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 .
Claim Objections
Claim 1 is objected to because of the following informalities: In line 5, the first “of” should be deleted. Appropriate correction is required.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Silverstein (US Pub 2010/0094116 -cited by applicant).
Re claim 1: Silverstein discloses a guidance system configured to dynamically guide a surgical needle catheter onto an organ of a patient comprising:
an electromagnetic catheter configured to be inserted into the patient and for defining a desired location to be reached by the surgical needle catheter [0110, 0130; Figs 11A-C, 13, 14B, 14D, 72; see the catheter with electromagnet and inserted into the patient to indicate a location for a needle catheter 126];
an electromagnetic tracker configured to track of a location and orientation of the surgical needle catheter [0134, 0136; see the magnetic detection device 118 which includes a display and EM tracking capability]; and
an electronic data processor [0134, 0136, Fig 11B; see the detection device which includes implied electronics components for determining/processing the displayed position of the magnet and distances] arranged for: continuously indicating a distance between A) an intersection of a line that is concurrent or coincident with the surgical needle catheter with a plane that intersects a tip of the EM catheter and that is perpendicular to the orientation of the surgical needle catheter, and B) the tip of the EM catheter [Fig 14A; 0143, 0144; the bomb sight is used to display the position of the magnet 116 of the EM catheter continuously; since the bomb sight is perpendicular to the direction that the needle is inserted, it is parallel to a plane that intersects a tip of the EM catheter (where the magnet is disposed) and which is also perpendicular to the orientation of the needle; an intersection of a line coincident with the needle with this plane is represented by the center of the crosshairs of the bomb sight and the distance between the center of the crosshairs and the displayed magnet (i.e. the tip of the EM catheter) is thereby indicated].
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16, 25, and 26 of U.S. Patent No. 11,944,344. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘344 features a system including an EM catheter, EM tracker, and processor for continuously indicating a distance between A) an intersection of a line that is concurrent or coincident with the surgical needle catheter with a plane that intersects a tip of the EM catheter and that is perpendicular to the orientation of the surgical needle catheter, and B) the tip of the EM catheter. While ‘344 does include additional limitations such as displaying a ring target and displaying a projection, the instant claims are broader and it would have been obvious to conclude that the instant claims are an obvious variant.
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.
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/MICHAEL T ROZANSKI/Primary Examiner, Art Unit 3797