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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/1/2026 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 17/810102 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The features of instant claims 25, 28 - 29, and 40 are not disclosed in the prior-filed application. Accordingly, claims 25, 28 - 29, and 40 are not entitled to the benefit of the prior application.
Claims 25, 28 - 29, and 40 are instead afforded an effective filing date of 6/30/2022, which is the filing date of application 17/819,101. Claims 20 - 24, 26 - 27, and 30 - 39 are afforded an effective filing date of 7/1/21, which is the filing date of applicant’s provisional application, US 63/202,963.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21 - 24 and 26 - 39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 20 of US 11,690,683.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed towards systems and methods involving: displaying a two-dimensional fluoroscopic medical image that depicts a medical instrument; determining a roll estimate of the distal portion of the medical instrument; receiving a user input from a user input device configured to allow a user to provide control commands for control of the medical instrument relative to a plane of the medical image, the user input comprising at least one of: a heading command to change a heading of the medical instrument within the plane of the medical image, wherein the heading command comprises a command to cause articulation of the distal end of the medical instrument either in a clockwise or counterclockwise direction within the plane of the medical image, or an incline command to change an incline of the medical instrument into or out of the plane of the medical image, wherein the incline command comprises a command to cause articulation of the distal end of the medical instrument to articulate either into or out of the plane of the medical image; generating one or more motor commands configured to cause a robotic system coupled to the medical instrument to move the medical instrument according to the user input, wherein the one or more motor commands are generated based on (i) the roll estimate and (ii) the user input provided relative to the plane of the medical instrument; and causing the robotic system to move the medical instrument based on the one or more motor commands.
In particular:
All of the features of instant claims 21 and 36 are suggested by reference claim 10.
Instant claims 22 and 37 are not patentably distinct from the reference claims because it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified the invention of the reference claims to have the motor commands comprise pull wire commands configured to actuate one or more pull wires of the medical instrument, in order to use conventional robotic hardware mechanisms to control the medical instrument.
All of the features of instant claims 23 and 38 are suggested by reference claim 10.
All of the features of instant claims 24 and 39 are suggested by reference claim 2 and/or 14.
Instant claims 26 - 29 are not patentably distinct from the reference claims because it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified the invention of the reference claims to have the commands to change the heading and incline respectively comprise indications of a desired heading and incline, in order to facilitate allowing the user to control the medical instrument in a convenient manner by essentially pointing at where the user wants the instrument to go. Such graphical user interface elements are conventional in the art.
All of the features of instant claims 30 are suggested by reference claim 1.
All of the features of instant claims 31 are suggested by reference claim 11.
All of the features of instant claims 32 are suggested by reference claim 6.
All of the features of instant claims 34 are suggested by reference claim 11.
All of the features of instant claims 35 are suggested by reference claim 1.
Claims 21 - 40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 20 of US 11,707,332.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed towards systems and methods involving: displaying a two-dimensional fluoroscopic medical image that depicts a medical instrument; determining a roll estimate of the distal portion of the medical instrument; receiving a user input from a user input device configured to allow a user to provide control commands for control of the medical instrument relative to a plane of the medical image, the user input comprising at least one of: a heading command to change a heading of the medical instrument within the plane of the medical image, wherein the heading command comprises a command to cause articulation of the distal end of the medical instrument either in a clockwise or counterclockwise direction within the plane of the medical image, or an incline command to change an incline of the medical instrument into or out of the plane of the medical image, wherein the incline command comprises a command to cause articulation of the distal end of the medical instrument to articulate either into or out of the plane of the medical image; generating one or more motor commands configured to cause a robotic system coupled to the medical instrument to move the medical instrument according to the user input, wherein the one or more motor commands are generated based on (i) the roll estimate and (ii) the user input provided relative to the plane of the medical instrument; and causing the robotic system to move the medical instrument based on the one or more motor commands. In particular:
All of the features of instant claims 21 and 36 are suggested by reference claim 1 and/or 17.
All of the features of instant claims 22 and 37 are suggested by reference claim 2 and/or 18.
All of the features of instant claims 23 and 38 are suggested by reference claim 3 and/or 19.
All of the features of instant claims 24 and 39 are suggested by reference claim 4 and/or 10.
All of the features of instant claims 25 and 40 are suggested by reference claim 5 and/or 21.
All of the features of instant claims 26 - 34 are suggested by reference claims 7 - 15, respectively.
All of the features of instant claims 35 are suggested by reference claim 6.
3. Claims 21 - 40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 20 of US 12,121,307.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed towards systems and methods involving: displaying a two-dimensional fluoroscopic medical image that depicts a medical instrument (reference claim 10); determining a roll estimate of the distal portion of the medical instrument (reference claim 1, 11); receiving a user input from a user input device configured to allow a user to provide control commands for control of the medical instrument relative to a plane of the medical image (reference claim 8), the user input comprising at least one of: a heading command to change a heading of the medical instrument within the plane of the medical image, wherein the heading command comprises a command to cause articulation of the distal end of the medical instrument either in a clockwise or counterclockwise direction within the plane of the medical image or an incline command to change an incline of the medical instrument into or out of the plane of the medical image, wherein the incline command comprises a command to cause articulation of the distal end of the medical instrument to articulate either into or out of the plane of the medical image (reference claim 1, 11); generating one or more motor commands configured to cause a robotic system coupled to the medical instrument to move the medical instrument according to the user input, wherein the one or more motor commands are generated based on (i) the roll estimate (reference claim 1, 11) and (ii) the user input provided relative to the plane of the medical instrument (reference claim 8); and causing the robotic system to move the medical instrument based on the one or more motor commands (reference claim 1, 11). The various features of the instant dependent claims are likewise suggested by the reference claims.
4. Claims 21 - 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 20 of US application 12,303,656.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed towards systems and methods involving: displaying a two-dimensional fluoroscopic medical image that depicts a medical instrument (reference claim 1); determining a roll estimate of the distal portion of the medical instrument (reference claim 1); receiving a user input from a user input device configured to allow a user to provide control commands for control of the medical instrument relative to a plane of the medical image, the user input comprising at least one of: a heading command to change a heading of the medical instrument within the plane of the medical image, wherein the heading command comprises a command to cause articulation of the distal end of the medical instrument either in a clockwise or counterclockwise direction within the plane of the medical image, or an incline command to change an incline of the medical instrument into or out of the plane of the medical image, wherein the incline command comprises a command to cause articulation of the distal end of the medical instrument to articulate either into or out of the plane of the medical image (reference claim 1); generating one or more motor commands configured to move the medical instrument according to the user input, wherein the one or more motor commands are generated based on (i) the roll estimate and (ii) the user input provided relative to the plane of the medical instrument; and moving the medical instrument based on the one or more motor commands (reference claim 1). The various features of the instant dependent claims are likewise suggested by the reference claims.
The instant and reference claims differ in that the reference claims are directed to the actuation of the medical instrument involving actuation of a manually-controllable steerable catheter, whereas the instant claims require that the actuation of the medical instrument is via a robotic system. However, this distinction does not patentably distinguish the claim sets because it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified the invention of the reference claims to have the actuation of the medical instrument be via a robotic system that actuates the manually-controllable steerable catheter, in order to allow the user to robotically control the instrument where such robotic control would be of benefit to the patient and/or surgeon, for example, during active treatment procedures.
5. Claims 21 - 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 20 of US 12,296,117. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed towards systems and methods involving: displaying a two-dimensional fluoroscopic medical image that depicts a medical instrument (reference claim 2); determining a roll estimate of the distal portion of the medical instrument (reference claim 2); receiving a user input from a user input device configured to allow a user to provide control commands for control of the medical instrument relative to a plane of the medical image, the user input comprising at least one of: a heading command to change a heading of the medical instrument within the plane of the medical image, wherein the heading command comprises a command to cause articulation of the distal end of the medical instrument either in a clockwise or counterclockwise direction within the plane of the medical image, or an incline command to change an incline of the medical instrument into or out of the plane of the medical image, wherein the incline command comprises a command to cause articulation of the distal end of the medical instrument to articulate either into or out of the plane of the medical image (reference claim 1); generating one or more motor commands configured to move the medical instrument according to the user input, wherein the one or more motor commands are generated based on (i) the roll estimate and (ii) the user input provided relative to the plane of the medical instrument; and moving the medical instrument based on the one or more motor commands (reference claim 1). The various features of the instant dependent claims are likewise suggested by the reference claims.
The instant and reference claims differ in that the reference claims are directed to the actuation of the medical instrument involving actuation of a manually-controllable steerable catheter, whereas the instant claims require that the actuation of the medical instrument is via a robotic system. However, this distinction does not patentably distinguish the claim sets because it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified the invention of the reference claims to have the actuation of the medical instrument be via a robotic system that actuates the manually-controllable steerable catheter, in order to allow the user to robotically control the instrument where such robotic control would be of benefit to the patient and/or surgeon, for example, during active treatment procedures.
Response to Arguments
Applicant's arguments filed 4/1/2026 have been fully considered.
Claim Rejections under 35 U.S.C. § 103
In response to applicant's arguments, it is noted that the art rejections have been withdrawn in view of amendments.
Double Patenting Rejections
Applicant’s comments are acknowledged. The rejections are deemed proper for the reasons detailed above, and are therefore maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMELIE R DAVIS whose telephone number is (571)270-7240. The examiner can normally be reached Monday-Friday, 9:30 - 6:00 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pascal Bui-Pho can be reached at (571)272-2714. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMELIE R DAVIS/Primary Examiner, Art Unit 3798
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