DETAILED ACTION
Notice of Pre-AIA or AIA Status
This is in response to the applicant’s reply filed January 20, 2026. In applicant’s reply previously filed on September 26, 2025, claims 1, 10-11, 14, and 19-21 have been canceled, and claims 2, 4, 6, 9, 13, and 16-18 are currently amended. Claims 2-9, 12-13, and 15-18 are pending in this application.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Examiner’s Responses to Applicant’s Remark
Applicants' amendments filed on January 20, 2026 have been fully considered. The amendments overcome the following rejections set forth in the office action mailed on October 20, 2025.
Applicant’s amendments overcome the rejections of Claims 2-9, 12-13, and 15-18 under 35 U.S.C. 103 as being unpatentable over Duindam et al. (US PGPub US 2013/0096377 A1, filed October 14, 2011), hereby referred to as “Duindam”, in view of Cohen et al. (US PGPub US 2010/0290693 A1, filed May 17, 2010), hereby referred to as “Cohen”, and the rejection is hereby withdrawn.
Applicant’s arguments, see “Remarks”, filed January 20, 2026 with respect to the rejection of record and the prior art have been fully considered and are persuasive. The prior art rejections of Claims 2-9, 12-13, and 15-18 under 35 U.S.C. 103 as being unpatentable over Duindam in view of Cohen, have been withdrawn.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 2-9, 12-13, and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,603,668. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards methods and systems for 3D modeling and lung navigation. The patented claims are narrower in scope and anticipate the broader claims of the instant invention.
Claims 2-9, 12-13, and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 9,974,525. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards intraluminal navigation, with the patented claims being narrower in scope and thereby anticipates the broader claims of the instant invention.
Claims 2-9, 12-13, and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 9,770,216. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards medical imaging and navigation, wherein the patented claims are narrower in scope and anticipate the broader claims of the instant invention.
Claims 2-9, 12-13, and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,848,952. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards methods and systems for 3D modeling and lung navigation. The patented claims are narrower in scope and anticipate the broader claims of the instant invention.
Claims 2-9, 12-13, and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,653,845 issued from US Application 16/418,481. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards methods and systems for 3D modeling and lung navigation. The patented claims are narrower in scope and anticipated the broader claims of the instant invention.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,529,192 issued from US Application 17/992,549. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards methods and systems for 3D modeling and lung navigation. The patented claims are narrower in scope and anticipated the broader claims of the instant invention.
Allowable Subject Matter
Claims 2-9, 12-13, and 15-18 are rejected on the ground of nonstatutory double patenting presented above, and the rejections would be overcome by the filing of a terminal disclaimer, which would place the application in condition for allowance.
The Examiner recommends to delete the phrase "and the like" in Claims 13 and
Claims 2, 9 and 16 are not rejected because the prior art fails to teach the systems of Claims 2, 9, and 16, which specifically comprises the following features in combination with other recited limitations:
-; determine, based on information from a sensor coupled to a catheter, a location of the catheter in a patient's lung;
-; display, on the display, a view of a 3D model of the patient's lung depicting the determined location of the catheter, at least one planned pathway for navigating the catheter to at least one target in the patient's lung,
-; at least a portion of a pleural boundary of the patient's lung, and a line indicating a line of sight from a tip of the catheter, the line of sight intersecting with the at least one target;
-; and adjust the view of the 3D model to be orthogonal to the line between the tip of the catheter and the at least one target based on the determined location of the catheter as the catheter is navigated through the patient's lung
Applicant’s arguments submitted in “Remarks” submitted on pages 6-9 of “Remarks” dated January 20, 2026 are persuasive, and would overcome the prior art of record. An updated search was performed, and did not result in the determination of any prior art as being pertinent to the claimed features, which are co-extensive in scope with previously patented claims, most notably, the patented claims of U.S. Patent No. 10,653,845 issued from US Application 16/418,481. An Examiner's statement of reasons will be provided once the double patenting rejections of record are overcome.
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.
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TAHMINA N. ANSARI
Examiner
Art Unit 2672
2672
March 31, 2026
/TAHMINA N ANSARI/Primary Examiner, Art Unit 2674