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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 23 January 2026 has been entered.
Status of the Claims
Claims 1-20 are currently pending in the present application, with claims 1, 11, and 17 being independent. Claims 1, 11, and 17 have been amended.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 21 November 2024 has been considered by the examiner.
Response to Arguments
Applicant’s amendments, see page 6, filed 23 January 2026, with respect to 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph interpretation of claims 1 and 11, along with accompanying amendments received on the same date, have been fully considered and are not persuasive. As currently drafted, a position tracking system does not inherently connotate structure in a CAS system – as it could be software that is called a position tracking. Accordingly, as claimed, the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph interpretation of position tracking system has been maintained. Note concretely linking the position tracking system to any of the hardware elements described in paragraphs 13-16 of applicant’s disclosure (such as a camera, navigational) would connotate structure.
Applicant’s amendments, see page 6, filed 23 January 2026, with respect to the double patenting rejection, have been fully considered and are not persuasive. The claims in the present application do not appear to be patentably distinct from those in copending application 18/122,771, as each of the claimed elements appear to be captured within the broadest reasonable interpretation of the subject matter contained with claims in the copending application. Accordingly, the double patenting rejection of claims 1-20 has been maintained.
Applicant’s arguments, see page 6, filed 23 January 2026, with respect to the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claims 1-20, along with accompanying amendments received on the same date, have been fully considered and are partially persuasive. The 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claims 1-20 has been maintained.
With respect to claims 1, 11, and 17, applicant’s amendment has clarified previously raised point A. However, points B, and C remain unclear. Given the plain and ordinary meaning of the words themselves and/or when interpreted in light of the originally filed disclosure the scope of the claimed limitations remains unclear. For instance, as currently drafted, it is not immediately clear as to:
The relationship between the indicators and the instrument – the claim currently calls for displaying an indicator of a cut on the bone that would be produced by a current orientation of the instrument and an indicator of a predetermined target plane for the cut. It is not immediately clear as to how the indicator is of a cut on the bone that would be produced by a current orientation of the instrument. Is the instrument an instrument used to cut the bone? Is the indicator being a single symmetrical shape the shape of each of the three indicators or is it the shape of the indicator of the of the predetermined target plane? Stated differently, as currently claimed, it is unclear as to the scope of the indicator of a cut on the bone...and an indicator of a predetermined target plane for the cut. The examiner respectfully requests the applicant clarify the scope of the claimed limitation. For the purposes of further examination, the examiner is interpreting the relationship between the indicators and the indicators themselves broadly along the lines of what is shown and disclosed with respect to figs. 3 and 4. The instrument is being interpreted as an instrument used/operable to cut the bone.
how the three different “an indicator” fit together. The claim calls for “an indicator of a cut on the bone”, “an indicator of a predetermined target plane”, and “an indicator representing that the current orientation of the current orientation is aligned with the predetermined target plane”. Then the claim has a singular reference to “the indicator”. Are three different indicators displayed in conjunction with each other using the augmented reality system? Or does each indicator supplant the previous indicator? Or does the final indicator supplant the previous two indicators. Stated differently, as currently claimed, the scope of each “an indicator” is unclear. One potential path forward would be to clarify the scope of each indicator (e.g., a predetermined target plane indicator).
Accordingly, the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claims 1, 11, and 17 and claims depending thereon has been maintained.
With respect to claim 17, given the plain and ordinary meaning of the words themselves and/or when interpreted in light of the originally filed disclosure the scope of the claimed limitations remains unclear. For instance, as currently drafted, it is not immediately clear as to: how the position of the instrument is used in the claims, since subsequent limitations are directed towards the orientation. As the claim is constructed, it is not immediately clear as to if the “detectable by a position tracking system” goes with the instrument or the tracker in “instrument is coupled to a tracker”. The disclosure provides examples of position of location and orientation. Is the position of the instrument related to the determined orientation or movement steps? It remains unclear as to how the position of the instrument is used in the subsequent limitations of claim 17. Accordingly, the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claim 17 and claims depending thereon has been maintained.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a position tracking system in claims 1 and 11.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/122,771 (reference application).
Current Application (18/122,972)
Copending Application (18/122,771)
A computer aided surgery (CAS) system, comprising:
an augmented reality (AR) system;
a position tracking system;
an instrument coupled to a tracker detectable by the position tracking system; and
a controller configured to:
receive information regarding at least three physical points on a bone of a patient;
display augmented reality information using the AR system, the augmented reality information comprising an indicator of a cut on the bone that would be produced by a current orientation of the instrument; and an indicator of a predetermined target plane for the cut, wherein the predetermined target plane is defined using the points, wherein the indicator is a single symmetrical shape;
determine, as the instrument is moved, when the current orientation of the instrument is aligned with the predetermined target plane; and
based on the determined alignment, display updated augmented reality information comprising an indicator representing that the current orientation of the instrument is aligned with the predetermined target plane.
A computer aided surgery (CAS) system, comprising:
an augmented reality (AR) system configured to display augmented reality information;
a position tracking system configured to track positions of objects;
an instrument coupled to a tracker detectable by the position tracking system; and
a controller configured to:
display augmented reality information using the AR system, the augmented reality information comprising:
an indication of a predetermined target plane for a cut on the bone, wherein the target indication is displayed as a plurality of first indicators, wherein each of the first indicators is displayed as a discrete point at a location on the target plan, and wherein there are at least three first indicators; and
an indication of a cut plane that would be produced by a current orientation of the instrument, wherein the cut indication is displayed as a plurality of second indicators, wherein each of the second indicators is displayed as a discrete point at a location on the cut plane, and wherein each of the second indicators is associated with a respective first indicator;
determine, as the instrument is moved, to update the display of each of the second indicators, wherein if the current orientation of the instrument is not aligned with the predetermined target plane at a location corresponding to a location of a respective first indicator, update the display to reflect the proximity between the corresponding second indicator and its respective first indicator; and if the current orientation of the instrument is aligned with the predetermined target plane at a location corresponding to a location of a respective first indicator display augmented reality information comprising an indication representing that the current orientation of the instrument is aligned with the predetermined target plane, wherein the alignment indication is displayed as a third indicator.
Although the conflicting claims are not identical, they are not patentably distinct from each other because independent claim 1 in the current application is an obvious variant of claim 1 in the copending/reference application. The other minor differences between claim 1 in the co-pending application and claim 1 in the current application do not appear to change the scope of the claimed invention.
Similar mapping can be performed between the other drafted claims in the current application and those in the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-20 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.
With respect to claim 1, given the plain and ordinary meaning of the words themselves and/or when interpreted in light of the originally filed disclosure the scope of the claimed limitations is unclear. For instance, as currently drafted, it is not immediately clear as to:
The relationship between the indicators and the instrument – the claim currently calls for displaying an indicator of a cut on the bone that would be produced by a current orientation of the instrument and an indicator of a predetermined target plane for the cut. It is not immediately clear as to how the indicator is of a cut on the bone that would be produced by a current orientation of the instrument. Is the instrument an instrument used to cut the bone? Is the indicator being a single symmetrical shape the shape of each of the three indicators or is it the shape of the indicator of the of the predetermined target plane? Stated differently, as currently claimed, it is unclear as to the scope of the indicator of a cut on the bone...and an indicator of a predetermined target plane for the cut. The examiner respectfully requests the applicant clarify the scope of the claimed limitation. For the purposes of further examination, the examiner is interpreting the relationship between the indicators and the indicators themselves broadly along the lines of what is shown and disclosed with respect to figs. 3 and 4. The instrument is being interpreted as an instrument used/operable to cut the bone.
how the three different “an indicator” fit together. The claim calls for “an indicator of a cut on the bone”, “an indicator of a predetermined target plane”, and “an indicator representing that the current orientation of the current orientation is aligned with the predetermined target plane”. Then the claim has a singular reference to “the indicator”. Are three different indicators displayed in conjunction with each other using the augmented reality system? Or does each indicator supplant the previous indicator? Or does the final indicator supplant the previous two indicators. Stated differently, as currently claimed, the scope of each “an indicator” is unclear. One potential path forward would be to clarify the scope of each indicator (e.g., a predetermined target plane indicator). For the purposes of further examination, the examiner is interpreting the claimed limitation broadly along the lines of what is shown and disclosed with respect figs. 3-6.
The examiner respectfully requests the applicant clarify the scope of the claimed limitations.
Claims 11 and 17 recite similar subject matter as to that of claim 1, and those elements present are correspondingly also rejected using substantially similar rationale set forth in claim 1. With respect to claim 17 it is also unclear as to what is detectable by a position tracking system (instrument or tracker), and how the position of the instrument is used in the claims, since subsequent limitations in the claim are directed towards the orientation.
Claims depending thereon do not cure all of the deficiencies and are accordingly also rejected for substantially similar reasons as that set forth for the claims from which they depend.
Allowable Subject Matter
Since no prior art rejection is being applied to the claims, based on the interpreted scope of the claimed limitations set forth above, claims 1-16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph and the double patenting rejection, set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US PG Publication 2017/0312032 to Amanatullah et al teaches a computer aided surgery system (see for instance, abstract and figs. 1-11) comprising: an augmented reality (AR) system configured to display augmented reality information (see for instance, paragraphs 3 and 19. The invention relates generally to the field of augmented reality and more specifically to a new and useful method for augmenting a surgical field with virtual guidance content in the field of augmented reality, see for instance, paragraph 3); a position tracking system configured to track positions of objects (The position of objects, such as the surgical tool is tracked, see for instance, paragraph 18, 72, and 76 and figs. 5-8); an instrument detectable by the position tracking system (A surgical tool is tracked and aligned, see for instance, paragraphs 18 and 63 and fig. 2); and a controller configured to: receive information regarding at least three points on a bone of a patient (see for instance, figs. 1, 5, and 6). Amanatullah further teaches aligning a planned cut trajectory and the real cut trajectory, see for instance, paragraphs 21 and 27 and fig. 6.
US PG Publication 2018/0256256 to May et al. teaches virtual guides can be shown in relation to a bone for placing a pin, see for instance, paragraph 45 and fig. 5.
US PG Publication 2021/0353311 to Lavallee teaches the user interface comprises visual indicators...indicating whether the cutting plane can be aligned with each target plane with the current pose, see paragraph 50.
US Patent 10,278,778 to State et al. teaches Medical Device Navigation Using a Virtual 3D Space. State further teaches that image guidance cues include trajectory indicators, intersection indicators, plane indicators, ghost display objects, etc and can be displayed concurrently, see for instance, column 4, lines 15- 67. Other appropriate virtual information and/or image guidance cues can be overlaid...such as orientation indicator...and intersection indicators indicating an intersection between one or more axes or trajectories of a display object and a plane of interest, see for instance, column 15, lines 31-44.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J COBB whose telephone number is (571)270-3875. The examiner can normally be reached Monday - Friday, 11am - 7pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Harrington can be reached at 571-272-2330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J COBB/Primary Examiner, Art Unit 2615