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 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 8-9 and 15-16 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.
Claims 8-9 and 15-16 each require “the graphical indicator” which lacks antecedent basis in these claims. It appears that 8-9 should be dependent on claim 7 and claims 15-16 should be dependent on claim 13.
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(s) 1, 2, 5-6, 10-12, 17, and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Quaid (US 2004/0024311).
Claim 1, Quaid discloses a system (Figs. 1-9) having a navigation system (paragraph [0002]) for performing a procedure on a subject (abstract), comprising: an instrument (Fig. 1; 112) configured to interact with the subject (Fig. 1); a tracking device (paragraph [0038]) configured to be tracked and connected to the instrument (paragraph [0038]); a tracking system (paragraph [0038]) configured to track the tracking device (paragraph [0038]); a display device (Fig. 1; 30) configured to display at least an image of the subject (paragraph [0056]); a processor system (36) configured to execute instructions to: recall a working volume within which the working end of the instrument is selected to travel (paragraph [0036]); recall a non-working volume within which the working end of the instrument is not to travel (Fig. 3A-9; paragraphs [0036]-[0059]); determine the position of the working end relative to at least one of the working volume or non-working volume by tracking the tracking device with the tracking system (paragraphs [0036]-[0059]); and output to the display device at least one of (i) a first indication to a user of the determined position of the working end relative to at least one of the working volume or non-working volume (Figs. 3A-9; paragraphs [0036]-[0059]) or (ii) a second indication to the user of the determined position of the working end relative to at least one of the working volume or non-working volume (paragraphs [0036]-[0059]); wherein the first indication and the second indication are at a single indication position on the display device and the indication position changes from the first indication to the second indication based on a detected transition of the working end, as tracked by the tracking system, between the working volume and the non-working volume (paragraphs [0036]-[0059] and [0089]).
Claim 2, Quaid discloses the system of claim 1, wherein the single indication position gradually changes from the first indication to the second indication (paragraphs [0036]-[0059\ and [0089]).
Claim 5, Quaid discloses the system of claim 2, wherein the first indication is a first color of a portion of the displayed image of the subject and the second indication is a second color of the portion of the subject (paragraphs [0036]-[0059] and ]0124]).
Claim 6, Quaid discloses the system of claim 1, wherein the processor system is further configured to execute instructions to: change the output for display with the display device from the first indication to the second indication based upon a change in the determined position of the working end relative to at least one of the working volume or non-working volume (paragraphs [0038] and [0124]).
Claim 10, Quaid discloses the system of claim 1, wherein the processor system is further configured to execute instructions to provide an audible alert to the user, the audible alert having a first sound when the working end is in the working volume and a second, different sound when the working end is in the non-working volume (Fig. 5; paragraphs [0041], [0059], and [0090]).
Claim 11, Quaid discloses the system of Claim 1, wherein the processor system is further configured to execute instructions to provide haptic feedback to the user, the haptic feedback having a first tactile response when the working end is in the working volume and a second, different tactile response when the working end is in the non-working volume (paragraphs [0036]-[0037], [0041], [0050], [0058], [0130]).
Claim 12, Quaid discloses a system (Figs. 1-9) comprising: an instrument (Fig. 1; 112) configured to interact with a subject (Fig. 1); a tracking device (paragraph [0038]) configured to be tracked and connected to the instrument (paragraph [0038]); a tracking system (paragraph [0038]) configured to track the tracking device (paragraph [0038]); a display device (Fig. 1; 30) configured to display at least an image of the subject (paragraph [0056]); one or more memory circuits (36) configured to store data defining a working volume within which a working end of the instrument is selected to travel (paragraph [0036]) and a non-working volume within which the working end of the instrument is not to travel (Fig. 3A-9; paragraphs [0036]-[0059]); processing circuitry (36) operatively coupled to the one or more memory circuits (36), the processing circuitry configured to: determine the position of the working end relative to at least one of the working volume or non-working volume by tracking the tracking device with the tracking system (paragraphs [0036]-[0059]); and output to the display device at a single indication position (30) at least one of (i) a first indication to a user of the determined position of the working end relative to at least one of the working volume or non-working volume (Figs. 3A-9; paragraphs [0036]-[0059]) or (ii) a second indication to the user of the determined position of the working end relative to at least one of the working volume or non-working volume (paragraphs [0036]-[0059]); wherein the first indication and the second indication are at a single indication position on the display device and the indication position changes from the first indication to the second indication based on a detected transition of the working end, as tracked by the tracking system, between the working volume and the non-working volume (paragraphs [0036]-[0059] and [0089]).
Claim 17, Quaid discloses a system (Figs. 1-9) comprising: an instrument (Fig. 1; 112) configured to interact with a subject (Fig. 1); a tracking device (paragraph [0038]) configured to be tracked and connected to the instrument (paragraph [0038]); a tracking system (paragraph [0038]) configured to track the tracking device (paragraph [0038]); a display device (Fig. 1; 30) configured to display at least an image of the subject (paragraph [0056]); one or more memory circuits (36) configured to store data defining a working volume within which a working end of the instrument is selected to travel (paragraph [0036]) and a non-working volume within which the working end of the instrument is not to travel (Fig. 3A-9; paragraphs [0036]-[0059]); processing circuitry (36) operatively coupled to the one or more memory circuits (36), the processing circuitry configured to: determine the position of the working end relative to at least one of the working volume or non-working volume by tracking the tracking device with the tracking system (paragraphs [0036]-[0059]); provide to a user at least one of (i) a visual indication (Fig. 5; 30; paragraphs [0041], [0059], and [0089]-[0091]), (ii) an audible alert (Fig. 5; paragraphs [0041], [0059], and [0090]), or (iii) haptic feedback (paragraphs [0036]-[0037], [0041], [0050], [0058], [0130]), the at least one indication being based on whether the working end is within the working volume or the non-working volume, and the at least one indication changing in response to a detected transition of the working end, as tracked by the tracking system, between the working volume and the non-working volume (paragraphs [0036]-[0059] and [0089]).
Claim 19, Quaid discloses the system of claim 17, wherein the audible alert comprises a first sound when the working end is in the working volume and a second, different sound when the working end is in the non-working volume (Fig. 5; paragraphs [0041], [0059], and [0090]).
Claim 20, Quaid discloses the system of Claim 17, wherein the haptic feedback comprises a first tactile response when the working end is in the working volume and a second, different tactile response when the working end is in the non-working volume (paragraphs [0036]-[0037], [0041], [0050], [0058], [0130]).
Claim Rejections - 35 USC § 103
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Quaid (US 2004/0024311), in view of Abovitz et al. (US 2013/0053648; “Abovitz”).
Claim 3, Quaid discloses the system of claim 2 as noted above.
However, Quaid does not disclose using different colors or alerts based on the different positions of the tool.
Abovitz teaches a system that tracks a tool and indicates the position using changing colors (paragraph [0022]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to include changing color indications, as taught by Abovitz, in the system of Quaid, in order to help distinguish tool positions relative to the working zone (paragraph [0022]).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12004818.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include the same features plus extra.
Allowable Subject Matter
Claims 4, 7-9, 13-16, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 4 and 14 are allowable for similar reasons mentioned in the parent application 15997444.
Claims 7, 13, and 18 are allowable for similar reasons mentioned in the parent application 17338202. Claims 8-9 and 15-16 are believed to be intended to depend off claims 7 and 13 and would be allowable once the dependency is fixed.
Response to Arguments
Applicant's arguments filed January 27, 2026 have been fully considered but they are not persuasive. Quaid teaches the limitations as noted above. The Applicant points to each paragraph individually on how they do not teach the limitations. However, it is the combined understanding of the paragraphs as a whole that teaches the indication being at a single position (e.g. on the display screen) and changes based on the location of the working end being in the proper place or not.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Zade Coley whose telephone number is (571)270-1931. The examiner can normally be reached M-F (9-5) PT.
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, Kevin Truong can be reached at (571)272-4705. 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.
/Zade Coley/Primary Examiner, Art Unit 3775