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 .
Election/Restrictions
Applicant’s election without traverse of Invention Group II Claims 8-20 in the reply filed on 09/10/2025 is acknowledged.
Claims 1-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/10/2025.
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 8 and 15 are unpatentable over claims 8 and 15 of U.S. Patent No. 11,547,575 (hereinafter Roth ‘575). Although the claims at issue are not identical, they are not patentably distinct from each other because they are not patentably distinct. Regarding claim 8 of the instant application, Roth discloses a surgical robot for performing digital image analysis for installations of a surgical implant, comprising:
one or more computer processors; and
a non-transitory computer-readable storage medium storing computer instructions, which when executed by one or more computer processors cause the surgical robot to:
receive one or more images of an anatomy of a patient using one or more imaging devices;
identify an incision site and an implant site on the anatomy based on the one or more images;
segment a three-dimensional (3D) virtual implant model (claim 1; it would be obvious to one of ordinary skill in the art that the virtual implant shape includes a 2D or 3D shape as known in the art for the purpose or having the ability to segment objects of different shapes and sizes) of the surgical implant into a plurality of virtual implant components based on the one or more images and the implant site;
virtually simulate delivery of one or more of the plurality of virtual implant components along a plurality of delivery paths from the incision site to implant site; and
select at least one of the plurality of delivery paths for moving one or more implant components of the surgical implant from the incision site to the implant site based on the virtual simulations.
Regarding claim 15, Roh discloses non-transitory-computer-readable storage medium storing computer instructions, which when executed by one or more computer processors cause the one or more computer processors to: receive one or more images of an anatomy of a patient; identify an incision site and an implant site on the anatomy based on the one or more images; segment a three-dimensional (3D) virtual implant model (claims 1 &8; it would be obvious to one of ordinary skill in the art that the virtual implant shape includes a 2D or 3D shape as known in the art for the purpose or having the ability to segment objects of different shapes and sizes) of the surgical implant into a plurality of virtual implant components based on the one or more images and the implant site; virtually simulate delivery of one or more of the plurality of virtual implant components along a plurality of delivery paths from the incision site to implant site; and select at least one of the plurality of delivery paths for moving one or more implant components of the surgical implant from the incision site to the implant site based on the virtual simulations; and select at least one of the plurality of delivery paths for moving one or more implant components of the surgical implant from the incision site to the implant site based on the virtual simulations.
Claim 8 and 15 are unpatentable over claims 8 and 15 of Roh et al., of U.S. Patent No. 11,571,266 (hereinafter Roth ‘266). Although the claims at issue are not identical, they are not patentably distinct from each other because they are not patentably distinct from each other because of the following: Regarding claim 8, Roh disclosed A surgical system comprising: one or more computer processors; and
a non-transitory computer-readable storage medium storing computer instructions, which when executed by the one or more computer processors, cause the surgical system to:
receive images of at least a portion of a patient's body for inserting a surgical implant in the patient's body, the surgical implant comprising at least one surgical implant component;
generate a virtual model of the at least a portion of the patient's body based on the images, the virtual model representing at least an implantation site for the surgical implant;
generate an implantation plan based on the virtual model, the implantation plan comprising insertion parameters for controlling a surgical robot of the surgical system;
modify one or more of the insertion parameters based on a comparison of the insertion parameters to stored insertion parameters using a regression model, the stored insertion parameters retrieved from a surgical procedure database;
and cause the surgical robot to insert the at least one surgical implant component in the patient's body in accordance with the insertion parameters.
Regarding claim 15, Roh discloses a non-transitory computer-readable storage medium storing computer instructions, which when executed by [[the]] one or more computer processors, cause the one or more computer processors to:
receive images of at least a portion of a patient's body for inserting a surgical implant in the patient's body, the surgical implant comprising at least one surgical implant component;
generate a virtual model of the at least a portion of the patient's body based on the images, the virtual model representing at least an implantation site for the surgical implant;
generate an implantation plan based on the virtual model, the implantation plan comprising insertion parameters for controlling a surgical robot of the surgical system;
modify one or more of the insertion parameters based on a comparison of the insertion parameters to stored insertion parameters using a regression model, the stored insertion parameters retrieved from a surgical procedure database; and cause the surgical robot to insert the at least one surgical implant component in the patient's body in accordance with the insertion parameters.
Claims 8, 11 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 11 and 15 of Roh et al., U.S. Patent No. 12,144,559 (hereinafter Roh ‘559) . Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claim 8, Roh ‘559 discloses a system comprising: one or more processors; and one or more memories storing instructions that, when executed by the one or more processors, cause the surgical system to perform a process performed by a robotic surgical system, the process comprising: generating an extended-reality (XR) surgical simulation environment that includes a digital anatomical model of a patient, wherein the XR surgical simulation environment is configured to enable a user to simulate performing a surgical procedure on the patient using the digital anatomical model; connecting at least one XR device to the XR surgical simulation environment for the user to interact virtually with the digital anatomical model;
detecting completion of a simulated surgical procedure based on at least one action by the user; performing a comparison of simulation data of the simulated surgical procedure to stored simulation performance data; determining, based on the comparison, a performance score of the user for performing at least a portion of the simulated surgical procedure; and storing the performance score and data associated with the at least the portion of the simulated surgical procedure in a user profile.
Regarding claim 11, Roh ’559 discloses claim 11 discloses the system according to claim 8, wherein the process further comprises: mapping one or more anatomical features of a body of the patient using a machine- learning platform, wherein the machine-learning platform includes a plurality of surgery-type-specific machine learning modules to be applied to image data of the patient to provide the digital anatomical model.
Regarding claim 15, Roh ‘559 discloses a non-transitory computer-readable medium storing instructions that, when executed by a computing system, cause the computing system to perform operations performed by a robotic surgical system, the operations comprising: generating an extended-reality (XR) surgical simulation environment that includes a digital anatomical model of a patient,
wherein the XR surgical simulation environment is configured to enable a user to simulate performing a surgical procedure on the patient using the digital anatomical model; connecting at least one XR device to the XR surgical simulation environment for the user to interact virtually with the digital anatomical model;
detecting completion of a simulated surgical procedure based on at least one action by the user; performing a comparison of simulation data of the simulated surgical procedure to stored simulation performance data; determining, based on the comparison, a performance score of the user for performing at least a portion of the simulated surgical procedure; and storing the performance score and data associated with the at least the portion of the simulated surgical procedure in a user profile.
Allowable Subject Matter
Claims 9,10,12-14 and 16-20 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M FARAH whose telephone number is (571)272-4765. The examiner can normally be reached Mon - Fri. 9:30AM -10:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niketa Patel can be reached at 571-272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AHMED M FARAH/Primary Examiner, Art Unit 3792
/NIKETA PATEL/Supervisory Patent Examiner, Art Unit 3792
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