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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 26 November 2025 has been entered.
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 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 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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 1-6, & 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over previously presented Cartucho et al. (“An enhanced marker pattern that achieves improved accuracy in surgical tool tracking,” (10 Nov 2021), Computer Methods in Biomechanics and Biomedical Engineering: Imaging & Visualization, Vol. 10, 2022 - Issue 4; hereinafter "Cartucho") in view of Barreto (US PGPUB 20180071032) and in further view of previously presented Liu et al. (hereinafter "Liu").
With regards to Claim 1, a tool for use in endoscopic surgical procedures (laparoscope; see Cartucho FIG. 3), the tool comprising:
a shaft, wherein the shaft includes a first end, a second end, and a first axis (FIG. 3 of Cartucho clearly illustrates a shaft having a first end, second end, and first axis); and
a pointer at the first end of the shaft (in FIG. 3 of Cartucho, at the first of end of the laparoscope is illustrated the pointer which includes a distal tip, marker and keydot fiducials), wherein the pointer comprises:
a tip (in FIG. 3 of Cartucho, at the first of end of the laparoscope is illustrated the pointer which includes a distal tip), and
a plurality of fiducial markers disposed proximally of the tip, wherein at least one of the fiducial markers is disposed on a surface that relative to the first axis (in FIG. 3 of Cartucho, at the first of end of the laparoscope is illustrated the pointer which includes marker fiducials which are oriented relative to the axis of the shaft), (FIG. 4 of Cartucho illustrates endoscopic video from the laparoscope in which pose is extracted from the marker; see also pg. 403 in which eq. 1 establishes the transformational relationship between the laparoscope to the marker and keydot fiducials).
While in FIG. 3 Cartucho illustrates a laparoscope with a gripper at the distal end, wherein the gripper is oriented angularly offset from an axis of the shaft, one of ordinary skill in the art would not recognize the gripper portion as part of the shaft and, thus, cannot define first axis. Accordingly, Cartucho may be silent to at least one of the fiducial markers is disposed on a surface is coincident with a plane that intersects the first axis and said surface is not parallel to the first axis. However, Liu teaches of laparoscope ultrasound transducer with ArUco trackers affixed to a distal tip (see Liu Abstract). In particular, Liu teaches in FIGS. 3, 5-6, & 9 wherein the laparoscope in which the tip is bent and at least one of the markers is disposed on said bent tip such that its surface is non-parallel to the main shaft of the laparoscope.
Cartucho and Liu are both considered to be analogous to the claimed invention because they are in the same field of optically tracked laparoscopes. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cartucho to incorporate the above teachings of Liu to provide at least the struck-through limitations above. Doing so would prevent the main shaft of the surgical tool from visually occluding the target by providing a curved tip.
Claims 21-22 recite similar limitations and are rejected under the same rationale as Claim 1.
With regards to Claim 2, wherein the plurality of fiducial markers are ArUco markers (see Liu Abstract).
With regards to Claim 3, modified Cartucho teaches of discloses wherein the pointer comprises a first portion that is axially aligned with the first axis of the shaft (FIG. 4 of Cartucho clearly illustrates that their binary marker is axially aligned with the shaft, i.e. first portion with first axis); and
a second portion aligned with a second axis that is oriented angularly with respect to the first axis of the shaft (FIG. 4 of Cartucho clearly illustrates that keydot marker is axially offset from the shaft by a 3D printed adapter {i.e. second portion with second axis}, it should be appreciated that the 3D printed adapter for the keydot marker establishes a second axis which is, under a broadest reasonable interpretation, angularly oriented to the first axis because ¶ [0091] of the instant specification does not explicitly define “angularly oriented” as precluding having the same angle).
With regards to Claim 41, modified Cartucho teaches of wherein each fiducial marker comprises a unique identifier that can be used to obtain a distance between one or more features of the fiducial marker and the tip (statically calibrating the of the marker and keydot to ground truth the relative pose, i.e. obtain a distance between one or more features of the fiducial marker; see Cartucho pg. 403, ¶ 5; Cartucho also teaches of their novel binary marker for determining the centroid of the marker based on the binary pattern and a RANSAC algorithm which is illustrated in FIG. 2; see Cartucho pg. 402, ¶ 7).
With regards to Claim 51, modified Cartucho teaches of wherein the pointer comprises a first set of fiducial markers spaced apart from a second set of fiducial markers (FIG. 4 shows Cartucho’s binary marker {i.e. first set} and keydot marker {i.e. second set} which are clearly illustrated as spaced apart).
With regards to Claim 65, modified Cartucho teaches of wherein the first set of fiducial markers is axially aligned with the first axis of the shaft (FIG. 4 of Cartucho clearly illustrates that their binary marker is axially aligned with the shaft, i.e. first portion with first axis), and wherein the second set of fiducial markers is aligned with a second axis that is oriented angularly with respect to the first axis of the shaft (FIG. 4 of Cartucho clearly illustrates that keydot marker is axially offset from the shaft by a 3D printed adapter {i.e. axially aligned with the second axis}, it should be appreciated that the 3D printed adapter for the keydot marker establishes the second axis which is angularly oriented to the first axis because ¶ [0091] of the instant specification does not explicitly define “angularly oriented” as precluding having the same angle).
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Cartucho in view of Liu, as applied to Claim 1 above, and in further view of Moctezuma De La Barrera (US PGPUB 20180333207; hereinafter "Moctezuma").
With regards to Claim 71, while modified Cartucho teaches of all of the limitations of intervening claim 1 as shown above, it appears that Cartucho may be silent to wherein the tool comprises a controller disposed at the second end of the shaft, and wherein the controller is configured to receive one or more inputs from a user of the tool.
However, Moctezuma teaches of surgical navigation system that tracks the states of a digitization device {e.g. pointer} intraoperatively facilitates establishment of one or more local virtual references relative to a target site (see Moctezuma Abstract). In particular, Moctezuma teaches of wherein the tool comprises a controller disposed at the second end of the shaft, and wherein the controller is configured to receive one or more inputs from a user of the tool (the straight pointer includes a pointer controller 118 which communicates with pointer control inputs 116 to establish local virtual reference points; see Moctezuma ¶ [0095-0096]).
Moctezuma also teaches of: wherein the control input 116 is able to interface with a GUI 172 of the CAD program 102 (see Moctezuma ¶ [0250]).
Modified Cartucho and Moctezuma are both considered to be analogous to the claimed invention because they are in the same field of optical tracking of surgical instruments. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have further modified Cartucho to incorporate the above teachings of Moctezuma to provide at least a controller disposed at the second end of the shaft, and wherein the controller is configured to receive one or more inputs from a user of the tool. Doing so would aid in establishing a coordinate point associated with the pointer tip (see Moctezuma ¶ [0128]).
It should be appreciated that the same logic pattern and rationale are applied to Claim 8 as applied to Claim 7 because the input 116 is taught for establishing local virtual reference points.
With regards to Claim 97, modified Cartucho teaches of wherein the one or more buttons are configured to allow the user to navigate a graphical user interface displayed on an external display (wherein the control input 116 is able to interface with a GUI 172 of the CAD program 102; see Moctezuma ¶ [0250]).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Cartucho in view of Liu & Moctezuma, as applied to claim 7 above, and further in view of Birkenbach et al. (US PGPUB 20100076455; hereinafter "Birkenbach").
With regards to Claim 107, while modified Cartucho discloses all of the limitations of intervening claim 1 as shown above, it appears that modified Cartucho may be silent to wherein the controller is configured to provide a message through a cable to an external computing system identifying the tool to the external computing system. However, Birkenbach teaches of a surgical pointer for use with a medical navigation system during image-guided surgery. In particular, Birkenbach teaches of wherein the controller is configured to provide a message through a cable to an external computing system identifying the tool to the external computing system (a tip identifying technique in which a code is read by the reader {i.e. controller} in the handle of the pointer, the code is remotely identified by the navigation/tracking system via geometric tip data stored in the navigation system; see Birkenbach ¶ [0018 & 0020]).
Modified Cartucho and Birkenbach are both considered to be analogous to the claimed invention because they are in the same field of marker based tool tracking (see Birkenbach ¶ [0016]). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have further modified Cartucho to incorporate the above teachings of Birkenbach to provide at least the controller is configured to provide a message through a cable to an external computing system identifying the tool to the external computing system. Doing so would aid in automatically detecting tip geometry (see Birkenbach ¶ [0017]).
With regards to Claim 117, modified Cartucho teaches of wherein the tool comprises memory storing information to identify the tool to the external controller (geometric tip data stored in the navigation system; see Birkenbach ¶ [0020]).
Response to Arguments
Applicant' s arguments with respect to the rejection under 35 U.S.C. 102(a)(1) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
As Applicant restated, it was agreed during the unrecognized & uncredited interview of 27 October 2025 that Cartucho in view of Barreto cannot teach of the proposed claim limitations as submitted as amendments to the claims.. However, after reviewing previous cited prior art of Liu, it is discovered that Liu teaches of said proposed limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Torrie et al. (US PGPUB 20250186162).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHISH S. JASANI whose telephone number is (571) 272-6402. The examiner can normally be reached M-F 9:00 am - 5:00 pm (CST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Raymond can be reached on (571) 270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHISH S. JASANI/Examiner, Art Unit 3798
/KEITH M RAYMOND/Supervisory Patent Examiner, Art Unit 3798