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 .
Claim Notes
Claims 6, 13 and 19 recite a limitation of the form “one of A, B, C, D, E and F”. In accordance with the U.S. Court of Appeals for the Federal Circuit in SuperGuide Corp v. DirecTV Enterprises, Inc., these limitations are conjunctive in nature and to be construed as “at least one of A, at least one of B, at least one of C, at least one of D, at least one of E and at least one of F”. Therefore, these claims are addressed herein as requiring each of these steps rather than the alternative of A or B or C or D or E or F.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a finite number of time deformation scenes that are two-dimensional (2D) or higher” in line 5. While the specification has clear written description for a 4D or so-called 5D time deformation, there is no explicit description providing support for a 2D or 3D time deformation. Looking at paragraph 0058, for example, it is stated “The scenes generated a priori are unique because each individual scene is a 4D data set (or 5D or more if healing is also modeled), with the ability to represent the time deformation of the tissue being manipulated.” As such, it is not clear that there is support for 2D or 3D time deformations. The same reasoning applies to claim 9, line 8 and claim 16, line 6.
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, 3, 4, 6-10, 13-16 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,931,109. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘109 anticipate the instant claims.
Regarding claim 1, ‘109 discloses a computer-implemented method comprising:
receiving medical imaging (col. 16, line 50; medical imaging implied by the surgical steps recited in lines 52-55);
generating 3D models based on the medical imaging (col. 16, line 51); and
generating, responsive to a pre-determined set of surgical steps, a finite number of time deformation scenes that are two-dimensional (2D) or higher for each pre-determined surgical step associated with the 3D models (col. 16, lines 52-55).
Regarding claim 9, ‘109 discloses a system comprising:
a memory comprising instructions (col. 17, line 18); and
a processor configured to execute the instructions which, when executed, cause the processor to (col. 17, lines 19-20):
receive medical imaging (col. 17, line 21; medical imaging implied by the surgical steps recited in lines 23-26);
generate 3D models based on the medical imaging (col. 17, line 22); and
generate, responsive to a pre-determined set of surgical steps, a finite number of time deformation scenes that are two-dimensional (2D) or higher for each pre-determined surgical step associated with the 3D models (col. 17, lines 23-26).
Regarding claim 16, ‘109 discloses a non-transitory machine-readable storage medium comprising machine-readable instructions for causing a processor to execute a method (col. 18, lines 9-11), the method comprising:
receiving medical imaging (col. 18, line 12; medical imaging implied by the surgical steps recited in lines 14-17);
generating 3D models based on the medical imaging (col. 18, line 13); and
generating, responsive to a pre-determined set of surgical steps, a finite number of time deformation scenes that are two-dimensional (2D) or higher for each pre-determined surgical step associated with the 3D models (col. 18, lines 14-17).
Claims 2, 5, 11, 12 and17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,931,109 in view of Avisar (US 2015/0127316)
Regarding claims 2, 12 and 17, ‘109 discloses the elements of claims 1, 10 and 16.
‘109 does not explicitly disclose that the medical imaging comprises computed tomography (CT) imaging, magnetic resonance imaging (MRI), ultrasound imaging, positron emission tomography (PET) imaging, echocardiogram (ECHO) imaging, nuclear imaging, functional imaging, or a combination thereof.
Avisar teaches a method, system and medium in the same field of endeavor of surgical simulation, wherein the medical imaging comprises computed tomography (CT) imaging, magnetic resonance imaging (MRI) (“The system applies the layers of the realistic visual, the mechanical properties and other relevant parameters 16 from the system database(s) and characteristics relevant to the case, all applied on the top of the CT and MRI images 14 from the patient images database(s) 3 and synchronized with those images” at paragraph 0039, line 1), ultrasound imaging, positron emission tomography (PET) imaging, echocardiogram (ECHO) imaging, nuclear imaging, functional imaging, or a combination thereof.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to utilize CT/MRI as taught by Avisar as the medical imaging modality in ‘109 as these are commonly known modalities for surgical planning and simulation for purposes of visualization.
Regarding claims 5 and 11, ‘109 discloses the elements of claims 4 and 10.
‘109 does not explicitly disclose that the displaying comprises interactive augmented reality (AR), virtual reality (VR), or mixed reality displaying.
Avisar teaches a method and system the displaying comprises interactive augmented reality (AR), virtual reality (VR) (“The surgeon then performs a virtual surgery on a manipulateable, dynamic and interactive 3 dimensional image/model of his patient organism” at paragraph 0036, last sentence), or mixed reality displaying.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to utilize an interactive virtual display as taught by Avisar of the generated time deformations of ‘109 to allow the surgeon to interact with the data “in a realistic and dynamic manner” (Avisar at paragraph 0036, last sentence).
The following is mapping of the instant claims to the claims of ‘109:
Claims of Instant Application
Claims of ‘109
1
1
2
1 + Avisar
3
1
4
1
5
1 + Avisar
6
2 + 3 + 4
7
5
8
6
9
8
10
8
11
8 + Avisar
12
8 + Avisar
13
9 + 10 + 11
14
12
15
13
16
15
17
15 + Avisar
18
15
19
16 + 17 + 18
20
19 + 20
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATRINA R FUJITA whose telephone number is (571)270-1574. The examiner can normally be reached Monday - Friday 9:30-5:30 pm ET.
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/KATRINA R FUJITA/Primary Examiner, Art Unit 2672