to determining the match, associating the surgical session data with an operation profile of a user associated with the first historical pattern.
These claim elements are considered to be abstract ideas because they are directed to a method of organizing human activity which include managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Comparing first and second procedural histories to identify patterns between procedures, and receiving data indicative of past procedures, is managing human activities. Further, these limitations are directed to mental processes - the collecting, accessing, identifying, and providing of a profile are all concepts performed in the human mind (including an observation, evaluation, judgment, opinion). If a claim under its broadest reasonable interpretation covers methods of managing personal behavior or relationships, or concepts performed in the human mind, then it falls within the “method of organizing human activity” and or “Mental processes” groupings of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application? NO.
This judicial exception is not integrated into a practical application. In particular, the claim(s) recite(s) additional elements: claim 2 recites a memory storing instructions, and one or more processors, claim 18 recites one or more non transitory computer readable medium storing instructions that when executed direct a processor, and each of claims 2, 10, 18 recite wherein the surgical system is “computer assisted.” Examiner notes claim 10 is devoid of any additional elements to be considered at this step. The memory and processor in claim 2, and non-transitory computer readable medium in 18 are recited to no extent beyond adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f), such that it amounts no more than mere instructions to apply the exception using a generic computer component. Examiner finds similarly with respect to the computer assisted surgical system; this is again, simply an application of existing technology to implement the abstract idea/using the tools to execute the abstract idea. Examiner finds no improvement to the functioning of the computer or any other technology or technical field in the above identified elements as claimed (see MPEP 2106.05a), nor any other application or use of the judicial exception in some meaningful way beyond a general like between the use of the judicial exception to a particular technological environment (see MPEP 2106.05e). Accordingly, this/these additional element(s) do(es) not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? NO.
The independent claim(s) is/are additionally directed to claim elements such as: claim 2 recites a memory storing instructions, and one or more processors, claim 18 recites one or more non transitory computer readable medium storing instructions that when executed direct a processor, and each of claims 2, 10, 18 recite wherein the surgical system is “computer assisted.” Examiner notes claim 10 is devoid of any additional elements to be considered at this step. When considered individually, the above identified claim elements only contribute generic recitations of technical elements to the claims. It is readily apparent, for example, that the claim is not directed to any specific improvements of these elements. Examiner looks to Applicant’s specification in:
[fig 1 and related text including 059]
As shown, system 400 may include, without limitation, a storage facility 402 and a processing facility 404 selectively and communicatively coupled to one another. Facilities 402 and 404 may each include or be implemented by hardware and/or software components (e.g., processors, memories, communication interfaces, instructions stored in memory for execution by the processors, etc.). In some examples, facilities 402 and 404 may be distributed between multiple devices and/or multiple locations as may serve a particular implementation.
At [0148]
Processor 1204 generally represents any type or form of processing unit capable of processing data and/or interpreting, executing, and/or directing execution of one or more of the instructions, processes, and/or operations described herein. Processor 1204 may perform operations by executing computer-executable instructions 1212 (e.g., an application, software, code, and/or other executable data instance) stored in storage device 1206.
At [028]
“FIG. 1 illustrates an exemplary computer-assisted surgical system 100 (“surgical system 100”). As shown, surgical system 100 may include a manipulating system 102, a user control system 104, and an auxiliary system 106 communicatively coupled one to another. In some examples, surgical system 100 may be implemented by one or more of these components. However, surgical system 100 is not limited to these components, and may include additional components as may suit a particular implementation, such as but not limited to a patient operating table, third-party components (e.g., electrosurgical units) connected to surgical system 100, and the like.”
These passages, as well as others, makes it clear that the invention is not directed to a technical improvement. When the claims are considered individually and as a whole, the additional elements noted above, appear to merely apply the abstract concept to a technical environment in a very general sense – i.e. a generic computer receives information from another generic computer, processes the information and then sends information back. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. The fact that the generic computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility.
As per dependent claims 3-9, 11-17, 19-21:
Dependent claims 3-9, 11-17, 19-21 are not directed any additional abstract ideas and are also not directed to any additional non-abstract claim elements. Rather, these claims offer further descriptive limitations of elements found in the independent claims and addressed above – such as the types of data collected to create the patterns and/or profiles, as well as the uses of the collected information/profiles, and conclusions therein. The claims also reference the computer assisted surgical system, as noted above. While these descriptive elements may provide further helpful context for the claimed invention these elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention.
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 2-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12300374. Although the claims at issue are not identical, they are not patentably distinct from each other because the “collect, during a surgical session performed with a computer-assisted surgical system surgical session data representative of surgical procedure data representative of surgical procedure operations performed during the surgical session, wherein… the surgical procedure operations include at least one of user interaction events or response events, the user interaction events comprising distinct interactions by one or more users …the response events comprising distinct operations performed during the surgical session and by the computer assisted surgical system in response…; access…operation pattern data representative of multiple historical patterns…; identify… a first historical pattern included in the multiple historical patterns of surgical procedure operations and that matches a first collected pattern…; and identify… a first operation profile associated with the first historical pattern that matches the first collected pattern...” limitations of the ‘374 patent read on the (respectively) “receiving surgical session data representative of surgical procedure operations performed during a surgical session wherein the surgical session data represents one or more of (i) user interaction events comprising distinct user interactions with the computer-assisted surgical system during the surgical session, and or (ii) response events comprising distinct operations performed during the surgical session and by the computer-assisted surgical system in response to interaction events; accessing operation pattern data representative of a plurality of historical patterns associated with past surgical procedure operations; determining a match between the surgical session data and a first historical pattern of the plurality of historical patterns; and in response to determining the match, associating the surgical session data with an operation profile of a user associated with the first historical pattern,” of the instant application.
Prior Art
Claims 2-20 are believed to be free of the prior art. The closest prior art is believed to be:
Zellner (US 2010210412)
Itkowitz (US 20200078105)
Lacal (US 20160331474)
Zellner as cited teaches collecting surgical data from operations performed by a computer aided operation, including pattern data of the operator/surgeon. Zellner uses these patterns as collected to identify one or more procedures and/or one or more surgeons in use of the machinery, and to provide a surgical plan considering the operator and the procedure itself, and further re-collecting the pattern data for subsequent use of the system. Itkowitz teaches specific applicability of a surgical robotic arm during the procedure, and collecting session/procedural information from interactions with the surgical arm itself. The surgical system in Itkowitz is controlled/manned by the surgeon(s) performing the procedure, and similar pattern or usage information is collected to make a profile/procedure profile recommendation for the operator/surgeon. Lacal teaches a more explicit consideration of the actual forces and actions of the operator upon the system, separate from the actions/forces of the surgical system itself, and uses that information to inform a profile of a given practitioner’s habits of interactions with the system.
Applicant’s claim as presented is not fairly taught by the prior art when considered separately or as a whole. Applicant’s claims require consideration of both interaction and response events as claimed, and using this information to identify and update the profile, rather than simply provide the profile itself. Examiner further finds the claim language to clearly consider the presence of multiple profiles in the association of the pattern data. provide the operation profile.
The Examiner hereby asserts that the totality of the evidence neither anticipates nor renders obvious the particular combination of elements as claimed. That is, the Examiner emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for combining or otherwise modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not be obvious to one of ordinary skill in the art because any combination of the evidence at hand to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE KOLOSOWSKI-GAGER whose telephone number is (571)270-5920. The examiner can normally be reached Monday - Friday.
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/KATHERINE . KOLOSOWSKI-GAGER/
Primary Examiner
Art Unit 3687
/KATHERINE KOLOSOWSKI-GAGER/Primary Examiner, Art Unit 3687
Prosecution Insights