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 Amendment
This office action is responsive to the amendment received 05/14/2026.
In the response to the Non-Final Office Action 02/19/2026, the applicant states that claims 31-40 have been cancelled. New claims 41-50 have been added. Claims 21-30 and 41-50 are currently pending.
Claims 31-40 have been cancelled. Claims 41-50 have been added. In summary, claims 21-30 and 41-50 are pending in current application.
Response to Arguments
Applicant's arguments filed 05/14/2026 have been fully considered but they are not persuasive.
Regarding to nonstatutory double patenting rejections of claims 21-30, the applicant does not argue the nonstatutory double patenting rejections of claims 21-30 and does not amend claims to overcome the double patenting rejections of claims 21-30. Therefore, the examiner maintains the nonstatutory double patenting rejections of claims 21-30.
In the remarks received 05/14/2026, the applicant states “files this Terminal Disclaimer to expedite allowance of the pending claims”. However, the Terminal Disclaimer is not received and is not approved until 06/05/2026.
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.
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Claims 21-30 and 41-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. US 10912625 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations in claim 21 is anticipated by claim 1 of the U.S. Patent No. US 10912625 B2.
Application: 18649913
Claim 21
U.S. Patent No. US 10912625 B2
Claim 1
21. (Previously Presented) A method for generating a mediated reality view of a surgical site, the method comprising:
1. A method for generating a mediated reality view of a surgical site comprising:
receiving a pre-operative image representing three-dimensional anatomy of a patient in a first position;
receiving pre-operative images representing three-dimensional anatomy of a patient in a first position;
receiving real-time images from a camera array after the patient is positioned for surgery in a second position;
receiving real-time images from a camera array after the patient is positioned for surgery in a second position;
identifying, based on the pre-operative image and the real-time images, a set of features visible in both the pre-operative image and the real-time images;
identifying, based on the pre-operative images, coordinates in a three-dimensional pre-operative image space corresponding to locations of fiducial markers present on a patch applied to the patient;
identifying, based on the real-time images, coordinates in a three-dimensional real-time image space corresponding to the locations of the fiducial markers present on the patch applied to the patient;
utilizing an optimization algorithm to identify a transformation that minimizes a distance between first coordinates of the set of features in the pre-operative image with second coordinates of the set of features in the real-time images;
performing an optimization algorithm to identify the transformation that minimizes a distance between transformed coordinates of a pattern of the fiducial markers in the pre-operative images with the coordinates of the pattern in the real-time images;
applying the transformation to the pre-operative image to substantially align the pre- operative image with the real-time images;
applying a transformation to the pre-operative images to substantially align the locations of the fiducial markers in the pre-operative images to the locations of the fiducial markers in the real-time images, wherein applying the transformation comprises:
overlaying the transformed pre-operative image on the real-time images to generate the mediated reality view; and
overlaying the transformed pre-operative images on the real-time images to generate the mediated reality view; and
providing the mediated reality view to a display device for display.
providing the mediated reality view to a display device for display.
Claims 22-30 and 41-50
Claims 2-24
Claims 21-30 and 41-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 11376096 B2 in view of Chopra (US 20180092698 A1). Although the claims at issue are not identical, they are not patentably distinct from each other.
Application: 18649913
Claim 21
U.S. Patent No. US 11376096 B2
Claim 1
21. (Previously Presented) A method for generating a mediated reality view of a surgical site, the method comprising:
1. A method for generating a mediated reality view of a surgical site comprising:
receiving a pre-operative image representing three-dimensional anatomy of a patient in a first position;
receiving pre-operative images representing three-dimensional anatomy of a patient in a first position;
receiving real-time images from a camera array after the patient is positioned for surgery in a second position;
receiving post-positioning images captured after the patient is positioned for surgery in a second position;
identifying, based on the pre-operative image and the real-time images, a set of features visible in both the pre-operative image and the real-time images;
identifying, based on the pre-operative images and the post-positioning images, a set of corresponding features visible in the pre-operative images and the post-positioning images;
utilizing an optimization algorithm to identify a transformation that minimizes a distance between first coordinates of the set of features in the pre-operative image with second coordinates of the set of features in the real-time images;
applying the transformation to the pre-operative image to substantially align the pre- operative image with the real-time images;
applying a first transformation to the pre-operative images to substantially align locations of the corresponding features in the pre-operative images to respective locations in the post-positioning images to generate initial transformed pre-operative images;
capturing, by a camera array, real-time images of the patient;
overlaying the transformed pre-operative image on the real-time images to generate the mediated reality view; and
overlaying the initial transformed pre-operative images on the real-time images to generate an initial mediated reality view; and
providing the mediated reality view to a display device for display.
providing the initial mediated reality view to a display device for display.
Claims 22-30 and 41-50
Claims 2-20
The claim 1 of U.S. Patent No. US 11376096 B2 fails to explicitly discloses “utilizing an optimization algorithm to identify a transformation that minimizes a distance between first coordinates of the set of features in the pre-operative image with second coordinates of the set of features in the real-time images”. In same field of endeavor, Chopra (US 20180092698 A1) teaches “utilizing an optimization algorithm to identify a transformation that minimizes a distance between first coordinates of the set of features in the pre-operative image with second coordinates of the set of features in the real-time images” in paragraphs [0110], [0120], [0128-0129], and [0145]. The motivation for doing so would have been to improve the treatment of patients; to improve the coordination of patient data; to improve fidelity of identifying the position of the SDD, and produce a higher resolution image; to minimize the error when correlating the image data as taught by Chopra in paragraphs [0060], [0088], and [0145].
Claims 21-30 and 41-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 11998401 B2 in view of Chopra (US 20180092698 A1). Although the claims at issue are not identical, they are not patentably distinct from each other.
Application: 18649913
Claim 21
U.S. Patent No. US 11998401 B2
Claim 1
21. (Previously Presented) A method for generating a mediated reality view of a surgical site, the method comprising:
1. A method comprising:
receiving a pre-operative image representing three-dimensional anatomy of a patient in a first position; receiving real-time images from a camera array after the patient is positioned for surgery in a second position; identifying, based on the pre-operative image and the real-time images, a set of features visible in both the pre-operative image and the real-time images;
identifying, based on images of a patient in a first position and post-positioning images of the patient in a second position, a set of corresponding features visible in the images of the patient in the first position and the post-positioning images, wherein the images of the patient in the first position are captured prior to a surgery and the post-positioning images are captured after the patient is positioned for the surgery;
applying a first transformation to the images of the patient in the first position to substantially align locations of the corresponding features in the images of the patient in the first position to respective locations in the post-positioning images to generate initial transformed images;
receiving real-time images of the patient captured at least in part during the surgery;
utilizing an optimization algorithm to identify a transformation that minimizes a distance between first coordinates of the set of features in the pre-operative image with second coordinates of the set of features in the real-time images;
identifying three-dimensional coordinates of features in images of the patient in the first position and three-dimensional coordinates of features in the real-time images of the patient;
applying the transformation to the pre-operative image to substantially align the pre- operative image with the real-time images;
applying a second transformation to the initial transformed images of the patient in the first position based on the three-dimensional coordinates of features in images of the patient in the first position and three-dimensional coordinates of features in the real-time images of the patient to refine an alignment of the locations of features in the initial transformed images to locations of corresponding features in the real-time images to generate refined transformed images;
overlaying the transformed pre-operative image on the real-time images to generate the mediated reality view; and
overlaying the refined transformed images over the real-time images of the patient to generate an initial mediated reality view; and
providing the mediated reality view to a display device for display.
providing the initial mediated reality view to a display device for display.
Claims 22-30 and 41-50
Claims 2-20
The claim 1 of U.S. Patent No. US 11998401 B2 fails to explicitly discloses “utilizing an optimization algorithm to identify a transformation that minimizes a distance between first coordinates of the set of features in the pre-operative image with second coordinates of the set of features in the real-time images”. In same field of endeavor, Chopra (US 20180092698 A1) teaches “utilizing an optimization algorithm to identify a transformation that minimizes a distance between first coordinates of the set of features in the pre-operative image with second coordinates of the set of features in the real-time images” in paragraphs [0110], [0120], [0128-0129], and [0145]. The motivation for doing so would have been to improve the treatment of patients; to improve the coordination of patient data; to improve fidelity of identifying the position of the SDD, and produce a higher resolution image; to minimize the error when correlating the image data as taught by Chopra in paragraphs [0060], [0088], and [0145].
Allowable Subject Matter
Claims 21-30 and 41-50 would be allowable if overcoming the double patenting rejections.
Closest Reference Found
Closest prior art of record includes: Chopra (US 20180092698 A1) in view of Shahidi (US 7844320 B2), and further in view of Humphries (US 20130249907 A1) either alone or in combination, fail to anticipate or render obvious the limitations required in the claim or the claim as a whole as mentioned above.
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 Hai Tao Sun whose telephone number is (571)272-5630. The examiner can normally be reached 9:00AM-6:00PM.
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/HAI TAO SUN/Primary Examiner, Art Unit 2616
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