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 and Amendment Filed
Applicant’s response and amendment, filed May 26, 2026, has been entered and made of record.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-7, 9-13 and 15-27 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fouts et al. (U.S. Patent Application Publication No. 2022/0265121).
In regard to claims 1-7, 13 and 15-27, Fouts et al. teach an endoscopy system 100 comprised of an endoscope 102 that extends from an endoscopic camera head 108 and includes one or more imaging sensors 110 (see Fig. 1 and para. 0185). Light reflected and/or emitted from the tissue 106 is received by the distal end 114 of the endoscope 102 and is propagated via one or more optical components to the camera head 108 where it is directed onto the one or more imaging sensors 110 (see para. 0185). The one or more imaging sensors 110 generate pixel data that can be transmitted to a camera control unit 112 that generates a video feed from the pixel data that shows the tissue being viewed by the camera (see Fig. 1 and para. 0186). The video feed can be transmitted to an image processing unit 116 for further image processing, storage, display and/or routing to an external device (see para. 0186). The image processing unit 116 can be communicatively coupled to an endoscope surgical pump 120 configured to control the inflow and outflow of fluid in an internal portion of a patient (see Fig. 1 and para. 0187). The imaging processing unit 116 can use the video data it processes to determine an adjusted pressure setting for the surgical pump 120 and can include an inflow portion 122 configured to deliver a clear fluid such as saline into the surgical cavity 104 (see para. 0187). The surgical pump 120 is configured to regulate the internal pressure of the surgical cavity by either increasing or decreasing the rate at which the inflow portion 122 pumps fluid into the surgical cavity 104 (see para. 0187). Fouts et al. teach that the video data cane be transmitted to a graphics processing unit (GPU) 304 which generates image frames and then classifiers can be applied to the images so as to determine what conditions (if any) are present in a given image or video that may require adjustment to the flow settings or pressure settings of the surgical pump (see Figs. 3 and 6 and paras. 0201-0202 and 0218). First, a joint classifier 306 determines the type of joint being viewed so that procedure steps can be determined (see para. 0202). As broadly as claimed, this constitutes a validity classification. The presence of different and varied instruments can be determined (see para. 0204 and 0219). Then, one or more image classifiers 316 configured to determine various conditions associated with the clarity of the image can be applied (see para. 0205). Figure 7 shows a process 700 that takes the captured images and processes them to identify one or more types of visual disturbances present in the images and uses the information to adjust the inflow/outflow or pressure settings of the surgical pump (see para. 0223). At step 710, the process 700 can apply a blood detection process to determine the presence of blood in the image, at step 712, the process 700 can apply a debris detection process to detect the presence of debris in the image and a step 714, the process 700 can apply a snow globe detection process to determine poor visibility (see Fig. 7 and para. 0226). Fouts et al. teach a process 800 for detecting blood in an image where an HSV converted image frame 706 is received at step 802 and at step 806, one or more bleeding regions are segmented within the image (see Fig. 8 and paras. 0228-0229). A bleeding or bleed region can be identified based on pixels that are within a certain range of HSV values (validity classification) (see para. 0228). One the bleeding regions have been segmented at step 806, at step 808 wherein a ratio of the area covered by bleeding regions over the total area shown in the image is calculated and this ratio represents how much blood is contained in a given image as a function of percentage of space of the total image area occupied by bleeding regions (blood presence classification)(see para. 0229). Then, at step 810, the calculated ratio is transmitted to the pump or a controller communicatively coupled to the pump that can adjust the flow settings of the pumps based on the determined ratio (see para. 0230). A predetermined threshold can be empirically determined or alternatively, or in addition, the predetermined threshold can be set based on the surgeon’s preferences (see para. 0230). The surgical pump can increase the pressure settings if the calculated ratio is greater than a pre-determined threshold or take no action if the ratio is below the pre-determined threshold (see para. 0230). In regard to claim 9, see paras. 0216 and 0230. In regard to claim 10, Fouts et al. teach default pressure settings that have minimum and maximum pressure limits (see paras. 0212-0215). In regard to claims 11 and 12, see para. 0220. With further respect to claim 25, Fouts et al. teach a tool 128 that is communicatively coupled to the surgical pump 120 (see Fig. 1 and para. 0188).
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of copending Application No. 18/601,253 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 17 of the ‘253 application contain all of the limitations of claim 1 of the instant application. Claim 1 of the instant application is broader than claims 1 and 17 of the ‘253 application as it does not contain the recitation of “output a control state for the surgical pump in response to the control setting.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-7, 9-13 and 15-27 have been considered but are moot in view of the new interpretation of the Fouts et al. reference (see above). Due to this new interpretation and the double patenting rejection (see above), this Office action is a second non-final Office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BEVERLY MEINDL FLANAGAN whose telephone number is (571)272-4766. The examiner can normally be reached Mon-Fri 7:30AM to 5:00PM.
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, Linda Dvorak can be reached at 571-272-4764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BEVERLY MEINDL FLANAGAN whose telephone number is (571)272-4766. The examiner can normally be reached Mon-Fri 7:30AM to 5:00PM.
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, Joanne Rodden can be reached at (303) 297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794
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