DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Arguments
Examiner acknowledges the receipt of the Applicant’s Amendment dated April 30, 2026. Applicant amended claims 1, 7, and 13. Claims 1-18 are pending.
Applicant's arguments have been considered in view of the Interview dated March 26, 2026. In order to expedite prosecution upon further search and consideration, the claims are rejected under 35 U.S.C. 103 as discussed below in view of the new grounds of rejection over Kawano (U.S. Publication 2010/0198008).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,512,512. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlapping subject matter of U.S. Patent No. 10,512,512 regarding a teleoperated surgical system reads on the subject matter of the instant application regarding a system and method. U.S. Patent No. 10,512,512 discloses a teleoperated surgical system with an illuminator, a camera, and a processor that changes output optical power of the illuminator and determining if an endoscope contacts tissue and claim 7 discloses a first exposure threshold and a second exposure threshold. It would have been obvious to one of ordinary skill in the art to use threshold values as cited in the instant claims as to a threshold value of illumination brightness of a scene.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 30, 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hosoda et al. (U.S. Patent 6,464,633, hereinafter “Hosoda”) and in further views of Ozawa et al. (U.S. Patent 6,080,104, hereinafter “Ozawa”), Takizawa (WO 2010/047357, equivalent U.S. Publication 2010/0268026 for citation purposes), Sasaki (U.S. Patent 9,088,707), Kagaya (U.S. Publication 2012/0026102), and Kawano (U.S. Publication 2010/0198008).
As to Claim 1, Hosoda discloses a system (1) in 6/30 and Fig. 1 comprising:
a memory (121) in 11/8 storing instructions via (60) in 10/55 and (137) in 10/52; and
a processor (56) in 11/18 in Fig. 17 and (842-848) in 66/32-56 communicatively coupled to the memory and configured to execute the instructions to:
determine via “appropriate illumination” in 67/1-2 and via “peak values” in 67/50-56 that a change in luminance of captured frames of a scene in response to a change in illumination brightness from (3) in 6/34 and (821) in 66/45 of the scene, wherein the illumination brightness of the scene comprises brightness of light output from an illuminator (205) in 19/59 for illumination of the scene; and
command, in response to the determination that the change in luminance of the captured frames of the scene, attenuation of the illumination brightness of the scene in 66/62-67/2.
However, Hosoda does not specifically disclose a threshold value. Ozawa teaches in the analogous art that creating create a brightness histogram/metadata for a frame in the video stream in 1/41-48, 1/56-67, 2/33-38, 4/26-44, and 4/62-5/4. Takizawa teaches in the analogous art that contact sensors (30b and 30c) in [0040] and Fig. 4 provide additional timing information for controller (26) in [0040] wherein imaging can be paused until predetermined conditions are satisfied in [0041]. In view of Hosoda, Ozawa, and Takizawa as a whole, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the processor with peak infrared value detection of Hosoda with threshold values of equivalent predetermined conditions as taught that a predetermined threshold has been met in order to allow for greater brightness control improving image quality during normal operation.
Sasaki teaches in the analogous field of endoscopy that a change in contrast, change in luminance, change in luminance distribution, and change in light intensity control value is detected relative to a threshold value wherein attenuation of focus (a change in focus of a camera can affect change brightness) is commanded based on a determination that the change in luminance of a scene is less than a threshold value as described in 21/47-22/9. To further evidence the level of ordinary skill in the art at the time of invention, Kagaya teaches in the analogous field of endoscopy wherein shutter speed and light amount are adjusted based on image signal luminance when less than a threshold value as described in [0087], [0092], and [0099]. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the system and processor having predetermined threshold conditions of brightness control of Hosoda, Ozawa, and Takizawa as a whole with threshold conditions involving change in luminance as taught by Sasaki and Kagaya in order to provide the same illumination attenuation function with additional conditions including threshold values with predictable results.
In order to expedite prosecution, Kawano is applied as a secondary teaching to evidence the level of ordinary skill in the art in the analogous field of endoscopy wherein illumination light and light emission time are adjusted depending on distance between an imaging unit and inner wall of an organ based on luminance information of an in-vivo image in [0190]. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the system of Hosoda to attenuate illumination brightness of the scene in response to determination that change in luminance of captured frames as taught by Kawano to fulfill the same function of desired imaging with predictable results.
As to Claim 2, Hosoda discloses the system of claim 1, wherein the processor is further configured to execute the instructions via (60) in 10/55 and (137) in 10/52 to:
command varying of the illumination brightness of the scene in a known pattern from “brightness” in 66/66 to “darkness” in 66/67; and
terminate the attenuation of the illumination brightness of the scene in response to a detection, by a camera (118) in 11/4 and (818) in 65/41, of the known pattern.
As to Claim 3, Hosoda discloses the system of claim 1, wherein the processor is further configured to execute the instructions via (60) in 10/55 and (137) in 10/52 to:
detect the change in luminance of the captured frames of the scene based on an average brightness “average brightness signal” in 27/58 to 28/14 of a frame of the scene and an average brightness of a subsequently captured frame of the scene.
As to Claim 4, Hosoda in view of Ozawa and Takizawa discloses the system of claim 3, wherein the processor is further configured to execute the instructions via (60) in 10/55 and (137) in 10/52 to:
create a brightness histogram as taught by Ozawa in 1/41-48, 1/56-67, 2/33-38, 4/26-44, and 4/62-5/4 noted relevant to claim 1 above for the frame of the scene;
determine the average brightness “mean brightness value” in 4/20-25 and Figs. 3 and 4 of the frame of the scene based on the brightness histogram for the frame of the scene;
create a brightness histogram for the subsequently captured frame of the scene as shown in Figs. 3 and 4 during normal operation at a later point in time; and
determine the average brightness of the subsequently captured frame of the scene during normal operation based on the brightness histogram for the subsequently captured frame of the scene wherein aperture control is based on histogram data as shown in Fig. 8B.
As to Claim 5, Hosoda discloses the system of claim 4, wherein the processor is further configured to execute the instructions via (60) in 10/55 and (137) in 10/52 to:
determine a luminance of the frame of the scene as a ratio of the average brightness of the frame of the scene to an exposure time “exposure period” being modulated in 39/28 to 39/55 of a camera (118) in 11/4 and (818) in 65/41 that captured the frames of the scene; and
determine a luminance of the subsequently captured frame of the scene as a ratio of the average brightness of the subsequently captured frame of the scene to the exposure time of the camera.
As to Claim 6, Hosoda discloses the system of claim 1, wherein the processor is further configured to execute the instructions via (60) in 10/55 and (137) in 10/52 to:
adjust one or both of a camera exposure time of a camera (118) in 11/4 and (818) in 65/41 that captured the frames of the scene and a gain that controls a brightness of a displayed frame of the scene; and
adjust, based on a value of the camera exposure time, the illumination brightness of the scene and the camera exposure time to maintain a target brightness of displayed frames of the scene (the process of changing output optical power occurring over time as described via brightness setting circuits as exemplified by (45) in 9/33 and (132) in 11/20) wherein multiple exposure times (exposure periods) as described in 39/28-35 over time are shown in Figs. 58A-58C).
As to Claim 7, Hosoda discloses a method comprising:
determining via “appropriate illumination” in 67/1-2 and via “peak values” in 67/50-56 that a change in luminance of captured frames of a scene in response to a change in illumination brightness of the scene from (3) in 6/34 and (821) in 66/45, wherein the illumination brightness of the scene comprises brightness of light output from an illuminator (205) in 19/59 for illumination of the scene; and
commanding, in response to the determination that the change in luminance of the captured frames of the scene, attenuation of the illumination brightness of the scene in 66/62-67/2.
However, Hosoda does not specifically disclose a threshold value. Ozawa teaches in the analogous art that creating create a brightness histogram/metadata for a frame in the video stream in 1/41-48, 1/56-67, 2/33-38, 4/26-44, and 4/62-5/4. Takizawa teaches in the analogous art that contact sensors (30b and 30c) in [0040] and Fig. 4 provide additional timing information for controller (26) in [0040] wherein imaging can be paused until predetermined conditions are satisfied in [0041]. In view of Hosoda, Ozawa, and Takizawa as a whole, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the processor with peak infrared value detection of Hosoda with threshold values of equivalent predetermined conditions as taught that a predetermined threshold has been met in order to allow for greater brightness control improving image quality during normal operation.
Sasaki teaches in the analogous field of endoscopy that a change in contrast, change in luminance, change in luminance distribution, and change in light intensity control value is detected relative to a threshold value wherein attenuation of focus (a change in focus of a camera can affect change brightness) is commanded based on a determination that the change in luminance of a scene is less than a threshold value as described in 21/47-22/9. To further evidence the level of ordinary skill in the art at the time of invention, Kagaya teaches in the analogous field of endoscopy wherein shutter speed and light amount are adjusted based on image signal luminance when less than a threshold value as described in [0087], [0092], and [0099]. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the system and processor having predetermined threshold conditions of brightness control of Hosoda, Ozawa, and Takizawa as a whole with threshold conditions involving change in luminance as taught by Sasaki and Kagaya in order to provide the same illumination attenuation function with additional conditions including threshold values with predictable results.
In order to expedite prosecution, Kawano is applied as a secondary teaching to evidence the level of ordinary skill in the art in the analogous field of endoscopy wherein illumination light and light emission time are adjusted depending on distance between an imaging unit and inner wall of an organ based on luminance information of an in-vivo image in [0190]. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the system of Hosoda to attenuate illumination brightness of the scene in response to determination that change in luminance of captured frames as taught by Kawano to fulfill the same function of desired imaging with predictable results.
As to Claim 8, Hosoda discloses the method of claim 7, further comprising:
commanding varying of the illumination brightness of the scene in a known pattern from “brightness” in 66/66 to “darkness” in 66/67; and
terminating the attenuation of the illumination brightness of the scene in response to a detection, by a camera (118) in 11/4 and (818) in 65/41, of the known pattern.
As to Claim 9, Hosoda discloses the method of claim 7, further comprising:
detecting the change in luminance of the captured frames of the scene based on an average brightness “average brightness signal” in 27/58 to 28/14 of a frame of the scene and an average brightness of a subsequently captured frame of the scene.
As to Claim 10, Hosoda in view of Ozawa and Takizawa discloses the method of claim 9, further comprising:
creating a brightness histogram as taught by Ozawa in 1/41-48, 1/56-67, 2/33-38, 4/26-44, and 4/62-5/4 noted relevant to claim 7 above for the frame of the scene;
determine the average brightness “mean brightness value” in 4/20-25 and Figs. 3 and 4 of the frame of the scene based on the brightness histogram for the frame of the scene;
create a brightness histogram for the subsequently captured frame of the scene as shown in Figs. 3 and 4 during normal operation at a later point in time; and
determine the average brightness of the subsequently captured frame of the scene during normal operation based on the brightness histogram for the subsequently captured frame of the scene wherein aperture control is based on histogram data as shown in Fig. 8B.
As to Claim 11, Hosoda discloses the method of claim 10, further comprising:
determining a luminance of the frame of the scene as a ratio of the average brightness of the frame of the scene to an exposure time “exposure period” being modulated in 39/28 to 39/55 of a camera that captured the frames of the scene; and
determining a luminance of the subsequently captured frame during normal operation of the scene as a ratio of the average brightness of the subsequently captured frame of the scene to the exposure time of the camera (luminance and exposure time having an inherent mathematical relationship, see https://en.wikipedia.org/wiki/Exposure_value).
As to Claim 12, Hosoda discloses the method of claim 7, further comprising:
adjusting one or both of a camera exposure time of a camera (118) in 11/4 and (818) in 65/41 that captured the frames of the scene and a gain that controls a brightness of a displayed frame of the scene; and
adjusting, based on a value of the camera exposure time, the illumination brightness of the scene and the camera exposure time to maintain a target brightness of displayed frames of the scene (the process of changing output optical power occurring over time as described via brightness setting circuits as exemplified by (45) in 9/33 and (132) in 11/20) wherein multiple exposure times (exposure periods) as described in 39/28-35 over time are shown in Figs. 58A-58C).
As to Claim 13, Hosoda discloses a non-transitory computer-readable medium storing instructions via (60) in 10/55 and (137) in 10/52 that, when executed, cause a processor (56) in 11/18 in Fig. 17 and (842-848) in 66/32-56 of a computer system (1) in 6/30 and Fig. 1 to:
determine via “appropriate illumination” in 67/1-2 and via “peak values” in 67/50-56 that a change in luminance of captured frames of a scene in response to a change in illumination brightness of the scene, wherein the illumination brightness of the scene comprises brightness of light output from an illuminator (205) in 19/59 for illumination of the scene; and
command, in response to the determination that the change in luminance of the captured frames of the scene, attenuation of the illumination brightness of the scene in 66/62-67/2.
However, Hosoda does not specifically disclose a threshold value. Ozawa teaches in the analogous art that creating create a brightness histogram/metadata for a frame in the video stream in 1/41-48, 1/56-67, 2/33-38, 4/26-44, and 4/62-5/4. Takizawa teaches in the analogous art that contact sensors (30b and 30c) in [0040] and Fig. 4 provide additional timing information for controller (26) in [0040] wherein imaging can be paused until predetermined conditions are satisfied in [0041]. In view of Hosoda, Ozawa, and Takizawa as a whole, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the processor with peak infrared value detection of Hosoda with threshold values of equivalent predetermined conditions as taught that a predetermined threshold has been met in order to allow for greater brightness control improving image quality during normal operation.
Sasaki teaches in the analogous field of endoscopy that a change in contrast, change in luminance, change in luminance distribution, and change in light intensity control value is detected relative to a threshold value wherein attenuation of focus (a change in focus of a camera can affect change brightness) is commanded based on a determination that the change in luminance of a scene is less than a threshold value as described in 21/47-22/9. To further evidence the level of ordinary skill in the art at the time of invention, Kagaya teaches in the analogous field of endoscopy wherein shutter speed and light amount are adjusted based on image signal luminance when less than a threshold value as described in [0087], [0092], and [0099]. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the system and processor having predetermined threshold conditions of brightness control of Hosoda, Ozawa, and Takizawa as a whole with threshold conditions involving change in luminance as taught by Sasaki and Kagaya in order to provide the same illumination attenuation function with additional conditions including threshold values with predictable results.
In order to expedite prosecution, Kawano is applied as a secondary teaching to evidence the level of ordinary skill in the art in the analogous field of endoscopy wherein illumination light and light emission time are adjusted depending on distance between an imaging unit and inner wall of an organ based on luminance information of an in-vivo image in [0190]. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the system of Hosoda to attenuate illumination brightness of the scene in response to determination that change in luminance of captured frames as taught by Kawano to fulfill the same function of desired imaging with predictable results.
As to Claim 14, Hosoda discloses the non-transitory computer-readable medium of claim 13, wherein the instructions, when executed, further cause the processor of the computer system to:
command varying of the illumination brightness of the scene in a known pattern from “brightness” in 66/66 to “darkness” in 66/67; and
terminate the attenuation of the illumination brightness of the scene in response to a detection, by a camera (118) in 11/4 and (818) in 65/41, of the known pattern.
As to Claim 15, Hosoda discloses the non-transitory computer-readable medium of claim 13, wherein the instructions, when executed via (60) in 10/55 and (137) in 10/52, further cause the processor of the computer system to:
detect the change in luminance of the captured frames of the scene based on an average brightness “average brightness signal” in 27/58 to 28/14 of a frame of the scene and an average brightness of a subsequently captured frame of the scene.
As to Claim 16, Hosoda in view of Ozawa and Takizawa discloses the non-transitory computer-readable medium of claim 15, wherein the instructions, when executed via (60) in 10/55 and (137) in 10/52, further cause the processor of the computer system to:
create a brightness histogram as taught by Ozawa in 1/41-48, 1/56-67, 2/33-38, 4/26-44, and 4/62-5/4 noted relevant to claim 15 above for the frame of the scene;
determine the average brightness “mean brightness value” in 4/20-25 and Figs. 3 and 4 of the frame of the scene based on the brightness histogram for the frame of the scene;
create a brightness histogram for the subsequently captured frame of the scene as shown in Figs. 3 and 4 during normal operation at a later point in time; and
determine the average brightness of the subsequently captured frame of the scene during normal operation based on the brightness histogram for the subsequently captured frame of the scene wherein aperture control is based on histogram data as shown in Fig. 8B.
As to Claim 17, Hosoda discloses the non-transitory computer-readable medium of claim 16, wherein the instructions, when executed via (60) in 10/55 and (137) in 10/52, further cause the processor of the computer system to:
determine a luminance of the frame of the scene as a ratio of the average brightness of the frame of the scene to an exposure time “exposure period” being modulated in 39/28 to 39/55 of a camera that captured the frames of the scene; and
determine a luminance of the subsequently captured frame of the scene as a ratio of the average brightness of the subsequently captured frame of the scene to the exposure time of the camera (luminance and exposure time having an inherent mathematical relationship, see https://en.wikipedia.org/wiki/Exposure_value).
As to Claim 18, Hosoda discloses the non-transitory computer-readable medium of claim 13, wherein the instructions, when executed via (60) in 10/55 and (137) in 10/52, further cause the processor of the computer system to:
adjust one or both of a camera exposure time “exposure period” being modulated in 39/28 to 39/55 of a camera (118) in 11/4 and (818) in 65/41 that captured the frames of the scene and a gain that controls a brightness of a displayed frame of the scene; and
adjust, based on a value of the camera exposure time, the illumination brightness of the scene and the camera exposure time to maintain a target brightness of displayed frames of the scene (the process of changing output optical power occurring over time as described via brightness setting circuits as exemplified by (45) in 9/33 and (132) in 11/20) wherein multiple exposure times (exposure periods) as described in 39/28-35 over time are shown in Figs. 58A-58C).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM B CHOU whose telephone number is (571) 270-3367. The examiner can normally be reached on M-F 9 am - 6 pm.
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/WILLIAM CHOU/
Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
Prosecution Insights