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 .
Response to Amendment
Examiner acknowledges the amendment filed 04 November 2025 wherein: claims 1-11 are amended; claim 12 is canceled; claims 1-11 are pending.
Response to Arguments
Examiner acknowledges: the prior claim objections and 35 U.S.C. § 112(b) rejections have been overcome by amendment; 35 U.S.C. § 112(f) is no longer invoked due to amendment.
Applicant’s arguments, see Remarks (page 4, first line through page 5, last line), filed 31 October 2025, with respect to the 35 U.S.C. §§ 102 and 103 rejections of claims 1-11 have been fully 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. A new reference showing that real-time three-dimensional imaging was previously known in the art is provided in the new rejections below.
Claim Rejections — 35 U.S.C. § 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.
Written description
Claim 4 is rejected under 35 U.S.C. § 112(a), 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, at the time the application was filed, had possession of the claimed invention.
Claim 4 is presently amended to recite the limitation “the x-ray image and real-time image are captured with the same exact orientation”. This is new matter not supported by specification, drawings, and claims as originally filed. While the application as originally filed supports capturing the real-time image at a specific orientation, as can be seen in Applicant’s Figure 1, the x-ray detector is necessarily located below sample 18 and takes images along axis “C”, whereas the real-time camera (16) is positioned at an angle with respect to the axis “C”. Therefore, the x-ray image and the real-time image are not captured with the same orientation. Accordingly, the limitation is new matter not supported by the application as originally filed. Examiner has considered the claim as supported by the application as originally filed, i.e., capturing the real-time image at a specific orientation.
Enablement
Claim 4 is rejected under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
According to the approach used by the court in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (See MPEP § 2164), There are many factors (“Wands factors”) to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In claim 4, the claim recites the limitation “the x-ray image and real-time image are captured with the same exact orientation”. As described in the written description rejection above, this limitation is not supported by the application as originally filed. Applicant does not provide any direction for how to image at the same exact orientation. Taking these factors into account, while capturing the real-time image at a specific orientation is enabled, capturing the real-time image at the same exact orientation as the x-ray image is not enabled.
Claim Rejections — 35 U.S.C. § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. §§ 102–103 (or as subject to pre-AIA 35 U.S.C. § 102–103) 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential 35 U.S.C. § 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-9
Claims 1-9 are rejected under 35 U.S.C. § 103 as being unpatentable over
Butani (US 2018/0275076 A1) in view of Rapoport (US 2012/0165654 A1).
Claim 1
Regarding claim 1, Butani (in particular, see Abstract, ¶¶ 7-9, 44, claim 1; see also similarity between Figs. 2-4, 8 and Applicant’s Figs. 1, 3-4, respectively) discloses a cabinet x-ray system incorporating a real-time camera (Abstract; ¶ 8: This embodiment includes a cabinet x-ray system, a base unit including an image processor and a display, an imaging chain incorporated into the base unit, including an x-ray source with x-ray detector, a system configured to receive video data and an interface for enabling an analog/digital signal to be transferred from an image capture apparatus to the image processor of the base unit), comprising:
a computer (¶ 9: In another embodiment, the aspects of the present disclosure are directed to a computing device including at least with one processor and at least one display unit operable by the at least one processor; ¶ 44: On example of such a configuration can include controller cards of a computer 470 (FIG. 4), such as a MS Windows based computer. In one embodiment, non-transitory machine readable instructions being executed by one or more processors of the computer 470 is utilized to compile data received from the detector 20 and present resulting images to a suitable
display or monitor 472 (FIG. 4) at each imaging position, such as positions 12, 14 and 16 shown in FIG. 1);
a base unit including an image processor and a display (¶ 8: a base unit including an image processor and a display, an imaging chain incorporated into the base unit, including an x-ray source with x-ray detector, a system configured to receive video data and an interface for enabling an analog/digital signal to be transferred from an image capture apparatus to the image processor of the base unit);
an imaging chain incorporated into the base unit (¶ 8: a base unit including an image processor and a display, an imaging chain incorporated into the base unit, including an x-ray source with x-ray detector, a system configured to receive video data and an interface for enabling an analog/digital signal to be transferred from an image capture apparatus to the image processor of the base unit), including:
an x-ray source with an x-ray detector; a scanner including the real-time camera configured to capture an image of a specimen; and an interface for enabling a signal to be transferred from real-time camera the image capture apparatus to the computer of the base unit (¶ 7: specimen; ¶ 8: a base unit including an image processor and a display, an imaging chain incorporated into the base unit, including an x-ray source with x-ray detector, a system configured to receive video data and an interface for enabling an analog/digital signal to be transferred from an image capture apparatus to the
image processor of the base unit).
Butani does not expressly disclose the image of the specimen is three-dimensional. Rapoport discloses an x-ray system (¶ 19) including means configured to capture a three dimensional image of a specimen using a real-time camera (¶ 25).
It would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to have modified the invention of Butani to include three-dimensional imaging as taught by Rapoport for the purpose providing accurate, real-time images of the region of interest (Rapoport, ¶ 25).
Claim 2
Regarding claim 2, Butani modified teaches the system as defined in claim 1, in which the real-time camera is configured to supply standard or High-Definition (HD) real-time images (Butani, ¶ 8: The system may be further be configured to supply standard or high-definition (HD) real-time images).
Claim 3
Regarding claim 3, Butani modified teaches the system of claim 1, in which the cabinet x-ray system concurrently captures an x-ray image and a real-time image (Butani, ¶ 8: The cabinet x-ray system may concurrently capture an x-ray image and a real-time image).
Claim 4
Regarding claim 4, as best understood, Butani modified teaches the system of claim 3, in which the real-time camera is mounted onto the system such that the x-ray image and real-time image are captured within the same exact orientation (Butani, ¶ 8: The camera may be mounted onto the system so as to integrate an exact capture/orientation image of the sample being x-rayed).
Claim 5
Regarding claim 5, Butani modified teaches the system of claim 1, in which the unit is enclosed in a cabinet x-ray system (Butani, ¶ 8: the aspects of the present disclosure are directed to a system and method including a cabinet x-ray system incorporating a real-time camera. This embodiment includes a cabinet x-ray system, a base unit including an image processor and a display, an imaging chain incorporated into the base unit, including an x-ray source with x-ray detector, a system configured to receive video data and an interface for enabling an analog/digital signal to be transferred from an image capture apparatus to the image processor of the base unit).
Claim 6
Regarding claim 6, Butani modified teaches the system of claim 1, in which the unit is utilized for excised tissue, organ or bone specimens (Butani, ¶ 8: The unit may be enclosed in a cabinet x-ray system. The unit may be utilized for excised tissue, organ or bone specimens).
Claim 7
Regarding claim 7, Butani modified teaches the system of claim 1, in which the unit is utilized for any organic or inorganic specimen that fits inside the system framework or x-ray cabinet (Butani, ¶ 8: The unit may be utilized for excised tissue, organ or bone specimens; these are by definition organic specimens).
Claim 8
Regarding claim 8, Butani modified teaches the system of claim 1 in which an image capturing mechanism is mounted in a cabinet x-ray system (Butani, ¶ 8: The image capturing mechanism may be mounted in a cabinet x-ray system, such as the cabinet system illustrated in the embodiment shown in FIG. 1).
Claim 9
Regarding claim 9, Butani modified teaches the system of claim 1 in which the real-time image is displayed overlaid onto the x-ray image or adjacent to the x-ray image (Picture-in-Picture - PIP) (Butani, ¶ 7: The computing device receives video data from the real-time camera and the x-ray detector and determines the orientation of the specimen, based on the video data, an overlay of the captured x-ray image with the captured real-time image or display an adjacent image i.e. Picture-In-Picture (PIP)).
Claims 10-11
Claims 10-11 are rejected under 35 U.S.C. § 103 as being unpatentable over Butani in view of Rapoport as applied to claim 1 above, and further in view of Sakuma (US 2018/0275076 A1).
Claim 10
Regarding claim 10, Butani modified teaches the system of claim 1, but does not expressly disclose the optical imaging system comprises a laser.
Sakuma is in the field of optical systems (Abstract) and teaches the optical imaging system comprises a laser (¶ 26: An optical complex amplitude measurement apparatus 30 illustrated in FIG. 1 includes a first laser 31 and a second laser 32 as light sources).
It would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to have further modified the invention of Butani to include an optical system as taught by Sakuma for the purpose of preventing a decrease in
contrast of the interference fringe related to the signal beam passing through the measurement target and elimination of the interference fringe, and to measure an intensity distribution and a phase distribution of the interference fringe with high accuracy by the prevention (Sakuma, ¶ 16).
Claim 11
Regarding claim 11, Butani modified teaches the system of claim 1 but does not expressly disclose the optical imaging system is composed of sources emitting at differing frequencies.
Sakuma teaches the optical imaging system is composed of sources emitting at differing frequencies (¶¶ 26-27: An optical complex amplitude measurement apparatus 30 illustrated in FIG. 1 includes a first laser 31 and a second laser 32 as light sources ... As a feature of the first embodiment, the optical complex amplitude measurement apparatus 30 uses two light sources as the first and second lasers 31 and 32 that output (emit) laser beams having same frequencies f1 and f2).
It would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to further modify the system of Butani to include an optical system as taught by Sakuma for the purpose of preventing a decrease in contrast of the interference fringe related to the signal beam passing through the measurement target and elimination of the interference fringe, and to measure an intensity distribution and a phase distribution of the interference fringe with high accuracy by the prevention (Sakuma, ¶ 16).
Inventorship
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Applicant is advised that an inventor must contribute to the conception of at least one claimed invention. See MPEP § 2109(II). With reference to 35 U.S.C. § 101, only whoever invents an invention may obtain a patent therefor.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential 35 U.S.C. § 102(a)(2) prior art against the later invention.
This application currently names twelve inventors, who are presumed to meet the requirements above, absent any evidence to the contrary. If any of the listed inventors do not meet the inventorship requirements listed above, the inventorship must be corrected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tomasetti (US 6,236,712 B1) discloses an x-ray fluoroscopic imaging system including a portable cabinet, at least one monitor, a support arm, an articulated arm assembly connecting the support arm to the cabinet, a C-arm carried by the support arm assembly, an x-ray source and detector located at opposing locations on the C-arm, and a control panel mounted on the source or the detector, three "x-ray on" lighted indicators are disposed at visible locations in the system, one of these indicators being a switch with a light-up perimeter on the control panel, the second being incorporated in the monitor, and the third being incorporated in the cabinet (Abstract).
Sykes (US 2002/0090057 A1) discloses a cabinet for an x-ray system comprising an inner housing having an open mouth and being fully insertable with a clearance in an outer housing having an open mouth, the inner and outer housings being attachable to secure and space the housings in a predetermined relationship, wherein lead shielding comprises a substantially complete intermediate layer extending between the inner and outer housings and the open mouth is provided with a lead lined closure (Abstract).
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 BLAKE RIDDICK whose telephone number is (571)270-1865. The examiner can normally be reached on M - Th 6:30 am - 5:00 pm ET, with flexible scheduling.
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, Uzma Alam can be reached on 571-272-2995. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Blake C. Riddick, Ph.D.
Primary Examiner
Art Unit 2884
/BLAKE C RIDDICK/Primary Examiner, Art Unit 2884