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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 17, 2026 has been entered.
Disposition of Claims
Claims 1-18 are pending and rejected.
Response to Arguments
Applicant’s arguments, see Page 7, filed February 13, 2026, with respect to the rejections under 35 U.S.C. § 112(b) of Claims 1-7 & 18 have been fully considered and are persuasive in light of amendments to the claims.
The rejections under 35 U.S.C. § 112(b) of Claims 1-7 & 18 have been withdrawn.
Applicant’s arguments, see Pages 7-9, filed February 13, 2026, with respect to the rejections under 35 U.S.C. §§ 102 & 103 of Claims 1-18 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.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 6-9, 13-16 & 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ueda (US 2020/0068142).
Regarding Claim 1, Ueda discloses a surgery assistance device (Fig. 1, 1000; [0042]) comprising:
an arm (Fig. 1, 104; [0059]) including a holder (Figs. 1 & 7, 110a; [0073]) for holding an endoscope (Figs. 1 & 7, 106; [0059]) and configured to adjust a position of the endoscope in a state in which the holder holds the endoscope ([0073]);
a control device (Fig. 4, 154; [0129]) comprising at least one processor ([0132]) configured to perform display control of an endoscope captured image that is obtained by the endoscope held by the holder and display the endoscope captured image on a display (Figs. 4, 8 & 9, 158 of 154 displays R3 in orientation B on 200B; [0136] & [0207]); and
a controller (Fig. 7, a controller comprising SW1, SW2 and SW3; [0192]) that rotates the endoscope captured image ([0207]),
wherein the endoscope captured image is rotated on the display according to operation of the controller without causing a positional displacement of the endoscope (Figs. 7-9, actuation of SW2 and SW3 of the controller rotates R3 to and from orientation B and orientation C on 200B without rotating 106; [0207]).
Regarding Claim 2, Ueda discloses the surgery assistance device according to Claim 1. Ueda further discloses wherein, when an imaging direction of the endoscope held by the holder is shifted, the endoscope captured image is displayed while maintaining an immediately preceding rotational state (Fig. 9, the orientation of R3 on 200B is independent of the rotation of 106; [0207]).
Regarding Claim 6, Ueda discloses the surgery assistance device according to Claim 2. Ueda further discloses wherein the controller is a foot pedal (Figs. 2 & 7, SW3 is FS; [0187] & [0193]).
Regarding Claim 7, Ueda discloses the surgery assistance device according to Claim 1. Ueda further discloses wherein the controller is a foot pedal (Figs. 2 & 7, SW3 is FS; [0187] & [0193]).
Regarding Claim 8, Ueda discloses a surgery assistance device (Fig. 1, 1000; [0042]) comprising:
an arm (Fig. 1, 104; [0059]) configured to hold an endoscope (Figs. 1 & 7, 106; [0059]) and to adjust a position of the endoscope ([0073]);
a control device (Fig. 4, 154; [0129]) comprising at least one processor ([0132]) configured to control a display (Fig. 9, 200B; [0175]) to display an image captured by the endoscope (Figs. 8-9, R3 in orientation B; [0207]); and
a controller (Fig. 7, a controller comprising SW1, SW2 and SW3; [0192]) configured to rotate the image without causing a positional displacement of the endoscope (Figs. 7-9, actuation of SW2 and SW3 of the controller rotates R3 to and from orientation B and orientation C on 200B without rotating 106; [0207]),
wherein at least one of the at least one processor is configured to control the display to display the image as rotated on the display (Figs. 8-9, R3 in orientation C; [0207]).
Regarding Claim 9, Ueda discloses the surgery assistance device according to Claim 8. Ueda further discloses wherein, when an imaging direction of the endoscope is changed, the image is displayed while maintaining an immediately preceding rotational state of the image (Fig. 9, the orientation of R3 on 200B is independent of the rotation of 106; [0207]).
Regarding Claim 13, Ueda discloses the surgery assistance device according to Claim 9. Ueda further discloses wherein the controller is a foot pedal (Figs. 2 & 7, SW3 is FS; [0187] & [0193]).
Regarding Claim 14, Ueda discloses the surgery assistance device according to Claim 8. Ueda further discloses wherein the controller is a foot pedal (Figs. 2 & 7, SW3 is FS; [0187] & [0193]).
Regarding Claim 15, Ueda discloses a surgery assistance device (Fig. 1, 1000; [0042]) comprising:
an arm (Fig. 1, 104; [0059]) configured to hold an endoscope (Figs. 1 & 7, 106; [0059]);
a monitor (Fig. 9, 200B; [0175]);
a controller (Fig. 7, a controller comprising SW1, SW2 and SW3; [0192]); and
one or more processors (Fig. 4, 154; [0129] & [0132]) communicatively connected to the arm, the monitor, the controller, and the endoscope ([0147]), the one or more processors being configured to control the monitor to display an image captured by the endoscope (Figs. 8-9, R3 in orientation B; [0207]) and, based on a signal from the controller, to rotate the image and control the monitor to display the image as rotated without causing a positional displacement of the endoscope (Figs. 7-9, actuation of SW2 and SW3 of the controller rotates R3 to and from orientation B and orientation C on 200B without rotating 106; [0207]).
Regarding Claim 16, Ueda discloses the surgery assistance device according to Claim 15. Ueda further discloses wherein, when a position of the endoscope is shifted, a rotational state of the image does not change (Fig. 9, the orientation of R3 on 200B is independent of the rotation of 106; [0207]).
Regarding Claim 18, Ueda discloses the surgery assistance device according to Claim 15. Ueda further discloses wherein the controller is a foot pedal or a remote controller (Figs. 2 & 7, SW3 is FS; [0187] & [0193]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3-5, 10-12 & 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda (US 2020/0068142) in view of Enoki (US 2019/0038364).
Regarding Claims 3-4, Ueda discloses the surgery assistance device according to Claims 1 & 2.
Regarding wherein “the endoscope captured image is a captured image of an inside of an eyeball of a subject”, the endoscope 106 of Ueda is capable of capturing an image of an inside of an eyeball of a subject as, given the transparency of the eyeball, images of the interior of the eyeball can be taken non-invasively.
Ueda fails to explicitly disclose wherein the endoscope is configured to be inserted into an eyeball of a subject; and at least one of the at least one processor displays the endoscope captured image and an ocular map image indicating the position of the endoscope on a three-dimensional ocular model within a same screen.
However, Enoki teaches an ophthalmic surgery assistance device (Fig. 2, 100; [0053]) comprising:
an observational endoscope (Fig. 3, 112; [0053]) configured to image an eyeball (Fig. 3, 151; [0055]) of a subject (Fig. 2, 131; [0055]) non-invasively ([0055]);
an intraocular endoscope (Fig. 3, 121; [0054]) configured to be inserted into the eyeball of the subject ([0061]);
a control device (Fig. 2, 113; [0056]) configured to perform display control of an endoscope captured image (Fig. 14, 611; [0132]) that is obtained by the intraocular endoscope ([0132]); and
wherein the control device displays the endoscope captured image (Fig. 14, 611; [0132]) and an ocular map image indicating the position of the endoscope on a three-dimensional ocular model (Fig. 14, 901; [0143]) within a same screen (see Fig. 14).
The advantage of the additional intraocular endoscope and additional three-dimensional ocular model is to photograph internal structures in the eye not photographable by the observation endoscope and aid the operator in determining the position and orientation of the intraocular endoscope, respectively (Enoki; [0097] & [0143]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the surgery assistance device as disclosed by Ueda, to include the additional intraocular endoscope and additional three-dimensional ocular model as taught by Enoki, to photograph internal structures in the eye not photographable by the observation endoscope and aid the operator in determining the position and orientation of the intraocular endoscope, respectively (Enoki; [0097] & [0143]).
Regarding Claim 5, Ueda, as previously modified by Enoki, teaches the surgery assistance device according to Claim 3. Ueda further discloses wherein the controller is a foot pedal (Figs. 2 & 7, SW3 is FS; [0187] & [0193]).
Regarding Claims 10-11, Ueda discloses the surgery assistance device according to Claims 8-9.
Regarding “wherein the image is of an inside of an eyeball of a subject”, the endoscope 106 of Ueda is capable of capturing an image of an inside of an eyeball of a subject as, given the transparency of the eyeball, images of the interior of the eyeball can be taken non-invasively.
Ueda fails to explicitly disclose wherein the endoscope is inserted into the eyeball; and wherein at least one of the at least one processor controls the display to display on a same screen of the display, the image and an ocular map image indicating the position of the endoscope on a three-dimensional ocular model.
However, Enoki teaches an ophthalmic surgery assistance device (Fig. 2, 100; [0053]) comprising:
an observational endoscope (Fig. 3, 112; [0053]) configured to image an eyeball (Fig. 3, 151; [0055]) of a subject (Fig. 2, 131; [0055]) non-invasively ([0055]);
an intraocular endoscope (Fig. 3, 121; [0054]) configured to be inserted into the eyeball of the subject ([0061]);
a control device (Fig. 2, 113; [0056]) configured to perform display control of an endoscope captured image (Fig. 14, 611; [0132]) that is obtained by the intraocular endoscope ([0132]); and
wherein the control device displays the endoscope captured image (Fig. 14, 611; [0132]) and an ocular map image indicating the position of the endoscope on a three-dimensional ocular model (Fig. 14, 901; [0143]) within a same screen (see Fig. 14).
The advantage of the additional intraocular endoscope and additional three-dimensional ocular model is to photograph internal structures in the eye not photographable by the observation endoscope and aid the operator in determining the position and orientation of the intraocular endoscope, respectively (Enoki; [0097] & [0143]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the surgery assistance device as disclosed by Ueda, to include the additional intraocular endoscope and additional three-dimensional ocular model as taught by Enoki, to photograph internal structures in the eye not photographable by the observation endoscope and aid the operator in determining the position and orientation of the intraocular endoscope, respectively (Enoki; [0097] & [0143]).
Regarding Claim 12, Ueda, as previously modified by Enoki, teaches the surgery assistance device according to Claim 10. Ueda further discloses wherein the controller is a foot pedal (Figs. 2 & 7, SW3 is FS; [0187] & [0193]).
Regarding Claim 17, Ueda discloses the surgery assistance device according to Claim 15.
Regarding “wherein the image is of an inside of an eyeball”, the endoscope 106 of Ueda is capable of capturing an image of an inside of an eyeball as, given the transparency of the eyeball, images of the interior of the eyeball can be taken non-invasively.
Ueda fails to explicitly disclose wherein the one or more processors displays on the monitor the image and an ocular map image indicating a position of the endoscope on a three-dimensional ocular model.
However, Enoki teaches an ophthalmic surgery assistance device (Fig. 2, 100; [0053]) comprising:
an endoscope (Fig. 3, 121; [0054]) configured to image an eyeball (Fig. 3, 151; [0055]);
a control device (Fig. 2, 113; [0056]) configured to perform display control of the image (Fig. 14, 611; [0132]); and
wherein the control device displays the image (Fig. 14, 611; [0132]) and an ocular map image indicating the position of the endoscope on a three-dimensional ocular model (Fig. 14, 901; [0143]) within a same screen (see Fig. 14).
The advantage of the additional three-dimensional ocular model is to aid the operator in determining the position and orientation of the endoscope (Enoki; [0143]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the monitor as disclosed by Ueda, to include the additional three-dimensional ocular model as taught by Enoki, to aid the operator in determining the position and orientation of the endoscope (Enoki; [0143]).
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-19 of copending Application No. 18/306,424 in view of Ueda (US 2020/0068142).
The claims of ‘424 disclose all the limitations of the instant claims except for wherein the endoscope captured image is rotated on the display; wherein the endoscope captured image is a captured image of an inside of an eyeball of a subject from the endoscope inserted in the eyeball; and wherein, when an imaging direction of the endoscope held by the holder is shifted, the endoscope captured image is displayed while maintaining an immediately preceding rotational state.
Regarding “wherein the endoscope captured image is a captured image of an inside of an eyeball of a subject from the endoscope inserted in the eyeball”, the endoscope of ‘424 is capable of being inserted in an eyeball and capturing an image of an inside of the eyeball of a subject.
Regarding Claims 1-18, Ueda discloses a surgery assistance device (Fig. 1, 1000; [0042]) comprising:
an arm (Fig. 1, 104; [0059]) including a holder (Figs. 1 & 7, 110a; [0073]) for holding an endoscope (Figs. 1 & 7, 106; [0059]) and configured to adjust a position of the endoscope in a state in which the holder holds the endoscope ([0073]);
a control device (Fig. 4, 154; [0129]) comprising at least one processor ([0132]) configured to perform display control of an endoscope captured image that is obtained by the endoscope held by the holder and display the endoscope captured image on a display (Figs. 4, 8 & 9, 158 of 154 displays R3 in orientation B on 200B; [0136] & [0207]);
a controller (Fig. 7, a controller comprising SW1, SW2 and SW3; [0192]) that rotates the endoscope captured image ([0207]),
wherein the endoscope captured image is rotated on the display according to operation of the operating device without causing a positional displacement of the endoscope (Figs. 7-9, actuation of SW2 and SW3 of the controller rotates R3 to and from orientation B and orientation C on 200B without rotating 106; [0207]); and
when an imaging direction of the endoscope held by the holder is shifted, the endoscope captured image is displayed while maintaining an immediately preceding rotational state (Fig. 9, the orientation of R3 on 200B is independent of the rotation of 106; [0207]).
The advantage of the orientation of the display being independent of the movement/orientation of the endoscope is to permit a second operator, positioned non-parallel with the endoscope, to assist in the operation without burden (Ueda; [0167]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the surgery assisting device as disclosed by '424, so that the orientation of the display is independent of the movement/orientation of the endoscope, as taught by Ueda, to permit a second operator positioned non-parallel with the endoscope to assist in the operation without burden (Ueda; [0167]).
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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