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.
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Species 02a-01, Claims 1-3 and 6, in the reply filed on December 24, 2025 is acknowledged.
Claims 4, 5, and 7-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 24, 2025.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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: “energy device” in claims 1-3 and 6 defined as capably “subjects the subject to thermal treatment’ in Page 10 the Specification.
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sarvazyan (U.S. Publication 2015/0141847).
As to Claim 1, Sarvazyan discloses an assistant device (100) in [0047] and Fig. 1A comprising
a processor (140) in [0047] and Fig. 1A configured to:
generate a first image “Step 425” in [0070] and Fig. 4A including one or more characteristic regions requiring excision “unablated” in [0067] and Fig. 4A by a surgical operator;
generate a second image “Step 425” in [0070] and Fig. 4A including one or more cauterized regions cauterized “ablated” in [0067] and Fig. 4A by an energy device “ablation device” in [0069];
generate information “spectral differences” in [0068] regarding presence or absence of a first region (any arbitrary portion of anatomy that is unablated) that is included in the characteristic regions and that is not included in the cauterized region based on the first image and the second image; and
output information “classifying spectra” in [0074] and Fig. 4B indicating the presence of the characteristic regions that requires to be cauterized when the first region is present.
As to Claim 2, Sarvazyan discloses the assistant device according to claim 1, wherein
the processor is configured to:
extract a pixel corresponding to the characteristic regions from the first image “pixels corresponding to non-ablated areas” in [0073]-[0074] and Fig. 4B;
extract a pixel corresponding to the cauterized region from the second image “pixels corresponding to ablated tissue regions” in [0073]-[0074] and Fig. 4B;
superimpose the first image on the second image via “composite image” in [0075];
compare “classifying” in [0074] the pixel corresponding to the characteristic regions with the pixel corresponding to the cauterized region;
determine “distinguish” in [0074] whether or not the characteristic region not included in the cauterized regions is present; and
output the information via “abundance map” in [0075] indicating the presence of the characteristic region that requires to be cauterized when the characteristic region not included in the cauterized regions is present.
As to Claim 3, Sarvazyan discloses the assistant device according to claim 1, wherein the processor is configured to generate the second image based on an imaging signal obtained by capturing fluorescence produced by excitation light “fluorescence” in [0061]-[0063] and [0079]-[0082], the excitation light being applied to excite advanced glycation end products produced by subjecting a living tissue to thermal treatment (during normal operation when anatomy is subject to the excitation light and the anatomy capable of containing glycation end products).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 6 is rejected under 35 U.S.C. 103 2(a)(1) as being unpatentable over and in further view of Azizian (U.S. Publication 2023/0225804).
As to Claim 6, Sarvazyan discloses the assistant device according to claim 1 wherein the processor is configured to generate the first image based on an imaging signal, the imaging signal being obtained by capturing a reflected light beam when a living tissue is irradiated with white light “white light” in [0035]-[0036] and Figs. 9A-10D and by capturing a return light beam “reflected light light” in [0035]-[0036] and Figs. 9A-10D from the living tissue however does not specifically disclose annotation operation information. Azizian teaches in the analogous field of endoscopy wherein a processor is configured to generate an imaging signal and annotation operation information “annotation” in [0129], the annotation operation information indicating that a surgical operator performs annotation (802) in [0112]-[0113] on a tumor region as shown in Fig. 8 in an image corresponding to the imaging signal. It would have been obvious to one of ordinary skill in the art to provide the device of Sarvazyan with annotation means as taught by Azizian in order to fulfill the same function of graphical user interface display of relevant surgical information with predictable results (Azizian, [0111]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the enclosed 892 form. 20210386270 is cited to show similar pixel analysis means. The prior art should be considered to define the claims over the art of record.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Carey can be reached on (571) 270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM CHOU/
Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795