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 .
Election/Restrictions
Applicant’s election without traverse of Invention II (claims 11 - 19) in the reply filed on 1/22/2025 is acknowledged.
Claims 1 - 10 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/22/2025.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “108” has been used to designate both the “irrigation assembly” and the “shaft assembly” (see [0038] as published). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 734 (see [0046], inter alia, as published). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 14 is objected to because of the following informalities:
Claim 14 is objected to because “any of” in line 1 should be removed.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18 - 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 18 - 19 are indefinite because the claims recite a “secondary” overlay, whereas no “primary” overlay has been positively recited. The use of the word “secondary” is therefore improper ordinal nomenclature. It is unclear how many overlays must be provided. Examiner suggests positively reciting that the ‘processor is configured to overlay a [preoperative or real-time operational] characteristic of the medical procedure instrument’, or some similar phraseology.
Claim Interpretation/35 USC § 101
Examiner notes that the system of claim 11 appears to recite a judicial exception in the form of a mental step, as the ‘determinations’ and ‘selecting’ step appear to be capable of being practically performed in the human mind and/or with the aid of pen/paper. However, the additional elements of the claim, when considered separately and in combination, are found to integrate the apparent judicial exception into a practical application and/or result in the claim, as a whole, amounting to significantly more than the judicial exception. Specifically, the additional elements directed towards ‘overlaying the selected preoperative image region onto the real-time image from the imaging instrument, at a location corresponding to a region of the field of view in which the portion of the medical instrument is obscured’ are considered to recite display features that go beyond mere extra-solution activity, and provide improvement to a technical field, as disclosed in [0054] - [0055] (as published).
Allowable Subject Matter
Claims 11 - 17 are allowed.
Claims 18 - 19 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner’s statement of reasons for allowance:
Larkin et al. (US 20200331147, of record) are considered the closest prior art. Regarding claim 11, Larkin generally teaches determining that a portion of a medical procedure instrument is obscured within the field of view ([0062]), but is not specific to the combination of features required by claim 11, particularly with respect to the limitations directed towards ‘select a preoperative image region corresponding to the obscured portion of the medical procedure instrument’ and ‘overlaying the selected preoperative image region onto the real-time image from the imaging instrument, at a location corresponding to a region of the field of view in which the portion of the medical instrument is obscured’. Further, no other prior art of record, either singly or in combination, teaches or reasonably suggests such features. Claim 11 is therefore determined to be allowable over the prior art. Claims 12 - 19 are determined to be allowable at least by virtue of dependency.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AMELIE R DAVIS/Primary Examiner, Art Unit 3798
Prosecution Insights