ACKNOWLEDGEMENTS
This Office Action addresses U.S. Application No. 18/405876 (“’876 Application” or “instant application”). Based upon a review of the instant application, the actual filing date of the instant application is January 5, 2024. For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
The instant application is a reissue application of US Patent 11,266,345 (’345 Patent”). The ‘345 Patent was filed as US application 17/260664 (‘664 application), which is a national stage entry of PCT/CA2019/050981, filed July 16, 2019 entitled “APPARATUS FOR VISUALIZATION OF TISSUE.”
Based upon Applicant’s statements as set forth in the instant application and after the
Examiner’s independent review of the ‘345 Patent itself and its prosecution history, the Examiner finds that he cannot locate any ongoing proceeding before the Office or current ongoing litigation involving the ‘345 Patent. Also based upon the Examiner’s independent review of the ‘345 Patent itself and the prosecution history, the Examiner cannot locate any previous reexaminations or supplemental examinations.
This action is being issued following Applicant’s response of 5/11/2026, which included 1) claim amendments and 2) arguments.
II. STATUS OF CLAIMS
The ‘345 Patent issued with claims 1-20 (“Patented Claims”). The Preliminary Amendment filed with this application cancels claims 1-20 and adds claims 21-67. The amendment of 5/11/2026, amends claims 34-65 and cancels claims 66 and 67. Therefore, as of the date of this office action, the status of the claims is:
a. Claims 21-65 (“Pending Claims”).
b. Claims 21-65 are examined (“Examined Claims”)
III. AMENDMENT OF 5/11/2026
The amendment to the claims of 5/11/2026 has been entered and considered.
IV. PRIORITY AND CONTINUING DATA
The ‘345 patent is a national stage entry of PCT/CA2019/050981, filed July 16, 2019. The ‘345 patent further claims the benefit of US Provisional Applications 62/698799, filed July 16, 2018. Because the effective filing date is after March 16, 2013, the AIA sections of 35 USC 102, 103, and 112 apply to this proceeding.
In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the prior applications. Also, in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record in the prior applications are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the prior applications need not be resubmitted in this application unless Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicant(s) are reminded that the prosecution histories of the prior applications are relevant in this application.
V. REISSUE DECLARATION
The reissue declaration filed 1/5/2024 is approved.
VI. REJECTIONS UNDER 35 USC 251
Claims 21-6 are rejected under 35 U.S.C. 251 as being improperly broadened. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
With respect to claim 21, the patent claim 8 recited that the tissue imaging system both pre-processed and processed the measurement data to generate tissue health indicators. However, new claim 21 states that the tissue imaging system pre-processes the measurement data to generate pre-processed measurement data and tissue health indicators. Since the tissue imaging system no longer both pre-process and processes the measurement data to generate tissue health indicators, current claim 21 is broader than patent claim 8. As noted in MPEP 1449.01(I)(A.)(B)(3), that when a PTAB trial certificate issues after the filing of a reissue application, broadening is prohibited. As such, since claim 21 has been broadened, claims 21-41 are rejected under 35 USC 251 as being improperly broadened1.
The Examiner notes that in response to this rejection, Applicant should provide a mapping of the current claims to the patented claims, showing that all of the patent claim features have been included in the current claims.
VII. ALLOWABLE SUBJECT MATTER
Claims 21-40 would be allowable if rejection under 35 USC 251 were overcome.
Claims 41-65 are allowable.
Claims 21-60 define over the art of record in that none of the art causes the image capture unit and illumination unit to capture measurement data … based on at least in part a recognized size of a reference object, as claimed. The protest alleges that Garcia teaches this limitation However, Garcia does not automatically capture image data based on the “recognized” size of the reference object. Rather, the object of Garcia has a known size, but the size is not used to trigger a measurement. Recognizing the size must include some means to sense the size. The size in Garcia is known.
Claims 61-65 define over the art of record in that while, all of the features are individually known, at least 5 references would be needed to make the rejection and, in the Examiner’s opinion, there is insufficient motivation to combine all the references.
VIII. ANSWER TO ARGUMENTS
As to the 251 rejection, the Examiner notes that the system claim is still broader than claim 8, as claim 8 requires that the tissue imaging both pre-processes and processes the data, while claim 21 only recites that the tissue imaging system pre-processes the data.
IX. CONCLUSION
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT L NASSER whose telephone number is (571)272-4731. The examiner can normally be reached M-F 8-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached at (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT L NASSER/ Primary Examiner, Art Unit 3992
Conferees:
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
1 The Examiner further notes that there has not been any unequivocable intent to broaden shown within 2 years of the issue date of the ‘345 patent.
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