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 Arguments
Applicant's arguments, see pgs. 5 and 6 of Remarks, filed 2/5/26, with respect to the rejection of claims 1-15 under 35 USC 112, have been fully considered but they are not persuasive. Please see the 35 USC 112 rejection below.
Applicant’s arguments, see pgs. 6 and 7 of Remarks, with respect to the rejection of claims 14 and 15 under 35 USC 101 have been fully considered and are persuasive. The rejection of claims 14 and 15 under 35 USC 101 has been withdrawn.
Applicant’s arguments with respect to claims 1-15 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.
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 1-15 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 1 recites “receive data regarding a command executed during a surgical procedure for controlling operation or setting of a surgical instrument used during the surgical procedure, or data regarding instrument setting of an instrument used during the surgical procedure.” There appear to be missing and/or misplaced punctuation marks (i.e. commas) that cause the claim to be indefinite. It is unclear whether the limitation of “setting of a surgical instrument used during the surgical procedure, or data regarding instrument setting of an instrument used during the surgical procedure” follows “receive data regarding a command executed during a surgical procedure for…” Please amend or clarify the claims to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Claims 14 and 15 are rejected using similar reasoning as claim 1 above.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson et al. (US Pub. No. 2021/0393339).
Consider claim 1. Johnson et al. discloses an apparatus, configured to: receive data regarding a command executed during a surgical procedure for controlling operation or setting of a surgical instrument used during the surgical procedure, or data regarding instrument setting of an instrument used during the surgical procedure (para. 0151 describes controlling a surgical system using voice commands); determine a content of an annotation for a video of the surgical procedure based on the data regarding the command and/or the data regarding the instrument setting (para. 0103 describes mark up an image with annotations); and annotate the video of the surgical procedure with the annotation (paras. 0101-0105 describe annotating the video of the surgical procedure with the annotation).
Consider claim 15. Johnson et al. discloses all claimed limitations as stated above. Johnson et al. further discloses a computer program with a program code (para. 0027 describes software stored in the memory device).
Claim 14 is rejected using similar reasoning as corresponding claim above.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 2-4 and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US Pub. No. 2021/0393339) in view of Alvi et al. (US Pub. No. 2018/0247128).
Consider claim 2. Johnson et al. discloses all claimed limitations as stated above, except wherein the command is for setting at least one of a plurality of optical settings of an optical instrument.
However, Alvi et al. discloses wherein the command is for setting at least one of a plurality of optical settings of an optical instrument (para. 0097 discloses using the head mounted camera to capture image stills of critical steps of surgery).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, wherein the command is for setting at least one of a plurality of optical settings of an optical instrument, in order to create a surgical operative note during a surgical procedure as suggested by the prior art.
Consider claim 3. Alvi et al. discloses the apparatus of claim 2, wherein the plurality of optical settings includes at least one of illumination intensity, focus, illumination source, color filter, or magnification (para. 0034 describes the operating room characteristics, such as lighting used). The motivation to combine is the same as mentioned above in claim 2.
Consider claim 4. Johnson et al. discloses all claimed limitations as stated above, except wherein the command is at least one of a plurality of surgical commands of a surgical instrument.
However, Alvi et al. discloses wherein the command is at least one of a plurality of surgical commands of a surgical instrument (paras. 0020-0028 describe annotating a video of a surgical procedure based on from a sensor at a wearable device, smart surgical instrument, and head mounted camera during a surgery).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, wherein the command is at least one of a plurality of surgical commands of a surgical instrument, in order to create a surgical operative note during a surgical procedure as suggested by the prior art.
Consider claim 6. Johnson et al. discloses all claimed limitations as stated above, except determining the annotation based on at least one of: an image parameter of the video, an object in the video, relative positions of at least two objects in the video, or a movement in the video.
However, Alvi et al. discloses determining the annotation based on at least one of: an image parameter of the video, an object in the video, relative positions of at least two objects in the video, or a movement in the video (paras. 0139 and 0140 describe identifying temporal information for a part of the video data).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to determine the annotation based on at least one of: an image parameter of the video, an object in the video, relative positions of at least two objects in the video, or a movement in the video, in order to create a surgical operative note during a surgical procedure as suggested by the prior art.
Consider claim 7. Alvi et al. discloses the apparatus of claim 6, wherein the object is at least one of a plurality of identifiable objects including; at least one surgical instrument or at least one anatomical structure (paras. 0020-0028 describe annotating a video of a surgical procedure based on from a sensor at a wearable device, smart surgical instrument, and head mounted camera during a surgery). The motivation to combine is the same as mentioned above in claim 6.
Consider claim 8. Alvi et al. discloses the apparatus of claim 6,wherein the at least one surgical instrument is a blade or a phacoemulsifier (para. 0026 describes a scalpel blade). The motivation to combine is the same as mentioned above in claim 6.
Consider claim 9. Johnson et al. discloses all claimed limitations as stated above, except determining a time stamp (t+1) associated with the annotation.
However, Alvi et al. discloses determining a time stamp (t+1) associated with the annotation (paras. 0025 and 0096 describe a timestamp).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to determine a time stamp (t+1) associated with the annotation, in order to create a surgical operative note during a surgical procedure as suggested by the prior art.
Consider claim 10. Johnson et al. discloses all claimed limitations as stated above, except wherein the annotation is selected from a library stored in the memory.
However, Alvi et al. discloses wherein the annotation is selected from a library stored in the memory (para. 0087 describes generating an annotated video file, including compliance data, that may be stored in a dataset).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, wherein the annotation is selected from a library stored in the memory, in order to create a surgical operative note during a surgical procedure as suggested by the prior art.
Consider claim 11. Johnson et al. discloses all claimed limitations as stated above, except wherein the apparatus is configured such that the video is annotated with a plurality of annotations, each annotation having an associated time stamp (t+1, t+2, t+3).
However, Alvi et al. discloses wherein the apparatus is configured such that the video is annotated with a plurality of annotations, each annotation having an associated time stamp (t+1, t+2, t+3)o (paras. 0025 and 0096 describe a timestamp).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, wherein the apparatus is configured such that the video is annotated with a plurality of annotations, each annotation having an associated time stamp (t+1, t+2, t+3), in order to create a surgical operative note during a surgical procedure as suggested by the prior art.
Consider claim 12. Johnson et al. discloses all claimed limitations as stated above, except determining the annotation by a machine learning algorithm.
However, Alvi et al. discloses determining the annotation by a machine learning algorithm (para. 0136 describes a model generated based on performance of a machine-learning algorithm may be used to process the video data to identify the one or more procedural states).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to determine the annotation by a machine learning algorithm, in order to create a surgical operative note during a surgical procedure as suggested by the prior art.
Consider claim 13. Alvi et al. discloses the apparatus of claim 12, wherein the machine learning algorithm is configured to at least one of: identify the command or classify the command (para. 0136 describes a model generated based on performance of a machine-learning algorithm may be used to process the video data to identify the one or more procedural states).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US Pub. No. 2021/0393339) in view of Alvi et al. (US Pub. No. 2018/0247128) in further view of Lamprecht et al. (US Pub. No. 2007/0156017).
Consider claim 5. Johnson et al. and Alvi et al. teach all claimed limitations as stated above, except wherein the plurality of surgical commands are for at least two of ultrasound activation, ultrasound deactivation, pump activation, pump deactivation, injection, or suction.
However, Lamprecht et al. teaches wherein the plurality of surgical commands are for at least two of ultrasound activation, ultrasound deactivation, pump activation, pump deactivation, injection, or suction (para. 0025 describes the surgical commands are for suction tool or stereo imaging, including ultrasound).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, wherein the plurality of surgical commands are for at least two of ultrasound activation, ultrasound deactivation, pump activation, pump deactivation, injection, or suction, in order to generate the telestration graphics for overlay on the stereo images of the surgical site as suggested by the prior art.
Conclusion
THIS ACTION IS MADE FINAL. 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 Mishawn N Hunter whose telephone number is (571)272-7635. The examiner can normally be reached Monday-Friday 7am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thai Tran can be reached on 571-272-7382. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MISHAWN N. HUNTER/Primary Examiner, Art Unit 2484
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