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 .
Status of Claims
Claims 1-15 are pending.
This communication is in response to the communication filed November 13, 2023.
Claim Objections
Claims 14 and 15 are objected to under 37 CFR 1.75(c) as being in improper form because Claims 14 and 15 are dependent on claim 13 and in combination with claims 11 or 12, which are improper multiple dependent claims. See MPEP § 608.01(n). Accordingly, the claims 14 and 15 are not been further treated on the merits.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
Claim limitation “alert module” have been interpreted under 35 U.S.C. 112(f), because they use generic placeholders “module” coupled with functional language without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitation(s) invokes 35 U.S.C. 112(f), claims 1-15 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) limitations: a sound emitter, a light emitter or a screen (p. 6).
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 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 CFR 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, 148 USPQ 459 (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, 3, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Schweikard et al. US20030125622 in view of Nikou US20220183762 in further view of Auerbach US20190133499.
As per claim 1, Schweikard teaches
system for identifying a risk during surgery, the system comprising (Schweikard par. 57, fig. 8)
a patient tracker attached to a patient… (Schweikard par. 57, fig. 8)
a localization system coupled to the patient tracker, (Schweikard fig. 1-3)
a memory in which a set of expected motions of the patient tracker is recorded, (Schweikard par. 57)
a control unit connected to the memory and the localization system, (Schweikard par. 57-61)
the control unit being configured to monitor a motion of the patient tracker during surgery, determine a difference between the motion of the patient tracker and the set of expected motions of the patient tracker, and compare the difference to a predetermined threshold, (Schweikard par. 57-61)
Schweikard does not specifically teach the following limitations met by Nikou, and a tracked bone of the patient, (Nikou par. 63 teaches trackers attached to patient bones).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the systems and methods as taught by Schweikard to attach trackers to patient bones as taught by Nikou with the motivation to provide a solution where proper line of sight is obtained while not inhibiting the movement or positioning of operating room staff (par. 7).
Schweikard and Nikou do not specifically teach the following limitations met by Auerbach, an alert module connected to the control unit, the alert module being configured to emit an alert of a risk of modification of the geometric relationship, when the difference exceeds the predetermined threshold (Auerbach par. 152 teaches marker movement exceeds a predetermined threshold, an alert may be issued).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the systems and methods as taught by Schweikard and Nikou to use an alert module emitting an alert of a risk of a modication as taught by Auerbach with the motivation to continuously monitor patients for risk (par. 2-7).
As per claim 3, Schweikard, Nikou, and Auerbach teach all the limitations of claim 1 and further teach wherein the set of expected motions is produced based on a model (Schweikard par. 57-62).
As per claim 5, Schweikard, Nikou, and Auerbach teach all the limitations of claim 3 and further teach wherein the model includes a breathing model of the patient (Schweikard par. 47).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY M. PATEL whose telephone number is (571)272-6793 and email is jay.patel2@uspto.gov. The examiner can normally be reached on Monday-Friday 8AM-4:30PM.
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 H. Choi can be reached on (469)295-9171. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAY M. PATEL/Primary Examiner, Art Unit 3686
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