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 .
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 34 lines 3-5 recite …determining, by at least one computing device configured by executing code stored in non-transitory processor readable media, leg length and/or offset of a hip joint in a first pelvic image…. Leg length and offset of a hip joint are only discussed in paragraph 37 of the specification which discloses that measurements for femoral offset and leg length can be corrected and the correction can be based on changes in pelvic surgical tilt and axial rotation. Therefore is no disclosure for the computing device to determine the leg length and/or offset of the hip joint in a first pelvic image. Claim 35 lines 4-5 recite …presenting, by the at least one computing device via a graphical user interface, at least one of the altered leg length and the altered offset of the hip joint. There is no disclosure in the specification of the graphical user interface showing at least one of the altered leg length or the altered offset of the hip joint.
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 22-24, 26-28, 34, 36, and 40-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent 11,925,420. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 22-24, 26-28, 34, 36, and 40-42 of the current application and the invention of claims 1-23 of the patent lies in the fact that the invention of claims 1-23 of the patent includes more elements and is thus more specific. Thus the invention of claims 1-23 of the patent is in effect a "species" of the "generic" invention of claims 22-24, 26-28, 34, 36, and 40-42 of the current application. It has been held that the generic invention is “anticipated” by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 22-24, 26-28, 34, 36, and 40-42 are anticipated by claims 1-23, claims 22-24, 26-28, 34, 36, and 40-42 are not patentably distinct from claims 1-23.
Claims 22-24 and 26-28 of the currently application are anticipated by claims 11, 14-16, 21, and 22 of the patent
Claim 34 is anticipated by claim 11 of the patent (claim 34 is interpreted as the determined offset of the hip joint)
Claims 36 and 40-42 are anticipated by claims 1 and 4-6 of the patent
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.
Claims 34 and 35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schipper (U.S. Publication 2022/0249248).
Schipper discloses a method comprising:
(claim 34) determining by at least one computing device
(claim 34) offset of a hip joint, i.e. pelvic tilt, in a first pelvic image
(claim 34) wherein the first pelvic image is a two-dimensional anterior-posterior image (paragraphs 88-89 and 107-110; for example see Figures 16A-16C)
(claim 34) processing by at least one computing device
(claim 34) a second pelvic image presenting a 2-D lateral view of at least part of the pelvis (paragraphs 88-89 and 107-110; for example see Figure 17)
(claim 34) the first pelvic image presenting a 2-D anterior-posterior view (paragraphs 88-89; for example see Figures 11, 15, 20, and 28)
(claim 34) measuring as a function of a plurality of identified anatomical landmarks at least one of
(claim 34) distances in the first and second pelvic image
(claim 34) angles in the first and second pelvic image
(claim 34) areas in the first and second pelvic image (for example see Figures 16-18; for example see paragraphs 107-110)
(claim 34) during a surgical procedure automatically determining by the at least one computing device
(claim 34) pelvic axial rotation at the time of the first pelvic image as a function of the at least one of the distance, angle, or area of the first pelvic image and at least one of the distance, angle , or area of the second pelvic image, i.e. calculating the pelvic axial rotation based on the differences of the distance, angle, and or areas of the landmarks in the first and second pelvic image (for example see paragraphs 7, 50, and 60)
(claim 34) during a surgical procedure providing via a graphical user interface
(claim 34) information associated with the determined pelvic axial rotation (for example see paragraphs 9 and 51; pelvic tilt is a form of pelvic rotation)
(claim 35) the at least one computing device altering the offset of the hip as a function of the axial rotation, i.e. determining the position of the hip joint with a proposed hip implant (for example see paragraphs 111-118; for example see Figures 18-19)
(claim 35) the at least one computing device presenting on a graphical user interface the altered offset of the hip (for example see Figures 18-19)
Allowable Subject Matter
Claims 22-33 and 36-47 are allowable over the prior art. However, some of the claims are rejected under non-statutory double patenting as discussed above.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 22-33 and 36-47:
Regarding claims 22 and 36:
Schipper (U.S. Publication 2022/0249248) discloses a method comprising:
(claim 22) processing by at least one computing device
(claim 22) a second pelvic image presenting a 2-D lateral view of at least part of the pelvis (paragraphs 88-89)
(claim 22) a first pelvic image presenting a 2-D anterior-posterior view (paragraphs 88-89; for example see Figures 11, 15, 20, and 28)
(claim 22) measuring as a function of a plurality of identified anatomical landmarks at least one of
(claim 22) distances in the first and second pelvic image
(claim 22) angles in the first and second pelvic image
(claim 22) areas in the first and second pelvic image (for example see Figures 16-18; for example see paragraphs 107-110)
(claim 22) during a surgical procedure automatically determining by the at least one computing device
(claim 22) pelvic axial rotation at the time of the first pelvic image as a function of the at least one of the distance, angle, or area of the first pelvic image and at least one of the distance, angle , or area of the second pelvic image, i.e. calculating the pelvic axial rotation based on the differences of the distance, angle, and or areas of the landmarks in the first and second pelvic image (for example see paragraphs 7, 50, and 60)
(claim 22) during a surgical procedure providing via a graphical user interface
(claim 22) information associated with the determined pelvic axial rotation (for example see paragraphs 9 and 51; pelvic tilt is a form of pelvic rotation)
Regarding claims 36, Schipper discloses a system comprising at least one computing device configured to execute code to do the method steps discussed above.
Schipper fails to disclose the invention wherein the at least one computing device determines inclination of an implant in the first pelvic image.
The examiner was unable to find a reference or a combination of references that disclose and/or teach the limitations of the claims as presented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references the examiner felt were relevant to the application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775