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 .
DETAILED ACTION
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/22/2025 and 01/31/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 21-28, 35-40 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.
Claim 21, recites “determining a size of an object at a surgical site based on: a geometry of a surgical instrument captured within a received image of the object at the surgical site,” in lines 6-7. Further, claim 21 recites the limitation " difference between the first location and the second location of the surgical instrument " in line 11.
It is unclear how the difference between the first location and the second location and the geometry of the instrument are used in determining the size of the object. How the geometry of the surgical instrument is involved in determining the size of the object is not discussed in the specification. Further, the relation between geometry of the surgical instrument and the size of the subject is also not discussed regarding how the geometry of the surgical instrument is used in determining size of the object.
Appropriate explanation/correction is required.
Claim 35 recites “a reference value based on a difference between a first location of a surgical instrument captured in the received image and a second location of the surgical instrument captured in the received image.” From the specification and claim it is unclear how the reference is used in determining the size of the object.
Appropriate correction is required.
Further, claim 35 recites “calculation of a reference value based on a difference between a first location of a surgical instrument captured in the received image and a second location of the surgical instrument captured in the received image.” Here, it is unclear whether it is based on a calculated value or a step of calculation of the reference value.
Appropriate correction is required.
Claims 29-34 are rejected for being a substantial duplicate of the claims 21-24, and 26, and 28 respectively. Duplicate claims 29-34 should be cancelled.
Claims 22-28 and 36-40 are rejected for being dependent on a rejected base claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 21-25 is/are rejected under 35 U.S.C. 102 as being anticipated by Mintz (US 20190175009).
Regarding claim 21, Mintz discloses a system, comprising: at least one processor (FIGS. 1A, 8; para [0123]); and one or more processor-readable media storing instructions which, when executed by the at least one processor, cause performance of determining a size of an object at a surgical site based on:
a geometry of a surgical instrument (basket 750; FIG. 7C) captured within a received image of the object (Capturing sequential images of the object and the basket with the imaging sensor while navigating the elongate body into at least one of a different orientation and a different position; para [0095]; the size of the basket is determined; claim 41) at the surgical site (Determining the estimated size of the object based on the position and the size of the basket relative to the object in the identified images; claim 41; para [0089]);
a depth of each of a plurality of pixels in the received image (Position of the basket is determined which requires to determining how deep the image/image pixel are; para [0114], [0118]);
a first location (position of the basket is determined; claim 41; para [0089]; real-time position and movement of the robotically controlled basket 700; Position of the moving basket 750 is used to determine a size of the object; para [0112]) of the surgical instrument in the received image (Determining the estimated size of the object based on the position and the size of the basket relative to the object in the identified images; claim 41 );
a second location (position of the basket is determined; claim 41; para [0089]) of the surgical instrument in the received image (real-time position and movement of the robotically controlled basket; Position of the moving basket is used to determine a size of the object; para [0112]; Determining the estimated size of the object based on the position and the size of the basket relative to the object in the identified images; claim 41); and
a difference between the first location and the second location (determining the estimated size of the object based on the position and the size of the basket relative to the object in the identified images. Object size is determined based on movement of the basket which means difference has been used in determining the size of the object; para [0112]; The claim does not specify how the difference and size of the instrument is used in determining the size of object).
Regarding claim 22, Mintz discloses wherein the one or more processor- readable media further store instructions which, when executed by the one or more processors (FIG. 1A), cause performance of displaying (Display module; FIGS. 2,3D anatomy is shown; para [0041]) the received image of the object.
Regarding claim 23, Mintz discloses wherein the one or more processor-readable media further store instructions which, when executed by the one or more processors, cause performance of displaying (Display module; FIGS. 2, 3D anatomy is shown; para [0041]), on the displayed received image of the object, a representation of the determined size of the object.
Regarding claim 24, Mintz discloses an imaging device configured to capture the image of the object together with the surgical instrument within the surgical site (Capturing sequential images of the object and the basket with the imaging sensor while navigating the elongate body into at least one of a different orientation and a different position; para [0112]).
Regarding claim 25, Mintz discloses an imaging device control unit configured to control the imaging device (Command console 200; FIG. 2; Capturing sequential images of the object and the basket with the imaging sensor while navigating the elongate body into at least one of a different orientation and a different position; para [0112]).
Claim(s) 35-38, 40 is/are rejected under 35 U.S.C. 102 as being anticipated by Mintz (US 20190175009).
Regarding claim 35, Mintz discloses a system (FIG. 1A; para [0123]) comprising:
at least one processor (FIG. 1A; para [0123]); and
one or more processor-readable media storing instructions which, when executed by the at least one processor, cause performance of determining a size of an object at a surgical site based on:
a depth (Position of the basket is determined which requires to determining how deep the image/image pixel is; para [0114], [0118]) of each of a plurality of pixels in a received image of the object; and
calculation of a reference value based on a difference between a first location of a surgical instrument captured in the received image and a second location of the surgical instrument captured in the received image (determining the estimated size of the object based on the position and the size of the basket relative to the object in the identified images. Object size is determined based on movement of the basket which means difference has been used in determining the size of the object; para [0112]; The claim does not specify how the difference and size of the instrument is used in determining the size of object).
Regarding claim 36, Mintz discloses wherein the one or more processor-readable media further store instructions which, when executed by the one or more processors (FIG. 1A), cause performance of displaying the received image of the object (Display module; FIG. 2; 3D anatomy is shown; para [0041]).
Regarding claim 37, Mintz discloses wherein the one or more processor-readable media further store instructions which, when executed by the one or more processors, cause performance of displaying (Display module; FIGS. 2, 3D anatomy is shown; para [0041]), on the displayed received image of the object, a representation of the determined size of the object.
Regarding claim 38, Mintz discloses comprising an imaging device configured to capture the image of the object within the surgical site (Capturing sequential images of the object and the basket with the imaging sensor while navigating the elongate body into at least one of a different orientation and a different position; para [0112]).
Regarding claim 40, Mintz discloses comprising wherein determining the size of the object at the surgical site is further based on a geometry of a surgical instrument captured within a received image of the object at the surgical site (Determining the estimated size of the object based on the position and the size of the basket relative to the object in the identified images. Object size is determined based on movement of the basket which means difference has been used in determining the size of the object; para [0112]; The claim does not specify how the determining depends on the geometry of the surgical instrument.).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mintz (US 20190175009) in view of Inoue (US 20200113419).
Regarding claim 27, Mintz does not expressly disclose wherein the one or more processor- readable media further store instructions which, when executed by the one or more processors, cause performance of:
re-centering the imaging device based on at least one of the first or second locations of the surgical instrument and generating a re-centered image based on the re-centering of the imaging device; and displaying the re-centered image.
Inoue is directed to a medical system (abstract) and teaches wherein the one or more processor- readable media further store instructions which, when executed by the one or more processors, cause performance of:
re-centering the imaging device based on at least one of the first or second locations of the surgical instrument and generating a re-centered image based on the re-centering of the imaging device; and displaying the re-centered image (distal end of this treatment tool 4 is always disposed at the center of the endoscopic image; para [0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mintz to control the camera in accordance with the teaching of Inoue so that instrument image will always be at the center of the field of view.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mintz (US 20190175009) in view of Atarot (US 20230040952).
Regarding claim 27, Mintz does not expressly disclose wherein the one or more processor- readable media further store instructions which, when executed by the one or more processors, cause performance of providing at least one of a visual alert or an audio alert when at least a portion of the surgical instrument is disposed outside of a field of view of the received image.
Atarot is directed to a surgical controlling system (abstract) and teaches wherein the one or more processor- readable media further store instructions which, when executed by the one or more processors, cause performance of providing at least one of a visual alert or an audio alert when at least a portion of the surgical instrument is disposed outside of a field of view of the received image (Alerting the physician of said restricted movement of said at least one surgical too; audio alert; para [0222]-[0223], [0374]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mintz to include the alert system in accordance with the teaching of Atarot so that the surgeon could be alerted of the instrument being outside the surgical area.
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mintz (US 20190175009) in view of Atarot (US 20230040952).
Regarding claim 39, Mintz does not expressly disclose wherein the one or more processor- readable media further store instructions which, when executed by the one or more processors, cause performance of displaying, on the displayed received image of the object, a representation of the determined size of the object.
Atarot is directed to a surgical controlling system (abstract) and teaches wherein the one or more processor- readable media further store instructions which, when executed by the one or more processors, cause performance of displaying, on the displayed received image of the object, a representation of the determined size of the object (Alerting the physician of said restricted movement of said at least one surgical too; audio alert; para [0222]-[0223], [0374]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mintz to include the alert system in accordance with the teaching of Atarot so that the surgeon could be alerted of the instrument being outside the surgical area.
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.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,844,497. Claim 21 is anticipated by claim 1 of the U.S. Patent No. 11,844,497.
Claims 22, 23, 24, 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,844,497. Claims 22, 23, 24, 25 are anticipated by claim 1 of the U.S. Patent No. 11,844,497.
Claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,844,497. Claim 26 is anticipated by claim 2 of the U.S. Patent No. 11,844,497.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,844,497. Claim 27 is anticipated by claim 5 of the U.S. Patent No. 11,844,497.
Claim 35 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11,844,497. Claim 35 is anticipated by claim 19 of the U.S. Patent No. 11,844,497.
Claims 36-38, 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,844,497. Claims 36-38, 40 are anticipated by claim 1 of the U.S. Patent No. 11,844,497.
See claim comparison below –
Instant Claims
Claims of
U.S. Patent No.
US 11844497
21. (New) A system, comprising: at least one processor; and one or more processor-readable media storing instructions which, when
1. A system for measuring an object in a surgical site, comprising: an imaging device configured to capture an image of an object within a surgical operative site; and an imaging device control unit configured to control the imaging device, the imaging device control unit including:
executed by the at least one processor, cause performance of determining a size of an object at a surgical site based on:
a processor; and a memory storing instructions which, when executed by the processor, cause the system to:
capture an image of an object within a surgical operative site via the imaging device; determine a size of the object based on:
a geometry of a surgical instrument captured within a received image of the object at the surgical site;
a geometry of a surgical instrument captured in the captured image;
a depth of each of a plurality of pixels in the received image;
a depth of each of a plurality of pixels in the captured image;
a first location of the surgical instrument in the received image;
a first location of the surgical instrument in a first frame of the captured image;
a second location of the surgical instrument in the received image; and
a second location of the surgical instrument in a second frame of the captured image; and
a difference between the first location and the second location.
a difference between the first location and the second location;
display the captured image of the object; and display, on the displayed captured image of the object, a representation of the determined size of the object.
24. (New) The system according to claim 21, further comprising an imaging device configured to capture the image of the object together with the surgical instrument within the surgical site.
25. (New) The system according to claim 24, further comprising an imaging device control unit configured to control the imaging device.
1.
… an imaging device configured to capture an image of an object within a surgical operative site; and an imaging device control unit configured to control the imaging device,..
22. (New) The system according to claim 21, wherein the one or more processor- readable media further store instructions which, when executed by the one or more processors, cause performance of displaying the received image of the object.
23. (New) The system according to claim 22 wherein the one or more processor-readable media further store instructions which, when executed by the one or more processors, cause performance of displaying, on the displayed received image of the object, a representation of the determined size of the object.
1.
…..display the captured image of the object; and display, on the displayed captured image of the object, a representation of the determined size of the object.
26. (New) The system according to claim 24, wherein the one or more processor- readable media further store instructions which, when executed by the one or more processors, cause performance of determining the size of the object by further providing, as input to a trained neural network stored on the one or more processor-readable media:
a focal length of the imaging device; and a field of view of the imaging device.
2. The system of claim 1, wherein the processor is configured to determine the size of the object by providing, as input to a trained neural network stored in the memory: a depth of each of a plurality of pixels in the captured image;
a focal length of the imaging device; and a field of view of the imaging device.
27. (New) The system according to claim 24, wherein the one or more processor- readable media further store instructions which, when executed by the one or more processors, cause performance of:
re-centering the imaging device based on at least one of the first or second locations of the surgical instrument; generating a re-centered image based on the re-centering of the imaging device; and displaying the re-centered image.
5. The system according to claim 4, wherein the instructions, when executed, further cause the system to:
re-center the imaging device based on the determined location of the surgical instrument; generate a re-centered image based on the re-centered imaging device; and display the re-centered image on the display.
35. A system, comprising: at least one processor; and one or more processor-readable media storing instructions which, when executed by the at least one processor, cause performance of determining a size of an object at a surgical site based on:
a depth of each of a plurality of pixels in a received image of the object; and
calculation of a reference value based on a difference between a first location of a surgical instrument captured in the received image and a second location of the surgical instrument captured in the received image.
19. A non-transitory storage medium that stores a program causing a computer to execute a computer-implemented method for measuring an object in a surgical site, the computer-implemented method comprising: capturing an image of an object within a surgical operative site via an imaging device; determining a size of the object based on: a geometry of a surgical instrument captured in the captured image; a depth of each of a plurality of pixels in the captured image; a first location of the surgical instrument in a first frame of the captured image; a second location of the surgical instrument in a second frame of the captured image; and a difference between the first location and the second location; displaying the captured image of the object; and displaying, on the displayed captured image of the object, a representation of the determined size of the object.
20. The non-transitory storage medium of claim 19, wherein the computer-implemented method further comprises calculating a reference value based on a distance between the first and second locations, and determining the size of the object is further based on the reference value.
36. (New) The system according to claim 35, wherein the one or more processor- readable media further store instructions which, when executed by the one or more processors, cause performance of displaying the received image of the object.
1.
…..display the captured image of the object; and display, on the displayed captured image of the object, a representation of the determined size of the object.
37. (New) The system according to claim 36, wherein the one or more processor-readable media further store instructions which, when executed by the one or more processors, cause performance of displaying, on the displayed received image of the object, a representation of the determined size of the object.
1.
…..display the captured image of the object; and display, on the displayed captured image of the object, a representation of the determined size of the object.
38. (New) The system according to claim 35, further comprising an imaging device configured to capture the image of the object within the surgical site.
1.
… an imaging device configured to capture an image of an object within a surgical operative site; and an imaging device control unit configured to control the imaging device,..
40. (New) The system according to claim 35, wherein determining the size of the object at the surgical site is further based on a geometry of a surgical instrument captured within a received image of the object at the surgical site.
1.
…a processor; and a memory storing instructions which, when executed by the processor, cause the system to:
capture an image of an object within a surgical operative site via the imaging device; determine a size of the object based on:
a geometry of a surgical instrument captured in the captured image;
Allowable Subject Matter
Claims 26, 33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if these claims overcome any outstanding rejections set forth above.
Claim 26
The following is an examiner’s statement of reasons for allowable subject matter:
The prior art of record fails to explicitly teach or fairly suggest, alone or in combination, a system,
wherein the one or more processor-readable media further store instructions which, when executed by the one or more processors, cause performance of determining the size of the object by further providing, as input to a trained neural network stored on the one or more processor-readable media: a focal length of the imaging device; and a field of view of the imaging device, along with the remaining features of claims 26, 24 and 21.
Claim 33 encompasses similar inventive features as claim 26.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO– 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANKAR R GHIMIRE whose telephone number is (571)272-0515. The examiner can normally be reached 8 AM - 5 PM.
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, Anhtuan Nguyen can be reached at 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANKAR RAJ GHIMIRE/Examiner, Art Unit 3795
/ANH TUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
12/15/2025