DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 3, 2025 has been entered.
Response to Arguments
Applicant’s arguments, filed September 3, 2025, have been noted; however, they are moot in view of the new grounds of rejection discussed below.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1, 7, 8, 9, 10, 15 and 29 are rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Schneider (US 5,531,227, already of record, referred to herein as
“Schneider”) in view of Gooch et al. (US 2003/0090682 A1, referred to herein as “Gooch”).
Regarding claim 1, Schneider discloses: A method of providing real-time dynamic imagery
of a medical procedure site (Schneider: column 1, lines 4-6 and 45-54, disclosing real time imaging of a
medical procedure; column 6, lines 57-58, disclosing dynamic imagery), the method comprising:
receiving a first real-time dynamic video stream of a scene based on a first modality from a first medical device
(Schneider: Fig. 2, element 32; column 7, lines 20-25, disclosing acquisition of an image of an object
via a lead imager; column 10, lines 52-58, disclosing use of real-time image data; column 6, lines 57-
58, disclosing dynamic imagery; column 4, lines 16-34, disclosing acquisition based on modality;
column 6, lines 44-52, disclosing use of devices associated with medical procedures);
receiving a second real-time dynamic video stream of the scene based on a second modality from a second
medical device (Schneider: Fig. 2, element 34; column 6, lines 58-66, disclosing acquisition of a follow library of images using a different modality such as a CT scan, an MRI scan, a sonogram, an
angiogram, a video, etc.; column 13, lines 62-67, disclosing that some follow images may be acquired
and used in real-time; column 6, lines 44-52, disclosing use of devices associated with medical
procedures);
determining… orientation and position of the first medical device to the second medical device (Schneider: column 7, lines 39-43, disclosing fiducial markers as features of objects; column 10, lines 1-11, disclosing that fiducial markers—e.g., and thus objects—are matched in position and orientation);
spatially registering the first real-time dynamic video stream and the second real-time dynamic video stream based on the… orientation and position of the first medical device to the second medical device (Schneider: column 7, lines 38-48, disclosing use of object features to interreference the images; column 5, lines 41-45, disclosing use of the marker for registration of the images; column 6, lines 36-41, disclosing that registration of the images means an alignment process by which the images are positioned coincident each other; column 10, lines 1-11, disclosing matching of objects in position and orientation), wherein the first real-time dynamic video stream and the second real-time dynamic video stream align to form a composite representation of the scene (Schneider: column 7, lines 49-67 and column 8, lines 1-12, disclosing interreference of the images via a common physical coordinate system; column 5, lines 36-39, disclosing use of the images to generate a composite); and
generating a composite real-time dynamic video stream of the scene from the composite representation
(Schneider: column 5, lines 36-40, disclosing generation of a composite image that results from the
combination of the lead image and the follow image from the two image sources; column 10, lines
1-4, disclosing that the images are part of video streams).
Schneider does not explicitly disclose determining a relative orientation and position of the devices and spatially registering based on the determined relative orientation and position.
However, Gooch discloses determining a relative orientation and position of objects and spatially registering based on the determined relative orientation and position (Gooch: Fig. 1, paragraph [0026] – [0028], disclosing cameras used to capture images of first and second objects and determine a position and orientation of the objects; paragraphs [0009] and [0053], disclosing determination of the position and orientation of the first object relative to the position and orientation of the second object).
At the time the invention was made, it would have been obvious for a person having ordinary skill in the art to use the relative position and orientation determination of Gooch in the method of Schneider.
One would have been motivated to modify Schneider in this manner in order to better calculate how the objects are to be moved with respect to each other (Gooch: paragraph [0010]).
Regarding claim 7, Schneider and Gooch disclose: The method of claim 1, wherein the first
modality comprises a two dimensional modality (Schneider: column 7, lines 53-57, disclosing use of 2D and
3D modalities).
Regarding claim 8, Schneider and Gooch disclose: The method of claim 1, wherein the first
modality comprises a three dimensional modality (Schneider: column 7, lines 53-57, disclosing use of 2D and
3D modalities).
Regarding claim 9, Schneider and Gooch disclose: The method of claim 1, wherein the second
modality comprises a two dimensional modality (Schneider: column 7, lines 53-57, disclosing use of 2D and
3D modalities).
Regarding claim 10, Schneider and Gooch disclose: The method of claim 1, wherein the second
modality comprises a three-dimensional modality (Schneider: column 7, lines 53-57, disclosing use of 2D and
3D modalities).
Regarding claim 15, the claim recites analogous limitations to claim 1, above, and is therefore rejected on the same premise.
Regarding claim 29, the claim recites analogous limitations to claim 1, above, and is therefore rejected on the same premise.
[double patenting]
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 15 and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10 and 16 of U.S. Patent No. 11,481,868 in view of Gooch.
Claim 1 of Instant Application
A method of providing real-time dynamic imagery of a medical procedure site, the method comprising:
receiving a first real-time dynamic video stream of a scene based on a first modality from a first medical device;
receiving a second real-time dynamic video stream of the scene based on a second modality from a second medical device;
determining a relative orientation and position of the first medical device to the second medical device;
spatially registering the first real-time dynamic video stream and the second real- time dynamic video stream based on the determined relative orientation and position of the first medical device to the second medical device, wherein the first real-time dynamic video stream and the second real-time dynamic video stream align to form a composite representation of the scene; and
generating a composite real-time dynamic video stream of the scene from the composite representation.
Claim 1 of U.S. Patent No. 11,481,868
A method for image guidance comprising:
obtaining a first real-time imaging stream of a first imaging modality from a first medical device, the first real-time imaging stream depicting a scene;
obtaining a second real-time imaging stream of a second imaging modality from a second medical device, the second real-time imaging stream depicting a portion of the scene, wherein the second imaging modality is different from the first imaging modality;
determining a spatial relationship between the first medical device and the second medical device;
generating a composite image of the scene based at least in part on the first real-time imaging stream, the second real-time imaging stream, and the spatial relationship between the first medical device and the second medical device, the composite image depicting the second real-time imaging stream spatially registered with the first real-time imaging stream; and
causing a display to display the composite representation image of the scene.
Table 1.
Regarding claim 1, claim 1 of U.S. Patent No. 11, 481,868 discloses many of the same or similar limitations, as shown in Table 1.
Claim 1 of U.S. Patent No. 11,481,868 does not explicitly disclose determining a relative orientation and position of the devices.
However, Gooch discloses determining a relative orientation and position of the devices (Gooch: Fig. 1, paragraph [0026] – [0028], disclosing cameras used to capture images of first and second objects and determine a position and orientation of the objects; paragraphs [0009] and [0053], disclosing determination of the position and orientation of the first object relative to the position and orientation of the second object).
At the time the invention was made, it would have been obvious for a person having ordinary skill in the art to use the relative position and orientation determination of Gooch in the method of claim 1 of U.S. Patent No. 11,481,868.
One would have been motivated to modify claim 1 of U.S. Patent No. 11,481,868 in this manner in order to better calculate how the objects are to be moved with respect to each other (Gooch: paragraph [0010]).
Claim 15 of Instant Application
A system of providing real-time dynamic imagery of a medical procedure site, comprising:
a control system, wherein the control system is adapted to:
receive a first real-time dynamic video stream of a scene based on a first modality from a first medical device;
receive a second real-time dynamic video stream of the scene based on a second modality from a second medical device;
determine a relative orientation and position of the first medical device to the second medical device;
spatially register the first real-time dynamic video stream and the second real-time dynamic video stream based on the determined relative orientation and position of the first medical device to the second medical device, wherein the first real-time dynamic video stream and the second real-time dynamic video stream align to form a composite representation of the scene; and
generate a composite real-time dynamic video stream of the scene from the composite representation.
Claim 10 of U.S. Patent No. 11,481,868
A system for medical procedure image guidance comprising an image guidance system having one or more processors, the one or more processors configured to:
obtain a first real-time imaging stream of a first imaging modality from a first medical device, the first real-time imaging stream depicting a scene;
obtain a second real-time imaging stream of a second imaging modality from a second medical device, the second real-time imaging stream depicting a portion of the scene, wherein the second imaging modality is different from the first imaging modality;
determine a spatial relationship between the first medical device and the second medical device;
generate a composite image of the scene based at least in part on the first real-time imaging stream, the second real-time imaging stream, and the spatial relationship between the first medical device and the second medical device, the composite image depicting the second real-time imaging stream spatially registered with the first real-time imaging stream; and
cause a display to display the composite image of the scene.
Table 2.
Regarding claim 15, claim 10 of U.S. Patent No. 11,481,868 discloses many of the same or similar limitations, as shown in Table 2.
Claim 10 of U.S. Patent No. 11,481,868 does not explicitly disclose determining a relative orientation and position of the devices.
However, Gooch discloses determining a relative orientation and position of the devices (Gooch: Fig. 1, paragraph [0026] – [0028], disclosing cameras used to capture images of first and second objects and determine a position and orientation of the objects; paragraphs [0009] and [0053], disclosing determination of the position and orientation of the first object relative to the position and orientation of the second object).
At the time the invention was made, it would have been obvious for a person having ordinary skill in the art to use the relative position and orientation determination of Gooch in the method of claim 10 of U.S. Patent No. 11,481,868.
One would have been motivated to modify claim 10 of U.S. Patent No. 11,481,868 in this manner in order to better calculate how the objects are to be moved with respect to each other (Gooch: paragraph [0010]).
Claim 29 of Instant Application
A computer-readable medium comprising instructions for instructing a computer to:
receive a first real-time dynamic video stream of a scene based on a first modality from a first medical device;
receive a second real-time dynamic video stream of the scene based on a second modality from a second medical device;
determine a relative orientation and position of the first medical device to the second medical device;
spatially register the first real-time dynamic video stream and the second real-time dynamic video stream based on the determined relative orientation and position of the first medical device to the second medical device, wherein the first real-time dynamic video stream and the second real-time dynamic video stream align to form a composite representation of the scene; and
generate a composite real-time dynamic video stream of the scene from the composite representation.
Claim 16 of U.S. Patent No. 11,481,868
A computer-readable, non-transitory storage medium storing computer-executable instructions that when executed by one or more processors cause the one or more processors to:
obtain a first real-time imaging stream of a first imaging modality from a first medical device, the first real-time imaging stream depicting a scene;
obtain a second real-time imaging stream of a second imaging modality from a second medical device, the second real-time imaging stream depicting a portion of the scene, wherein the second imaging modality is different from the first imaging modality;
determine a spatial relationship between the first medical device and the second medical device;
generate a composite image of the scene based at least in part on the first real-time imaging stream, the second real-time imaging stream, and the spatial relationship between the first medical device and the second medical device, the composite image depicting the second real-time imaging stream spatially registered with the first real-time imaging stream; and
cause a display to display the composite image representation of the scene.
Table 3.
Regarding claim 29, claim 16 of U.S. Patent No. 11, 481,868 discloses many of the same or similar limitations, as shown in Table 3.
Claim 16 of U.S. Patent No. 11,481,868 does not explicitly disclose determining a relative orientation and position of the devices.
However, Gooch discloses determining a relative orientation and position of the devices (Gooch: Fig. 1, paragraph [0026] – [0028], disclosing cameras used to capture images of first and second objects and determine a position and orientation of the objects; paragraphs [0009] and [0053], disclosing determination of the position and orientation of the first object relative to the position and orientation of the second object).
At the time the invention was made, it would have been obvious for a person having ordinary skill in the art to use the relative position and orientation determination of Gooch in the method of claim 16 of U.S. Patent No. 11,481,868.
One would have been motivated to modify claim 16 of U.S. Patent No. 11,481,868 in this manner in order to better calculate how the objects are to be moved with respect to each other (Gooch: paragraph [0010]).
Allowable Subject Matter
Claims 12 and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christopher Braniff whose telephone number is (571) 270-5009. The examiner can normally be reached M-F 7AM to 4PM.
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CHRISTOPHER T. BRANIFF
Primary Examiner
Art Unit 2484
/CHRISTOPHER BRANIFF/Primary Examiner, Art Unit 2484