DETAILED ACTION
Response to Amendment
This Office Action is responsive to the amendment filed on 01/26/2026. As indicated by the amendment: claim 20 been amended. Claims 10-29 are presently pending in the application.
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 10-11, 18, 22 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 of U.S. Patent No. 9,789,608 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patented claims. Except for a minor difference in terminology, it is clear that all elements of claims 10-11, 18 and 22-23 are to be found in claim 4 of the patent. The difference between claims of the application and claim of the patent lies in the fact that the patent claim includes many more elements and is thus more specific. Thus, the inventions of claims 10-11, 18 and 22-23 of the patent is in effect a "species" of the "generic" invention of claim 4 of the application. It has been held that the generic invention is "anticipated" by the “species”. See Jn re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 10-11, 18 and 22-23 are anticipated by claim 4 of the patent, they are not patentably distinct from the patented claims.
Claims 10, 12, 22 and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 of U.S. Patent No. 9,789,608 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patented claims. Except for a minor difference in terminology, it is clear that all elements of claims 10 and 12 are to be found in claim 12 of the patent. The difference between claims of the application and claim of the patent lies in the fact that the patent claim includes many more elements and is thus more specific. Thus, the inventions of claims 10, 12, 22 and 24 of the patent is in effect a "species" of the "generic" invention of claim 12 of the application. It has been held that the generic invention is "anticipated" by the “species”. See Jn re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 10, 12, 22 and 24 are anticipated by claim 12 of the patent, they are not patentably distinct from the patented claims.
Claims 10, 15, 20, 22 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 of U.S. Patent No. 9,789,608 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patented claims. Except for a minor difference in terminology, it is clear that all elements of claims 10, 15, 20, 22 and 27 are to be found in claim 5 of the patent. The difference between claims of the application and claim of the patent lies in the fact that the patent claim includes many more elements and is thus more specific. Thus, the inventions of claims 10, 15, 20, 22 and 27 of the patent is in effect a "species" of the "generic" invention of claim 5 of the application. It has been held that the generic invention is "anticipated" by the “species”. See Jn re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 10, 15, 20, 22 and 27 are anticipated by claim 5 of the patent, they are not patentably distinct from the patented claims.
Claims 10, 16, 22 and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 of U.S. Patent No. 9,789,608 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patented claims. Except for a minor difference in terminology, it is clear that all elements of claims 10, 16, 22 and 28 are to be found in claim 6 of the patent. The difference between claims of the application and claim of the patent lies in the fact that the patent claim includes many more elements and is thus more specific. Thus, the inventions of claims 10, 16, 22 and 28 of the patent is in effect a "species" of the "generic" invention of claim 6 of the application. It has been held that the generic invention is "anticipated" by the “species”. See Jn re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 10, 16, 22 and 28 are anticipated by claim 6 of the patent, they are not patentably distinct from the patented claims.
Claims 10, 17, 22 and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 10 of U.S. Patent No. 9,789,608 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patented claims. Except for a minor difference in terminology, it is clear that all elements of claims 10, 17, 22 and 28 are to be found in claims 4 and 10 of the patent. The difference between claims of the application and claim of the patent lies in the fact that the patent claim includes many more elements and is thus more specific. Thus, the inventions of claims 10, 17, 22 and 28 of the patent is in effect a "species" of the "generic" invention of claims 4 and 10 of the application. It has been held that the generic invention is "anticipated" by the “species”. See Jn re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 10, 17, 22 and 28 are anticipated by claims 4 and 10 of the patent, they are not patentably distinct from the patented claims.
Claim Rejections - 35 USC § 103
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.
Claims 10-11, 13-18, 20-23 and 25-29 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Salisbury et al. (US 6,522,906 B1) in view of Khalili (US 2005/0096502 A1) in view of Anvari (US 2006/0149418 A1) in view of Koeneman (US 2007/0222665 A1).
Regarding claim 10, Salisbury discloses a medical system (Fig. 1) comprising: a display system (14; Fig. 1; col. 5, l. 66 – col. 6, l. 3); and a processor configured to: generate a computer model of a plurality of instruments (col. 13, l. 65 – col. 14, l. 11; and col. 6, ll. 24-29), wherein the plurality of instruments includes an image capturing instrument (22; col. 6, ll. 24-29); cause an image of the computer model to be displayed on the display system (col. 13, l. 65 – col. 14, l. 11).
However, Salisbury does not specifically disclose wherein the plurality of instruments extends through and out of a distal end of an entry guide. Khalili teaches an analogous medical system wherein a plurality of instruments (22/24; Fig. 1B; par. [0048] and [0051]) extends through and out of a distal end of an entry guide (4; Fig. 1B; par. [0048] and [0051]). Khalili teaches extending the plurality of instruments through a single entry guide, and not a plurality of entry guides, in order to reduce the number of incisions while deploying multiple surgical tools inside the human body, thus, minimizing surgical trauma to the patient and decreasing the complexity involved in operating the surgical instruments (par. [0006] and [0008]). It would have been obvious to one having ordinary skill in the art to extend the plurality of instruments of Salisbury through an entry guide, in order to reduce the number of incisions while deploying multiple surgical tools inside the human body, thus, minimizing surgical trauma to the patient and decreasing the complexity involved in operating the surgical instruments, as taught by Khalili.
Salisbury does not specifically disclose the processors configured to: determine from a configuration of the plurality of instruments in the computer model if an event alert threshold associated with an event has been reached; and if a determination is made that the event alert threshold has been reached, cause an event indicator to be displayed on the display system at a portion of the image of the computer model associated with the event. Anvari teaches an analogous medical system wherein processors (200; par. [0040]) are configured to determine from a configuration of the plurality of instruments in the computer model if an event alert threshold associated with an event has been reached (par. [0039]-[0040]); and if a determination is made that the event alert threshold has been reached, provide a visual indicator to the surgeon (par. [0039]-[0040]). Collision avoidance systems are well-known, Koeneman teaches a collision avoidance system wherein an object on a path of imminent collision with another object it colored red, and flashing, on a screen to alert the operator prior to collision, such that it can be avoided (par. [0141]-[0148]; Fig. 9). Similarly, objects that are not on a path for collision with another object are colored green (par. [0143]; Fig. 9). It would have been obvious to one having ordinary skill in the art to modify the system of Salisbury to provide an event indicator in the display, such as changing the color of colliding instrument(s), as taught by Koeneman, after determining that the configuration of instruments may cause a collision, as taught by Anvari and Koeneman, and the prevention of which is contemplated by Salisbury.
Regarding claim 11, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the medical system of claim 10, wherein the event is an impending instrument collision (Anvari: par. [0039]-[0040]).
Regarding claim 13, Salisbury in view of Khalili in view of Anvari disclose the medical system of claim 10, wherein the event is an optimal configuration of the plurality of instruments for performing a medical procedure (Anvari: par. [0021]).
Regarding claim 14, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the medical system of claim 10, wherein the event is an optimal configuration of the plurality of instruments for viewing a medical procedure with the image capturing instrument (Anvari: par. [0021]).
Regarding claim 15, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the medical system of claim 10, wherein the event indicator includes a highlighted portion of at least one of the plurality of instruments (Koeneman: par. [0141]-[0148]; Fig. 9; coloring in red).
Regarding claim 16, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the medical system of claim 10, wherein the event indicator includes a bubble displayed over the portion of the image of the computer model associated with the event. Display devices such as the viewer taught by Salisbury are well-known for displaying multiple colors and text. In fact, such display devices are limited to displaying either text and/or shapes/images of varying colors. It follows that a warning given on such a display device can only be in the form of either text or a shape/image, the text or shape/image necessarily being at least one color (i.e. it would be impossible to view something that isn't a color). Therefore, at the time of the invention it would have been obvious to one having ordinary skill in the art to include showing text and/or color changes as the visual warning taught by Salisbury in view of Anvari in view of Koeneman, because that is the known function of such viewers as taught by Salisbury in view of Anvari in view of Koeneman.
Regarding claim 17, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the medical system of claim 10, wherein an image captured by the image capturing instrument is displayed on the display system concurrently with the image of the computer model (col. 14, ll. 16-30).
Regarding claim 18, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the medical system of claim 10, wherein the event alert threshold is based on a distance between a first instrument of the plurality of instruments and a second instrument of the plurality of instruments (Anvari: par. [0039]-[0040]).
Regarding claim 20, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the medical system of claim 10, further comprising determine from a configuration of the plurality of instruments in the computer model if an event occurrence threshold associated with the event has been reached (Anvari: par. [0039]-[0040]); and if a determination is made that the event occurrence threshold has been reached, cause the event indicator to change from a first state to a second state (Anvari: par. [0039]-[0040]; Koeneman: par. [0143] – change from green/yellow to red).
Regarding claim 21, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the medical system of claim 20, wherein the first state includes a first color (Koeneman: green/yellow; par. [0143]) and the second state includes a second color (Koeneman: red; par. [0143]), different from the first color.
Regarding claim 22, Salisbury discloses a method performed by a processor, the method comprising: generating a computer model of a plurality of instruments (col. 13, l. 65 – col. 14, l. 11; and col. 6, ll. 24-29), wherein the plurality of instruments includes an image capturing instrument (22; col. 6, ll. 24-29); causing an image of the computer model to be displayed on a display system (14; col. 5, l. 66 – col. 6, l. 3; col. 13, l. 65 – col. 14, l. 11).
However, Salisbury does not specifically disclose wherein the plurality of instruments extends through and out of a distal end of an entry guide. Khalili teaches an analogous medical system wherein a plurality of instruments (22/24; Fig. 1B; par. [0048] and [0051]) extends through and out of a distal end of an entry guide (4; Fig. 1B; par. [0048] and [0051]). Khalili teaches extending the plurality of instruments through a single entry guide, and not a plurality of entry guides, in order to reduce the number of incisions while deploying multiple surgical tools inside the human body, thus, minimizing surgical trauma to the patient and decreasing the complexity involved in operating the surgical instruments (par. [0006] and [0008]). It would have been obvious to one having ordinary skill in the art to extend the plurality of instruments of Salisbury through an entry guide, in order to reduce the number of incisions while deploying multiple surgical tools inside the human body, thus, minimizing surgical trauma to the patient and decreasing the complexity involved in operating the surgical instruments, as taught by Khalili.
Salisbury does not specifically disclose the processors configured to: determining from a configuration of the plurality of instruments in the computer model if an event alert threshold associated with an event has been reached; and if a determination is made that the event alert threshold has been reached, causing an event indicator to be displayed on the display system at a portion of the image of the computer model associated with the event. Anvari teaches an analogous medical system wherein processors (200; par. [0040]) are configured to determine from a configuration of the plurality of instruments in the computer model if an event alert threshold associated with an event has been reached (par. [0039]-[0040]); and if a determination is made that the event alert threshold has been reached, provide a visual indicator to the surgeon (par. [0039]-[0040]). Collision avoidance systems are well-known, Koeneman teaches a collision avoidance system wherein an object on a path of imminent collision with another object it colored red, and flashing, on a screen to alert the operator prior to collision, such that it can be avoided (par. [0141]-[0148]; Fig. 9). Similarly, objects that are not on a path for collision with another object are colored green (par. [0143]; Fig. 9). It would have been obvious to one having ordinary skill in the art to modify the system of Salisbury to provide an event indicator in the display, such as changing the color of colliding instrument(s), as taught by Koeneman, after determining that the configuration of instruments may cause a collision, as taught by Anvari and Koeneman, and the prevention of which is contemplated by Salisbury.
Regarding claim 23, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the method of claim 22, wherein the event is an impending instrument collision (Anvari: par. [0039]-[0040]).
Regarding claim 25, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the method of claim 22, wherein the event is an optimal configuration of the plurality of instruments for performing a medical procedure (Anvari: par. [0021]).
Regarding claim 26, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the method of claim 22, wherein the event is an optimal configuration of the plurality of instruments for viewing a medical procedure with the image capturing instrument (Anvari: par. [0021]).
Regarding claim 27, Salisbury in view of Khalili in view of Anvari disclose the method of claim 22, wherein the event indicator includes a highlighted portion of at least one of the plurality of instruments(Koeneman: par. [0141]-[0148]; Fig. 9; coloring in red).
Regarding claim 28, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the method of claim 22, wherein the event indicator includes a bubble displayed over the portion of the image of the computer model associated with the event. Display devices such as the viewer taught by Salisbury are well-known for displaying multiple colors and text. In fact, such display devices are limited to displaying either text and/or shapes/images of varying colors. It follows that a warning given on such a display device can only be in the form of either text or a shape/image, the text or shape/image necessarily being at least one color (i.e. it would be impossible to view something that isn't a color). Therefore, at the time of the invention it would have been obvious to one having ordinary skill in the art to include showing text and/or color changes as the visual warning taught by Salisbury in view of Anvari, because that is the known function of such viewers as taught by Salisbury in view of Anvari.
Regarding claim 29, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the medical system of claim 22, wherein an image captured by the image capturing instrument is displayed on the display system concurrently with the image of the computer model (col. 14, ll. 16-30).
Claims 12, 19 and 24 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Salisbury in view of Khalili in view of Anvari in view of Koeneman as applied to claims 10 and 22 above, and further in view of Larkin (US 2008/0065109).
Regarding claim 12, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the medical system of claim 10, but does not specifically disclose wherein the event is an impending limit of a range of motion of an instrument of the plurality of instruments. Larkin teaches an analogous system (Fig. 29E) wherein a surgeon defines the allowable range of motion (par. [0282]) for the purpose of establishing an allowable volume which can include areas outside the immediate field of view (par. [0282]). It would have been obvious to one having ordinary skill in the art to modify Salisbury to include defining an allowable range of motion, as taught by Larkin, in order to limit movement of the instruments in areas outside of the allowable range of motion thereby limiting negative effects to surrounding tissue or other devices.
Regarding claim 19, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the medical system of claim 10, but does not specifically disclose wherein the event alert threshold is based on a range of motion of a first instrument of the plurality of instruments. Larkin teaches an analogous system (Fig. 29E) wherein a surgeon defines the allowable range of motion (par. [0282]) for the purpose of establishing an allowable volume which can include areas outside the immediate field of view (par. [0282]). It would have been obvious to one having ordinary skill in the art to modify Salisbury to include defining an allowable range of motion, as taught by Larkin, in order to limit movement of the instruments in areas outside of the allowable range of motion thereby limiting negative effects to surrounding tissue or other devices.
Regarding claim 24, Salisbury in view of Khalili in view of Anvari in view of Koeneman disclose the method of claim 22, but does not specifically disclose wherein the event is an impending limit of a range of motion of an instrument of the plurality of instruments. Larkin teaches an analogous system (Fig. 29E) wherein a surgeon defines the allowable range of motion (par. [0282]) for the purpose of establishing an allowable volume which can include areas outside the immediate field of view (par. [0282]). It would have been obvious to one having ordinary skill in the art to modify Salisbury to include defining an allowable range of motion, as taught by Larkin, in order to limit movement of the instruments in areas outside of the allowable range of motion thereby limiting negative effects to surrounding tissue or other devices.
Response to Arguments
Applicant’s arguments, see Remarks, filed 01/26/2026, with respect to the rejection(s) of claim(s) 10 and 22 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Koeneman, as discussed above.
Conclusion
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/RYNAE E BOLER/Examiner, Art Unit 3795
/ANH TUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795 5/26/26
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