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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite an abstract idea as discussed below. This abstract idea is not integrated into a practical application for the reasons discussed below. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the reasons discussed below.
Step 1 of the 2019 Guidance requires the examiner to determine if the claims are to one of the statutory categories of invention. Applied to the present application, the claims belong to one of the statutory classes of a process or product as a computer implemented method or a computer system/product.
Step 2A of the 2019 Guidance is divided into two Prongs. Prong 1 requires the examiner to determine if the claims recite an abstract idea, and further requires that the abstract idea belong to one of three enumerated groupings: mathematical concepts, mental processes, and certain methods of organizing human activity.
Regarding claim 21, the independent claim is directed to a non-transitory machine-readable medium including instruction for presenting a user interface. The claim limitations of display a first implant image representing a first implant securable to a first bone; display a second implant image representing a second implant securable to a second bone; determine a relative position of the second implant to the first implant based on the signal; and display an indication representing an adduction/abduction angle of the first implant relative to the second implant based on the signal are directed to an abstract because the claim limitations can be performed via mathematical concepts and mental process, with assistance of basic physical aids or with pen and paper. A user can draw the first implant image, second implant image and the indication representing an adduction/abduction angle. Therefore, the cited limitations above, under their broadest reasonable interpretation, cover performance in the mind but for the recitation of generic computer components (i.e., the processor). Other than the processor (which is represented simply as a part of a basic computer system), nothing identified in the claim is precluded from being practically performed in the mind, or with assistance of basic physical aids or with pen and paper. See MPEP § 2106.04(a)(2)(III)(B). Intellectual Ventures LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) established that mental processes encompass acts which, absent anything beyond generic computer components, may be “performed by a human, mentally or with pen and paper.” Intellectual Ventures additionally established that if a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category of abstract ideas unless the claim cannot be practically performed in the mind.
The judicial exception is not integrated into a “practical application” as defined by the Subject Matter Eligibility Analysis documented in Federal Register 84(4), issued on 07 January 2019 and since documented in MPEP § 2106. While the claim recites that a “processor” that performs the limitations encompassing mental processes, this simply represents implementing the abstract ideas with a computer. The additional limitations in relation to the computer, computer product, or computer system does not offer a meaningful limitation beyond generally linking the use of the method to a computer (see ALICE CORP. v. CLS BANK INT’L 573 U. S. ____ (2014)). The claim does not recite a particular machine applying or being used by the abstract idea. See also subsection I of the cited section and MPEP § 2106.05(f) which indicates that instructions to implement the abstract idea on a computer or that “using a computer as a tool to perform the abstract idea” are not sufficient to integrate a judicial exception into a “practical application” as interpreted by the courts.
Furthermore, the claim does not include additional elements which are sufficient to amount to significantly more than the abstract idea. As discussed above, the additional elements of a generic computer components (“processor”) to execute the abstract ideas and does not add significantly more that the abstract idea because since the one or more processors are merely a generic computer component with the computer being used as a tool for performing the abstract idea. The additional elements of “receive a signal from a sensor connected to the first implant” is directed to extra solution activity of gathering data and does not include additional elements which are sufficient to amount to significantly more than the abstract idea.
In consideration of each of the relevant factors and the claim elements both individually and in combination, claim 21 is directed to an abstract ideas without sufficient integration into a practical application and without significantly more.
Regarding claims 22-29, the claims further recite claim limitations (e.g., displaying a second indication, determining a coverage percentage, displaying a third indication, determining a force, displaying a fourth indication, displaying a coverage map, change a color of the coverage map, and displaying a first, second and third color on the coverage map) that are further directed to abstract idea because the claim limitations can be performed via mathematical concepts and mental process, with assistance of basic physical aids or with pend and paper.
Regarding claim 30, the independent claim is directed to method of producing a display representing an interaction between a first implant and a second implant. The claim limitations of display a first implant image representing a first implant securable to a first bone; display a second implant image representing a second implant securable to a second bone; determine a relative position of the second implant to the first implant based on the signal; and display an indication representing an adduction/abduction are directed to an abstract because the claim limitations can be performed via mathematical concepts and mental process, with assistance of basic physical aids or with pen and paper. A user can draw the first implant image, second implant image and the indication representing an adduction/abduction. Therefore, the cited limitations above, under their broadest reasonable interpretation, cover performance in the mind.
Furthermore, the claim does not include additional elements which are sufficient to amount to significantly more than the abstract idea. The additional elements of “receive a signal from a sensor connected to the first implant” is directed to extra solution activity of gathering data and does not include additional elements which are sufficient to amount to significantly more than the abstract idea.
In consideration of each of the relevant factors and the claim elements both individually and in combination, claim 30 is directed to an abstract ideas without sufficient integration into a practical application and without significantly more.
Regarding claims 31-40, the claims further recite claim limitations (e.g., displaying a second indication, determining a coverage percentage, displaying a third indication, determining a force, displaying a fourth indication, displaying a coverage map, change a color of the coverage map, and displaying a first, second and third color on the coverage map) that are further directed to abstract idea because the claim limitations can be performed via mathematical concepts and mental process, with assistance of basic physical aids or with pen and paper.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 21, the claim limitation “an adduction/abduction angle” in line 10 is indefinite because it is unclear if the claim requires both adduction and abduction angles, or only one of the adduction or abduction angle.
Regarding claim 22, the claim limitation “a flexion/extension angle” is indefinite because it is unclear if the claim requires both flexion and extension angles, or only one of the flexion or extension angle.
Claims 23-29 are rejected as they depend from rejected claim 21.
Regarding claim 30, the claim limitation “an adduction/abduction” in line 10 is indefinite because it is unclear if the claim requires both adduction and abduction or only one of the adduction or abduction angle.
Regarding claim 34, the claim limitation “a flexion/extension angle” is indefinite because it is unclear if the claim requires both flexion and extension angles, or only one of the flexion or extension angle.
Claims 31-33, and 35-40 are rejected as they depend from rejected claim 30.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 21-40 are rejected under 35 U.S.C. 103 as being unpatentable over Wollowick et al. (US 2016/0100909; hereinafter Wollowick), in view of Sing et al. (US 2017/0065435; hereinafter Singh).
Regarding claim 21, Wollowick discloses a system and method for intra-operative image analysis. Wollowick shows a non-transitory machine-readable medium including instructions for presenting a user interface (see par. [0144], see fig. 1A, 3, 14) which when executed by a processor (see par. [0019]), cause the processor to: display a first implant image on the user interface representing a first implant securable to a first bone (see abstract; fig. 1B and 3); display a second implant image on the user interface representing a second implant securable to a second bone (see abstract; fig. 1B, 63-65, 73); and display abduction angle of the first implant relative to the second implant (see par. [0231]).
But, Wollowick fails to explicitly state receive a signal from a sensor connected to the first implant; determine a relative position of the second implant to the first implant based on the signal; and display an indication on the user interface representing an adduction/abduction angle of the first implant relative to the second implant based on the signal.
Singh discloses a prosthetic placement tool and associated methods. Sing receive a signal from a sensor connected to the first implant (see abstract; [0008], [0054], [0063], [0068], [0073]); determine a relative position of the second implant to the first implant based on the signal (see abstract; [0008], [0054], [0063], [0068], [0073]); and display an indication on the user interface representing an adduction/abduction angle of the first implant relative to the second implant based on the signal (see fig. 10).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of receive a signal from a sensor connected to the first implant; determine a relative position of the second implant to the first implant based on the signal; and display an indication on the user interface representing an adduction/abduction angle of the first implant relative to the second implant based on the signal in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 22, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Sing teaches display a second indication on the user interface representing a flexion/extension angle of the first implant relative to the second implant based on the signal (see fig. 9-10). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of display a second indication on the user interface representing a flexion/extension angle of the first implant relative to the second implant based on the signal in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 23, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Singh teaches determine a coverage percentage of the first implant or the second implant based on the signal (see fig. 9); and display a third indication on the user interface representing the coverage percentage of the first implant by the second implant (see fig. 9). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of a coverage percentage of the first implant or the second implant based on the signal; and display a third indication on the user interface representing the coverage percentage of the first implant by the second implant in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 24, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Singh teaches determine a force applied to the first implant or the second implant based on the signal (see par. [0031], [0032], [0033]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of determine a force applied to the first implant or the second implant based on the signal in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 25, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Singh teaches display a fourth indication representing the force (see fig. 9). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of display a fourth indication representing the force in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 26, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Singh teaches display a coverage map on the user interface based on the determined coverage percentage (see par. [0089] and fig. 10). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of display a coverage map on the user interface based on the determined coverage percentage in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 27, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Singh teaches change a color of the coverage map based on the determined force (see par. [0088]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching change a color of the coverage map based on the determined force in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 28, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Singh teaches display a first color on the coverage map when the force is within a first range (see par. [0088]); display a second color on the coverage map when the force is within a second range outside of the first range (see par. [0088]); and display a third color on the coverage map when the force is within a third range outside of the first range and the second range (see par. [0088]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of a first color on the coverage map when the force is within a first range; display a second color on the coverage map when the force is within a second range outside of the first range; and display a third color on the coverage map when the force is within a third range outside of the first range and the second range in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 29, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Singh teaches receive a plurality of sensor signals from a plurality of sensors connected to the first implant (see fig. 6A, 6C, 7A), the plurality of sensors including the sensor (see fig. 6A, 6C, 7A), and the plurality of sensors each configured to interact with the second implant (see fig. 6A, 6C, 7A). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching a plurality of sensor signals from a plurality of sensors connected to the first implant, the plurality of sensors including the sensor, and the plurality of sensors each configured to interact with the second implant in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 30, Wollowick discloses a system and method for intra-operative image analysis. Wollowick shows a method of producing a display representing an interaction between a first implant and a second implant (see abstract; fig. 1A, 3 and 4), the method comprising: displaying a first implant image on a user interface representing a first implant securable to a first bone (see abstract; fig. 1B and 3); displaying a second implant image on the user interface representing a second implant securable to a second bone (see abstract; fig. 1B, 63-65 and 73); and displaying an indication on the user interface representing an adduction/abduction (see par. [0231].
But, Wollowick fails to explicitly state receiving a signal from a sensor connected to the first implant and determining a relative position of the second implant to the first implant based on the signal.
Singh discloses a prosthetic placement tool and associated methods. Sing receive a signal from a sensor connected to the first implant (see abstract; [0008], [0054], [0063], [0068], [0073]); determine a relative position of the second implant to the first implant based on the signal (see abstract; [0008], [0054], [0063], [0068], [0073]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of receive a signal from a sensor connected to the first implant; determine a relative position of the second implant to the first implant based on the signal in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 31, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Wollowick shows dynamically, the user interface in real-time based on changes in the relative position of the first implant and the second implant (see par. [0154], [0208], [0211]).
Regarding claim 32, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Sing teaches detecting impingement between the first implant and the second implant based on signals received from proximity sensors (see fig. 9-10); and display an indication of impingement on the user interface (see fig. . 6A, 6C, 7A, 9-10). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of detecting impingement between the first implant and the second implant based on signals received from proximity sensors and display an indication of impingement on the user interface in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 33, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Sing teaches wherein the indication of impingement includes a visual alert, a color change, or a warning message displayed on the user interface (see par. [0088], and fig. 9-10). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of wherein the indication of impingement includes a visual alert, a color change, or a warning message displayed on the user interface in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 34 Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Sing teaches displaying a second indication on the user interface representing a flexion/extension angle of the first implant relative to the second implant based on the signal (see fig. 9-10). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching displaying a second indication on the user interface representing a flexion/extension angle of the first implant relative to the second implant based on the signal in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 35, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Sing teaches determining a coverage percentage of the first implant or the second implant based on the signal (see fig. 9-10); and displaying a third indication on the user interface representing the coverage percentage of the first implant by the second implant (see fig. 9-10). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of determining a coverage percentage of the first implant or the second implant based on the signal; and displaying a third indication on the user interface representing the coverage percentage of the first implant by the second implant in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 36, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Sing teaches determining a force applied to the first implant or the second implant based on the signal (see par. [0031], [0032], [0033]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of determining a force applied to the first implant or the second implant based on the signal in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 37, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Sing teaches displaying a fourth indication representing the force (see fig. 9-10; see par. [0031], [0032], [0033]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of displaying a fourth indication representing the force in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 38, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Sing teaches displaying a coverage map on the user interface based on the determined coverage percentage (see fig. 9-10). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of displaying a coverage map on the user interface based on the determined coverage percentage in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 39, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Singh teaches change a color of the coverage map based on the determined force (see par. [0088]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching change a color of the coverage map based on the determined force in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Regarding claim 40, Wollowick and Singh disclose the invention substantially as described in the 103 rejection above, furthermore, Singh teaches display a first color on the coverage map when the force is within a first range (see par. [0088]); display a second color on the coverage map when the force is within a second range outside of the first range (see par. [0088]); and display a third color on the coverage map when the force is within a third range outside of the first range and the second range (see par. [0088]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of a first color on the coverage map when the force is within a first range; display a second color on the coverage map when the force is within a second range outside of the first range; and display a third color on the coverage map when the force is within a third range outside of the first range and the second range in the invention of Wollowick, as taught by Singh, to provide a real-time orthopedic performance parameter such as kinematic and kinetic parameter simultaneously to help the physician reliably predict the relative success of the surgery.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAHDEEP MOHAMMED whose telephone number is (571)270-3134. The examiner can normally be reached Monday to Friday, 9am to 5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne M Kozak can be reached at (571)270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHAHDEEP MOHAMMED/Primary Examiner, Art Unit 3797
Prosecution Insights