DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,008,129. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed subject matter is recited or suggested in the claims of the ‘129 patent, as follows:
Claim 1
Claim 1 of ‘129 patent
A system for determining surgical level, the system comprising:
A system for quantifying clinical skill of at least one user, comprising:
a user interface; and
a control unit including a processor and a non-transitory computer readable medium
storing instructions that, when executed by the processor, causes the processor to:
at least one application operable on at least one computer, the at least one application configured for:
accept data relating to at least two surgical elements;
collecting data relating to at least one surgical task done by the at least one user using at least one surgical device;
segment, using a classifier, the at least two surgical elements hierarchically;
segmenting the collected data into surgemes,
compare the segmented data to a skill level model; and
comparing the segmented data for the at least one surgical task to other segmented data for at least one other similar surgical task;
determine a surgical level, based on the skill level model.
quantifying the clinical skill of the at least one user based on the comparing of the segmented data for the at least one surgical task to the other segmented data for the at least one other similar surgical task
While the claims of the ‘129 patent do not explicitly recite a user interface or a control unit including a processor and a non-transitory computer readable medium, one of ordinary skill in the art would understand that these features are very well known in applications operable on a computer system.
Additionally, while the claims of the ‘129 patent do not explicitly recite that the segmenting is performed using a classifier, it is proper under MPEP 804(II)(B)(2)(a) to use the specification as a guide to learn the meaning of a term in the claim. Further, the scope of the claims is to be determined not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. The portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application. In this case, it is proper to consider the specification when considering the meaning and scope of “segment” as recited in the claims. In particular, the pertinent claim language is suggested by claim 1 as viewed in light of col. 5, lines 41-44 of the specification.
The limitations of claims 2, 7, 12 and 17 are recited in claim 1 of the ‘129 patent.
The limitations of claims 3, 13 and 18 are suggested by claim 1 of the ‘129 patent as viewed in light of col. 5, lines 41-44 of the specification
The limitations of claims 4, 14 and 19 are recited in claim 7 of the ‘129 patent.
The limitations of claims 5, 15 and 20 are suggested by claim 1 of the ‘129 patent as viewed in light of col. 6, line 63 to col. 7, line 10 of the specification
The limitations of claim 6 are suggested by claim 1 of the ‘129 patent as viewed in light of col. 4, lines 46-51 of the specification
The limitations of claim 8 are suggested by claim 1 of the ‘129 patent as viewed in light of col. 3, lines 27-31 of the specification
The limitations of claim 9 are suggested by claim 1 of the ‘129 patent as viewed in light of col. 7, lines 35-42 of the specification
The limitations of claim 10 are suggested by claim 6 of the ‘129 patent as viewed in light of col. 9, lines 32-37 of the specification
The limitations of claims 11 and 16 are suggested by claim 1 of the ‘129 patent as viewed in light of col. 5, lines 41-44 of the specification as discussed above with respect to claim 1.
Response to Arguments
Applicant’s arguments with respect to claims 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KURT FERNSTROM whose telephone number is (571)272-4422. The examiner can normally be reached M-F 10-6.
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, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KURT FERNSTROM/Primary Examiner, Art Unit 3715
July 9, 2026
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