DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's arguments filed December 23, 2025 have been fully considered but they are not fully persuasive.
Regarding the Double Patenting Rejections:
See the updated obviousness type Double Patenting Rejection below.
Regarding the 112s:
Applicant’s argument appears to be there is no clarity issue. Examiner notes terms are used multiple times in the claim, is each recitation referring to the same element or not? This is a clarity issue. Applicant makes no statement showing how the language is clear. Applicant merely states a conclusory statement that the preamble isn’t used for antecedent basis. But this is the issue in it of itself. Are the terms in the preamble part of the claim or not? If Applicant is saying no, then what effect on the claim scope are the preamble terms providing?
There is no litmus test in determining when a preamble limits the scope of a claim (MPEP 2111.02). Examiner notes the following reasoning for why the preamble does provide limits to the scope of the claim:
-The preamble is necessary to give “life, meaning and vitality” to the claim, i.e., words that add context for claim construction may limit the claim (In the instant case the preamble recites elements that are then recited again within the body of the claim)
-The preamble provides antecedent basis for a limitation in the body of the claim (In the instant case the preamble recites elements that are then recited again within the body of the claim)
-The preamble recites, and thereby limits, the structure of the claimed invention (In the instant case the preamble recites elements that are then recited again within the body of the claim)
Examiner notes that preambles can provide antecedent basis for terms in the body of the claim. As currently recited, there is an unclarity issue as to whether the terms are meant to provide antecedent basis. As it is possible they do then the preamble language can be interpreted to be a limitation of the claim. As such the 112b rejections remain.
Examiner further points to Applicant’s parent application now US Patent No. 11004561 in which the preamble does provide antecedent basis for the terms within the body of the claim.
Regarding the 101 rejection:
Examiner notes the 101 rejection states the limitations which are directed to the abstract idea grouping of the mental processes. Those limitations include the ‘using’ and ‘generating’ steps. The whole claim was not summarized as Applicant alleges. Rather particular limitations were pointed out and noted as directed to an abstract idea. For further emphasis Examiner had noted this within the 101 rejection: Examples of ineligible claims that recite mental processes include: • a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group, LLC v. Alstom, S.A.; • claims to “comparing BRCA sequences and determining the existence of alterations,” where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics Corp. • a claim to collecting and comparing known information, which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC. Each of which is similar to the claimed steps of ‘using’ and ‘generating’. Generating generic information, reviewing generic sensor data are all fully capable of being performed in the human mind or with pen and paper. (MPEP 2106.04(a)(2): “The courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper” to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011)… Accordingly, the “mental processes” abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.”). Applicant’s claims are recited at a high level of generality no clear specific analysis steps are being claimed or recited.
Examiner notes the accelerometer, gyroscope, magnetometer were not considered as being an abstract idea but were rather considered as being additional elements that do not provide significantly more. The data from those sensors that is used for the analysis is part of the abstract idea. The sensors themselves are merely sensors claimed at a high level of generality used for extrasolutionary data gathering which does not provide significantly more. Applicant states that the claims integrating the judicial element into a practical application. Applicant states that the claims impose a meaningful limit on the judicial exception. But Applicant does not provide any reasoning for such a conclusion. Generic sensors used for extrasolutionary data gathering do not provide significantly more. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011). See MPEP 2106.05(b).
On Page 33 of the Brief Application states: “Appellant’s claims improve upon the art by providing tools to gather motion tracking data, processing the data, and generating orientation information in real time as to the object tracked.” Examiner reminds Applicant of MPEP 2106.04(a)(2) III A: “Examples of ineligible claims that recite mental processes include: • a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group, LLC v. Alstom, S.A.;” and MPEP 2106.05(b) III: “Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011) (citations omitted) (“[N]othing in claim 3 requires an infringer to use the Internet to obtain that data. The Internet is merely described as the source of the data. We have held that mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’” 654 F.3d at 1375, 99 USPQ2d at 1694 (citation omitted)).”. It is obvious by Applicant’s own admission that the claimed invention is directed to the abstract idea of mental processes save for the conventional equipment used for extra-solution data gathering which does not provide significantly more. Applicant merely alleges some improvement without any substantive or factual basis for that statement.
Further see the updated 101 below.
Response to Amendment
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 27-29 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.
Claim 27 recites ‘an object’ twice in the claim making it unclear if each recitation refers to the same element or not. If the recitation in the body does not refer to the recitation in the preamble, then it is unclear what the intended effect the preamble recitation is meant to have on the scope of the claim. For the purposes of examination, it will be treated as the same element.
Claim 27 recites ‘a medical procedure’ twice in the claim making it unclear if each recitation refers to the same element or not. If the recitation in the body does not refer to the recitation in the preamble, then it is unclear what the intended effect the preamble recitation is meant to have on the scope of the claim. For the purposes of examination, it will be treated as the same element.
Claim 27 recites ‘an orientation’ after reciting ‘orientation’ making it unclear if each recitation refers to the same element or not. If the recitation in the body does not refer to the recitation in the preamble, then it is unclear what the intended effect the preamble recitation is meant to have on the scope of the claim. For the purposes of examination, it will be treated as the same element.
Claim 28 recites ‘an object’ twice in the claim making it unclear if each recitation refers to the same element or not. If the recitation in the body does not refer to the recitation in the preamble, then it is unclear what the intended effect the preamble recitation is meant to have on the scope of the claim. For the purposes of examination, it will be treated as the same element.
Claim 28 recites ‘a medical procedure’ twice in the claim making it unclear if each recitation refers to the same element or not. If the recitation in the body does not refer to the recitation in the preamble, then it is unclear what the intended effect the preamble recitation is meant to have on the scope of the claim. For the purposes of examination, it will be treated as the same element.
Claim 28 recites ‘an orientation’ after reciting ‘orientation’ making it unclear if each recitation refers to the same element or not. If the recitation in the body does not refer to the recitation in the preamble, then it is unclear what the intended effect the preamble recitation is meant to have on the scope of the claim. For the purposes of examination, it will be treated as the same element.
Claim 28 recites ‘angular velocity information’ making it unclear if each recitation refers to the same element or not. For the purposes of examination, it will be treated as the same element.
Claim 29 recites ‘an object’ twice in the claim making it unclear if each recitation refers to the same element or not. If the recitation in the body does not refer to the recitation in the preamble, then it is unclear what the intended effect the preamble recitation is meant to have on the scope of the claim. For the purposes of examination, it will be treated as the same element.
Claim 29 recites ‘a medical procedure’ twice in the claim making it unclear if each recitation refers to the same element or not. If the recitation in the body does not refer to the recitation in the preamble, then it is unclear what the intended effect the preamble recitation is meant to have on the scope of the claim. For the purposes of examination, it will be treated as the same element.
Claim 29 recites ‘an orientation’ after reciting ‘orientation’ making it unclear if each recitation refers to the same element or not. If the recitation in the body does not refer to the recitation in the preamble, then it is unclear what the intended effect the preamble recitation is meant to have on the scope of the claim. For the purposes of examination, it will be treated as the same element.
Claim 29 recites ‘verified data’ twice in the claim making it unclear if each recitation refers to the same element or not. For the purposes of examination, it will be treated as the same element.
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 27-29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Regarding Step 1, claims 27-29 are all within at least one of the four categories (claims 27-29 being processes).
Step 2A, Prong One
Independent claim 27 recites:
using data collected from the at least one gyroscope to generate rotational information used as part of a prediction model to verify data output from the at least one accelerometer; and,
generating orientation data indicative of an orientation of the object in real-time using verified data output from the at least one accelerometer.
Independent claim 28 recites:
using data collected from the at least one accelerometer to generate tilt angle information used to determine relative change in orientation in quaternion;
using data collected from the at least one gyroscope to generate angular velocity information; and
generating orientation information indicative of an orientation of the object in real-time using angular velocity information from the at least one gyroscope and the relative change in orientation in quaternion from the at least one accelerometer.
Independent claim 29 recites:
using data collected from the at least one magnetometer to generate orientation information used as part of a prediction model to generate verified, where the verified data is used to control gyroscopic drift; and,
generating orientation data indicative of an orientation of the object in real-time using verified data output from the at least gyroscope.
These identified limitations describe a mental process (including an observation, evaluation, judgment, opinion) under the broadest reasonable standard, as a skilled practitioner is capable of performing the recited limitations and making a mental assessment thereafter. Examiner notes that nothing from the claims suggests that the limitations cannot be practically performed by a medical, biomedical or engineering professional with the aid of a pen and paper; their knowledge gained from education, background, or experience; or by using a generic computer as a tool to perform mental process steps in real time. Examiner additionally notes that nothing from the claims suggests and undue level of complexity that the mental process steps cannot be practically performed by a human with the aid of a pen and paper, or using a generic computer as a tool to perform the mental process steps. Examiner points to Applicant’s disclosure (see at least Paragraphs 0089-0145 of Applicant’s published specification) which provides more meaning than what is claimed, but further shows the equations and functions that are used for the mental process steps, all of which would be capable of being used by a human with pen and paper thus clearly constituting mental processes steps. Controlling gyroscopic drift can merely mean accounting for the drift in the data, the limitation implies no specific action is done to physically change the gyroscope itself to account for the drift, but merely implies that the drift itself is accounted for in the resulting data. Examiner points to the prior art such as the Yang (US 2005/0240347) which teaches the using the data to generate information and generating data steps with calculations which are all capable of be performed by a human with the aid of a pen and paper thus constituting a mental process. A human can take sensor data, use it to generate further information, and then generate more data. That is all that is claimed. Nothing specific is claimed.
The claimed steps of using and generating can be practically performed in the human mind using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas.
Examples of ineligible claims that recite mental processes include:
• a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group, LLC v. Alstom, S.A.;
• claims to “comparing BRCA sequences and determining the existence of alterations,” where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics Corp.
• a claim to collecting and comparing known information, which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC.
See p. 7-8 of October 2019 Update: Subject Matter Eligibility.
Step 2A, Prong Two
This judicial exceptions (abstract ideas) in claims 27-29 are not integrated into a practical application because:
•The abstract idea amounts to simply implementing the abstract idea on a computer or with sensors. For example, the recitations regarding the generic computing components for ‘using’ and ‘generating’ merely invoke a computer/sensor as a tool.
•The data-gathering step (using) do not add a meaningful limitation to the method as they are insignificant extra-solution activity.
•There is no improvement to a computer or other technology. “The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process", unlike cases such as Alice where a computer was merely used as a tool to perform an existing process.” MPEP 2106.05(a) II. The claims recite a computer/sensor that is used as a tool for using and generating
•The claims do not apply the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition. Rather, the abstract idea is utilized to determine a relationship among data to provide a medical measurement.
•The claims do not apply the abstract idea to a particular machine. “Integral use of a machine to achieve performance of a method may provide significantly more, in contrast to where the machine is merely an object on which the method operates, which does not provide significantly more.” MPEP 2106.05(b). II. “Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not provide significantly more.” MPEP 2106.05(b) III. The pending claims utilize a computer/sensor for using and generating. The claims do not apply the obtained response measurement to a particular machine. Rather, the data is merely output in a post-solution step.
When considered in combination, the additional elements (i.e. the generic computer functions and conventional equipment/steps) do not amount to significantly more than the abstract idea. Looking at the claim limitations as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). There is nothing in the claim or specification that suggests any improvement. As a whole the claims are merely directed to abstract ideas using conventional equipment. If the examiner concludes the disclosed invention does not improve technology, the burden shifts to applicant to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology. Any such evidence submitted under 37 CFR 1.132 must establish what the specification would convey to one of ordinary skill in the art and cannot be used to supplement the specification. The claim as a whole does not appear to reflect any improvement in any technology.
Step 2B
The additional elements recited include ‘at least one accelerometer’ in claims 27-28, ‘at least one gyroscope’ in claims 27-29, ‘at least one magnetometer’ in claim 29 and ‘a prediction model’ in claims 27-29, the sensors ‘mounted to an object’ in claims 27-29.
This judicial exception is not integrated into a practical application because:
Those in the relevant field of art would recognize the above-identified additional elements as being well-understood, routine, and conventional means for data-gathering and computing, as demonstrated by
Applicant’s Published Specification (Paragraphs 0005-0006) for the IMU sensors
The prior art provided by the Applicant in the IDS and by the Examiner in PTO-892 which disclose each of the elements as being known and conventional in the art elements;
Thus, the claimed additional elements “are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).” Berkheimer Memorandum, III. A. 3. Furthermore, the court decisions discussed in MPEP § 2106.05(d)(ll) note the well-understood, routine and conventional nature of such additional elements as those claimed. See option III. A. 2. in the Berkheimer memorandum.
The additional elements do not provide an improvement to a computer or other technology. “The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process", unlike cases such as Alice where a computer was merely used as a tool to perform an existing process.” MPEP 2106.05(a) II. The claims recite generic sensors that are used as a tool for using and generating.
The claims do not apply the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition. Rather, the abstract idea is utilized to determine a relationship among data to provide a medical measurement.
The claims do not apply the abstract idea to a particular machine. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception into a practical application or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011). See MPEP 2106.05(b). The providing of the sensors mounted to an object during a medical procedure merely indicates field of use. Sensors themselves are merely used for data gathering. None of this is a particular machine.
When considered in combination, the additional elements (i.e. the generic computer/sensor functions and conventional equipment/steps) do not amount to significantly more than the abstract idea. Looking at the claim limitations as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer/sensor implementation.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 27 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Soehren et al. (US 2005/0033200) in view of Tanenhaus (US 2009/0326851)
Regarding claim 27, Soehren teaches a method of tracking orientation of an object in three dimensions during a medical procedure (Abstract), the method comprising:
providing at least one accelerometer and at least one gyroscope mounted to an object to be tracked in three dimensions as part of a medical procedure (Paragraphs 0017 and 0030-0031; Examiner notes monitoring a humans motion as a health monitor and energy estimator constitutes a medical procedure under BRI);
using data collected from the at least one gyroscope to generate rotational information (Paragraph 0030; gyroscopes measure rotation) used as part of a prediction model to verify data output from the at least one accelerometer; and (Paragraph 0041: “the output of the measurement unit 50 is provided to the Kalman filter 41, which in turn provides the information to a Position, Individual Motion confidence unit 54. This is an estimate of how well the position, velocity and attitude are known. The Kalman filter provides this as a covariance of each of the navigation states.“),
generating orientation data indicative of an orientation of the object in real-time using verified data output from the at least one accelerometer (Paragraph 0041).
Should Soehren be found to not specifically teach generating orientation data indicative of an orientation of the object in real-time using verified data output from the at least one accelerometer. Tenenhaus teaches generating orientation data indicative of an orientation of the object in real-time using verified data output from the at least one accelerometer (Paragraph 0009 and 0029).
It would have been obvious to one of ordinary skill in the art to have modified Soehren with Tanenhaus because it improves accuracy and stability of the measurements (Paragraphs 0012 and 0116 of Tanenhaus) and helps reduce error (Paragraphs 0116-0119 of Tanenhaus).
Claim 28 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Esser et al. (US 2011/0313705) in view of Nasiri et al. (US 2009/0007661)
Regarding claim 28, Esser teaches a method of tracking orientation of an object in three dimensions during a medical procedure (Paragraph 0090-0091), the method comprising:
providing at least one accelerometer and at least one gyroscope mounted to an object to be tracked in three dimensions as part of a medical procedure (Paragraph 0020);
Esser is silent on the tilt information (though Examiner notes an accelerometer would inherently collect this information) and using said information to determine a change in orientation in quaternion.
Nasiri teaches using data collected from the at least one accelerometer to generate tilt angle information used to determine relative change in orientation in quaternion (Paragraph 0052);
using data collected from the at least one gyroscope to generate angular velocity information (Paragraph 0052); and,
generating orientation information indicative of an orientation of the object in real-time using angular velocity information from the at least one gyroscope and the relative change in orientation in quaternion from the at least one accelerometer (Paragraph 0052).
It would have been obvious to one of ordinary skill in the art to have modified Esser with Nasiri because it provides a better orientation signal to reduce drift and provide a more accurate measurement (Paragraph 0052 of Nasiri).
Claim 29 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Esser et al. (US 2011/0313705) in view of Tanenhaus (US 2009/0326851)
Regarding claim 29, Esser teaches a method of tracking orientation of an object in three dimensions during a medical procedure (Paragraphs 0004 and 0090-0091), the method comprising:
providing at least one magnetometer and at least one gyroscope mounted to an object to be tracked in three dimensions as part of a medical procedure (Paragraphs 0042-0044);
Esser alludes to the use of verifying data (Paragraph 0044) but is silent on the exact claim limitations.
Tanenhaus teaches using data collected from the at least one magnetometer to generate orientation information used as part of a prediction model to generate verified data output where the verified data is used to control gyroscopic drift (Paragraphs 0116-0119); and,
generating orientation data indicative of an orientation of the object in real-time using verified data output from the at least one gyroscope (Paragraphs 0116-0119).
It would have been obvious to one of ordinary skill in the art to have modified Esser with Tanenhaus because it improves accuracy and stability of the measurements (Paragraphs 0012 and 0116 of Tanenhaus) and helps reduce error (Paragraphs 0116-0119 of Tanenhaus).
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 27-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11004561. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Application 17/181,372
Conflicting Patent 11004561
27. A method of tracking orientation of an object in three dimensions during a medical procedure, the method comprising:
providing at least one accelerometer and at least one gyroscope mounted to an object to be tracked in three dimensions as part of a medical procedure;
using data collected from the at least one gyroscope to generate rotational information used as part of a prediction model to verify data output from the at least one accelerometer; and,
generating orientation data indicative of an orientation of the object in real-time using verified data output from the at least one accelerometer.
1. A method of tracking orientation of an anatomical feature in three dimensions during a medical diagnosis procedure, the method comprising:
providing a brace comprising at least one accelerometer and at least one gyroscope, where the brace is mounted proximate the anatomical feature to be tracked in three dimensions as part of the medical diagnosis procedure;
collecting data from the at least one accelerometer in real-time;
collecting data from the at least one gyroscope in real-time;
generating orientation information using a processor and the data collected from the at least one accelerometer as part of a prediction model;
at least one of verifying and correcting data output from the at least one gyroscope to address gyroscopic drift using the generated orientation information; and,
determining the orientation of the anatomical feature in real-time using at least one of the data verified and corrected;
displaying a virtual model of the anatomical feature and updating an orientation of the virtual model in real-time to match the determined orientation of the anatomical feature.
2. The method of claim 1, wherein at least one of verifying and correcting data output from the at least one gyroscope to address gyroscopic drift includes generating three dimensional position information using the processor and the data collected from the at least one accelerometer as part of the prediction model.
28. A method of tracking orientation of an object in three dimensions during a medical procedure, the method comprising:
providing at least one accelerometer and at least one gyroscope mounted to an object to be tracked in three dimensions as part of a medical procedure;
using data collected from the at least one accelerometer to generate tilt angle information used to determine relative change in orientation in quaternion;
using data collected from the at least one gyroscope to generate angular velocity information; and,
generating orientation information indicative of an orientation of the object in real-time using angular velocity information from the at least one gyroscope and the relative change in orientation in quaternion from the at least one accelerometer.
1. A method of tracking orientation of an anatomical feature in three dimensions during a medical diagnosis procedure, the method comprising:
providing a brace comprising at least one accelerometer and at least one gyroscope, where the brace is mounted proximate the anatomical feature to be tracked in three dimensions as part of the medical diagnosis procedure;
collecting data from the at least one accelerometer in real-time;
collecting data from the at least one gyroscope in real-time;
generating orientation information using a processor and the data collected from the at least one accelerometer as part of a prediction model;
at least one of verifying and correcting data output from the at least one gyroscope to address gyroscopic drift using the generated orientation information; and,
determining the orientation of the anatomical feature in real-time using at least one of the data verified and corrected;
displaying a virtual model of the anatomical feature and updating an orientation of the virtual model in real-time to match the determined orientation of the anatomical feature.
2. The method of claim 1, wherein at least one of verifying and correcting data output from the at least one gyroscope to address gyroscopic drift includes generating three dimensional position information using the processor and the data collected from the at least one accelerometer as part of the prediction model.
29. A method of tracking orientation of an object in three dimensions during a medical procedure, the method comprising:
providing at least one magnetometer and at least one gyroscope mounted to an object to be tracked in three dimensions as part of a medical procedure;
using data collected from the at least one magnetometer to generate orientation information used as part of a prediction model to verify generate verified data output from the at least one gyroscope, where the verified data is used to control gyroscopic drift; and,
generating orientation data indicative of an orientation of the object in real-time using verified data output from the at least one gyroscope.
1. A method of tracking orientation of an anatomical feature in three dimensions during a medical diagnosis procedure, the method comprising:
providing a brace comprising at least one accelerometer and at least one gyroscope, where the brace is mounted proximate the anatomical feature to be tracked in three dimensions as part of the medical diagnosis procedure;
collecting data from the at least one accelerometer in real-time;
collecting data from the at least one gyroscope in real-time;
generating orientation information using a processor and the data collected from the at least one accelerometer as part of a prediction model;
at least one of verifying and correcting data output from the at least one gyroscope to address gyroscopic drift using the generated orientation information; and,
determining the orientation of the anatomical feature in real-time using at least one of the data verified and corrected;
displaying a virtual model of the anatomical feature and updating an orientation of the virtual model in real-time to match the determined orientation of the anatomical feature.
2. The method of claim 1, wherein at least one of verifying and correcting data output from the at least one gyroscope to address gyroscopic drift includes generating three dimensional position information using the processor and the data collected from the at least one accelerometer as part of the prediction model.
The differences appear to be the instant application towards an object which is broader than the anatomical feature of the patent. The only differences being the specific inertial sensor data used. But this would only require routine experimentation that would be obvious to one of ordinary skill in the art given that accelerometers, gyroscopes, magnetometers are all well-known in the art types of inertial sensors. Tilt information and angular velocity are types of orientation information and thus types of data that would only require routine experimentation to acquire the specific types of orientation information data desired to be used. Quaternion just implies a data type which again would be obvious to one of ordinary skill in the art through routine experimentation which Applicant’s specification defines as known in the art data types which can be analyzed using known in the art analysis methods (See at least Paragraphs 0128-0131 of Applicant’s specification) and further see Paragraph 0103 of Applicant’s published specification which discloses using the data in different situations to verify other sensors data as being altered based on a design choice which would thus mean under routine experimentation using the disclosure of the Patent could achieve the claimed invention of the instant application. Further it appears that Applicant is merely claiming the use of Kalman filter which is well known and understood in the art (See the cited references on the PTO-892 as evidence).
Regarding claim 28: Nasiri teaches using data collected from the at least one accelerometer to generate tilt angle information used to determine relative change in orientation in quaternion (Paragraph 0052); using data collected from the at least one gyroscope to generate angular velocity information (Paragraph 0052); and, generating orientation information indicative of an orientation of the object in real-time using angular velocity information from the at least one gyroscope and the relative change in orientation in quaternion from the at least one accelerometer (Paragraph 0052). It would have been obvious to one of ordinary skill in the art to have modified the Patent with Nasiri because it provides a better orientation signal to reduce drift and provide a more accurate measurement (Paragraph 0052 of Nasiri).
Regarding claim 29: Tanenhaus teaches using data collected from the at least one magnetometer to generate orientation information used as part of a prediction model to generate verified data output where the verified data is used to control gyroscopic drift (Paragraphs 0116-0119); and, generating orientation data indicative of an orientation of the object in real-time using verified data output from the at least one gyroscope (Paragraphs 0116-0119). It would have been obvious to one of ordinary skill in the art to have modified the Patent with Tanenhaus because it improves accuracy and stability of the measurements (Paragraphs 0012 and 0116 of Tanenhaus) and helps reduce error (Paragraphs 0116-0119 of Tanenhaus).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Allum (US Patent No. 5919149), Changey et al. (US 2009/0182503), and Yang (US 2005/0240347)
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/PATRICK FERNANDES/Primary Examiner, Art Unit 3791