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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. § 119 (a)-(d). The certified copy has been filed in parent Application No. JP2021-170434, filed on 10/18/2021.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: in “a phase information acquisition unit that acquires,” “a three-dimensional medical image acquisition unit that acquires,” “an endoscopic image acquisition unit that acquires,” “a position specification unit that acquires,” “an output unit that outputs” claim 12. (emphasis added)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification1 as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 2 and 6–9 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.
Claim 2 recites the limitation “the basis of the information regarding the insertion distance” in claim 1. (emphasis added) There is insufficient antecedent basis for this limitation in the claim.
Claims 6–7 recite the limitation “the basis of the lung field endoscope” in claim 1. (emphasis added) There is insufficient antecedent basis for this limitation in the claim.
Claims 8–9 recite the limitation “the basis of the three-dimensional medical image” in claim 1. (emphasis added) There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1–10 are rejected under 35 U.S.C. § 101 because they are directed to non-statutory subject matter. The broadest reasonable interpretation of the claim in light of the specification2 (since there is no disclosure of a medium) concludes that the claim as a whole covers a transitory signal since the definition of “medium” leaves open the possibility that the medium could be transitory. Appropriate correction is required.3
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)(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 1 and 8–12 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Seiichi (WO 2012108085 A1).
Regarding claim 1, Seiichi discloses a computer-readable medium including a program for causing a computer to execute processing comprising:
acquiring information regarding a respiratory phase of a subject; (Per Fig. 3 at step S26, Seiichi’s medical devices 1A–1C acquire respiratory state. Seiichi p. 21. Medical devices 1A to 1C all acquire positional information according to the respiratory state and display VBS images, but each has its own unique method for acquiring live images (still endoscopic images) which are used as a comparison point for the VBS images.)
acquiring a three-dimensional medical image obtained by capturing an inside of a body of the subject in synchronization with the respiratory phase; (Per Fig. 2, Seiichi’s VBS image generation unit 13 discloses an image based on 3D image data. Ibid. pp. 6–7. The VBS image generation unit 13 generates a VBS image based on the 3D image data.)
acquiring an endoscopic image of the subject from a lung field endoscope; (Per Fig. 2, Seiichi’s endoscopic image processing unit 11 discloses an endoscopic image. Ibid. p. 6. The endoscopic image processing unit 11 processes the endoscopic image (hereinafter also referred to as "live image") captured by the imaging unit 35.)
specifying a position of the lung field endoscope in the three-dimensional medical image synchronized with the respiratory phase; and (Per Fig. 2, Seiichi’s viewpoint position setting unit 19 discloses a first position information of the 3D image. Ibid. p. 7. The viewpoint position setting unit 19 sets the first position information (viewpoint position information) of the VBS image to the position information (position, direction, and rotation angle) of the imaging unit 35 according to the determination result of the determination unit 18.)
outputting the specified position of the lung field endoscope in association with the three-dimensional medical image. (Per Fig. 3 at step S26, Seiichi discloses a current position of his instrument in the 3D image. Ibid. p. 20. [t]he position information acquired in the endoscopic coordinate system is converted to the CT coordinate system, and a VBS image corresponding to the current position of the treatment instrument is displayed.)
Regarding claim 11, Seiichi discloses an information processing method for causing a computer to execute processing comprising:
acquiring information regarding a respiratory phase of a subject; (Per Fig. 3 at step S26, Seiichi’s medical devices 1A–1C acquire respiratory state. Seiichi p. 21. Medical devices 1A to 1C all acquire positional information according to the respiratory state and display VBS images, but each has its own unique method for acquiring live images (still endoscopic images) which are used as a comparison point for the VBS images.)
acquiring a three-dimensional medical image obtained by capturing an inside of a body of the subject in synchronization with the respiratory phase; (Per Fig. 2, Seiichi’s VBS image generation unit 13 discloses an image based on 3D image data. Ibid. pp. 6–7. The VBS image generation unit 13 generates a VBS image based on the 3D image data.)
acquiring an endoscopic image of the subject from a lung field endoscope; (Per Fig. 2, Seiichi’s endoscopic image processing unit 11 discloses an endoscopic image. Ibid. p. 6. The endoscopic image processing unit 11 processes the endoscopic image (hereinafter also referred to as "live image") captured by the imaging unit 35.)
specifying a position of the lung field endoscope in the three-dimensional medical image synchronized with the respiratory phase; and (Per Fig. 2, Seiichi’s viewpoint position setting unit 19 discloses a first position information of the 3D image. Ibid. p. 7. The viewpoint position setting unit 19 sets the first position information (viewpoint position information) of the VBS image to the position information (position, direction, and rotation angle) of the imaging unit 35 according to the determination result of the determination unit 18.)
outputting the specified position of the lung field endoscope in association with the three-dimensional medical image. (Per Fig. at step S26, Seiichi discloses a current position of his instrument in the 3D image. Ibid. p. 20. [t]he position information acquired in the endoscopic coordinate system is converted to the CT coordinate system, and a VBS image corresponding to the current position of the treatment instrument is displayed.)
Regarding claim 12, Seiichi discloses an information processing device comprising:
a phase information acquisition unit that acquires information regarding a respiratory phase of a subject; (Per Fig. 3 at step S26, Seiichi’s medical devices 1A–1C acquire respiratory state. Seiichi p. 21. Medical devices 1A to 1C all acquire positional information according to the respiratory state and display VBS images, but each has its own unique method for acquiring live images (still endoscopic images) which are used as a comparison point for the VBS images.)
a three-dimensional medical image acquisition unit that acquires a three-dimensional medical image obtained by capturing an inside of a body of the subject in synchronization with the respiratory phase; (Per Fig. 2, Seiichi’s VBS image generation unit 13 discloses an image based on 3D image data. Ibid. pp. 6–7. The VBS image generation unit 13 generates a VBS image based on the 3D image data.)
an endoscopic image acquisition unit that acquires an endoscopic image of the subject from a lung field endoscope; (Per Fig. 2, Seiichi’s endoscopic image processing unit 11 discloses an endoscopic image. Ibid. p. 6. The endoscopic image processing unit 11 processes the endoscopic image (hereinafter also referred to as "live image") captured by the imaging unit 35.)
a position specification unit that specifies a position of the lung field endoscope in the three-dimensional medical image synchronized with the respiratory phase; and (Per Fig. 2, Seiichi’s viewpoint position setting unit 19 discloses a first position information of the 3D image. Ibid. p. 7. The viewpoint position setting unit 19 sets the first position information (viewpoint position information) of the VBS image to the position information (position, direction, and rotation angle) of the imaging unit 35 according to the determination result of the determination unit 18.)
an output unit that outputs the specified position of the lung field endoscope in association with the three-dimensional medical image. (Per Fig. at step S26, Seiichi discloses a current position of his instrument in the 3D image. Ibid. p. 20. [t]he position information acquired in the endoscopic coordinate system is converted to the CT coordinate system, and a VBS image corresponding to the current position of the treatment instrument is displayed.)
Regarding claim 8, Seiichi discloses the computer-readable medium, wherein operation support information regarding an operation of the lung field endoscope is output on the basis of the three-dimensional medical image in which the position of the lung field endoscope is specified. (Per Fig. 3 at step S26, Seiichi discloses a current position of his instrument in the 3D image. Seiichi p. 20. [t]he position information acquired in the endoscopic coordinate system is converted to the CT coordinate system, and a VBS image corresponding to the current position of the treatment instrument is displayed.)
Regarding claim 9, Seiichi discloses the computer-readable medium, wherein the operation support information includes information regarding a path to a region of interest derived on the basis of the 3D medical image. (Per Fig. 3 at step S26, Seiichi discloses a target area 6 corresponding to a position of his treatment instrument 8. Seiichi p. 20. By using the coordinate transformation formula, the correspondence between the position of the target area 6 and the position of the treatment instrument 8 in the CT coordinate system becomes clear.)
Regarding claim 10, it has been rejected in the same manner as claim 8.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2–3 are rejected under 35 U.S.C. § 103 as being unpatentable over Seiichi in view of Nishide et al. (U.S. 12,226,077 B2).
Regarding claim 2, Seiichi fails to specifically disclose the computer-readable medium, wherein the processing of specifying the position of the lung field endoscope includes the processing of:
acquiring, in association with the respiratory phase, information regarding an insertion distance of the lung field endoscope inserted into the body of the subject at a time point when the endoscopic image is captured; and
specifying the position of the lung field endoscope in the three-dimensional medical image synchronized with the respiratory phase on the basis of the information regarding the insertion distance associated with the respiratory phase.
In related art, Nishide discloses the computer-readable medium, wherein the processing of specifying the position of the lung field endoscope includes the processing of:
acquiring, in association with the respiratory phase, information regarding an insertion distance of the lung field endoscope inserted into the body of the subject at a time point when the endoscopic image is captured; and (Per Fig. 12, Nishide’s image processing unit 211 discloses information of insertion distance of his endoscope 40. Nishide col. 11 lines 26–46. The image processing unit 211 may output, to the information processing apparatus 6, information on the insertion distance (S coordinate) of the endoscope 40 that is output from a sensor disposed in the insertion portion 44 (flexible tube) of the endoscope 40 in order to measure a surrounding environment of the endoscope 40.)
specifying the position of the lung field endoscope in the three-dimensional medical image synchronized with the respiratory phase on the basis of the information regarding the insertion distance associated with the respiratory phase. (Per Fig. 12, Nishide’s viewpoint position calculation unit 622 discloses a viewpoint position at the distal end of his endoscope 40 to analyze a 3D medical image correlated to its coordinate. Ibid. col. 13 lines 11–36. Based on the acquired S coordinate, the viewpoint position calculation unit 622 calculates a coordinate (a coordinate in the internal body coordinate system) of the three-dimensional medical image corresponding to the S coordinate, that is, a viewpoint position at which the distal end portion 443 of the endoscope 40 is located.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Nishide into the teachings of Seiichi to provide efficient and accurate diagnosis analysis of an endoscope. Ibid. col. 1 lines 45–53.
Regarding claim 3, Seiichi fails to specifically disclose the computer-readable medium, wherein the three-dimensional medical image is reconstrued at a predetermined phase angle in the respiratory phase; and information regarding a correspondence situation between a phase angle of the acquired endoscopic image at the capturing time point and a phase angle of the three-dimensional medical image is output.
In related art, Nishide discloses the computer-readable medium, wherein the three-dimensional medical image is reconstrued at a predetermined phase angle in the respiratory phase; and (Per Fig. 12, Nishide’s endoscopic image generation unit 623 discloses a rotation angle in a coordinate system. Nishide col. 14 lines 29–48. [t]he virtual endoscopic image generation unit 623 sequentially generates a plurality of candidate virtual endoscopic images by changing a viewpoint direction, that is, a rotation angle (Θx, Θy, Θz) in a coordinate system of a three-dimensional medical image,)
information regarding a correspondence situation between a phase angle of the acquired endoscopic image at the capturing time point and a phase angle of the three-dimensional medical image is output. (Per Fig. 14, Nishide discloses that the insertion destination and the image analysis are synchronously conducted. Ibid. col. 17 lines 44–67. [i]nformation on an insertion direction, an insertion amount, or an insertion speed of the endoscope 40, from the viewpoint position and the direction of the endoscope 40 at the present time, that is, at the time of capturing the endoscopic image, to a target point indicating an insertion destination.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Nishide into the teachings of Seiichi to provide efficient and accurate diagnosis analysis of an endoscope. Ibid. col. 1 lines 45–53.
Claims 4 and 5 are rejected under 35 U.S.C. § 103 as being unpatentable over Seiichi in view of Nishide and further in view of Dougherty et al. (U.S. 10,573,008 B2).
Regarding claim 4, Seiichi as modified by Nishide, discloses the claimed invention, but fails to specifically disclose the computer-readable medium, wherein a plurality of the acquired 3D medial images is segmented in a plurality of phase units in the respiratory phase, and the position of the lung field endoscope is specified for each of the segmented 3D medical images.
In related art, Dugherty discloses the computer-readable medium, wherein a plurality of the acquired 3D medial images is segmented in a plurality of phase units in the respiratory phase, and (Through Figs. 6A–6C, Dougherty discloses segmentation of a patient’s airway applying an iterative region growing technique. Dougherty col. 13 lines 35–54. [s]egmentation of the airway may be accomplished using an iterative region growing technique wherein a seed voxel in the airway is selected as an initialization parameter.)
the position of the lung field endoscope is specified for each of the segmented 3D medical images. (Per Fig. 11A, Dougherty discloses a navigated surgical catheter to track a position of localization elements 610. Ibid. col. 20 lines 14–51. [t]he position and orientation (POSE) of localization elements 610 are tracked by localization device 76 of navigation system 70.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Dougherty into the teachings of Seiichi and Nishide to precisely segment a target tissue. Ibid. col. 1 lines 48–53.
Regarding claim 5, it has been rejected in the same manner as claim 4.
Claims 6–7 are rejected under 35 U.S.C. § 103 as being unpatentable over Seiichi in view of Dougherty.
Regarding claim 6, Seiichi fails to specifically disclose the computer-readable medium, wherein the three-dimensional medical image includes a real-time three-dimensional image captured using a CT fluoroscopy function in parallel with capturing of the endoscopic image by the lung field endoscope, and the position of the lung field endoscope is specified on the basis of the lung field endoscope included in the real-time three-dimensional image.
In related art, Dougherty discloses the computer-readable medium, wherein the three-dimensional medical image includes a real-time three-dimensional image captured using a CT fluoroscopy function in parallel with capturing of the endoscopic image by the lung field endoscope, and (Per Fig. 5C, Dougherty’s image dataset 400 is acquired by his 3D fluoroscopy system. Dougherty col. 17 lines 25–38. Accordingly, images from CT-Fluoro, fluoroscopic, ultrasound or 3D fluoroscopy may be imported into image analysis system 50 and/or navigation system 70.)
the position of the lung field endoscope is specified on the basis of the lung field endoscope included in the real-time three-dimensional image. (Per Fig. 11A, Dougherty discloses a navigated surgical catheter to track a position of localization elements 610. Ibid. col. 20 lines 14–51. [t]he position and orientation (POSE) of localization elements 610 are tracked by localization device 76 of navigation system 70.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Dougherty into the teachings of Seiichi to precisely segment a target tissue. Ibid. col. 1 lines 48–53.
Regarding claim 7, Seiichi fails to specifically disclose the computer-readable medium, wherein the 3D medical image includes an X-ray CT 3D image captured by an X-ray CT device and the real-time 3D image; and matching processing between the X-ray CT three-dimensional image and the real- time three-dimensional image is performed to specify the position of the lung field endoscope in the X-ray CT three-dimensional image on the basis of the lung field endoscope included in the real-time three-dimensional image.
In related art, Dougherty discloses the computer-readable medium, wherein the 3D medical image includes an X-ray CT 3D image captured by an X-ray CT device and the real-time 3D image; and (Per Fig. 5C, Dougherty’s image dataset 400 is acquired by his 3D fluoroscopy system. Dougherty col. 17 lines 25–38. Accordingly, images from CT-Fluoro, fluoroscopic, ultrasound or 3D fluoroscopy may be imported into image analysis system 50 and/or navigation system 70.)
matching processing between the X-ray CT three-dimensional image and the real- time three-dimensional image is performed to specify the position of the lung field endoscope in the X-ray CT three-dimensional image on the basis of the lung field endoscope included in the real-time three-dimensional image. (Per Fig. 6C, Dougherty discloses voxels of the 3D airway model 414 to match a location while a patient exhales. Ibid. col. 14 lines 32–60. [t]he voxels in the inspiration 3D airway model 410 are deformed to match the location, shape, and orientation of the airways of patient 10 at expiration.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Dougherty into the teachings of Seiichi to precisely segment a target tissue. Ibid. col. 1 lines 48–53.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Liu et al. (U.S. 9,861,271 B2) discloses a system for accounting for motion of a target.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENEDICT LEE whose telephone number is (571)270-0390. The examiner can normally be reached 10:00-17:00 (EST).
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, Stephen R. Koziol can be reached at (408) 918-7630. 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.
/BENEDICT E LEE/Examiner, Art Unit 2665
/Stephen R Koziol/Supervisory Patent Examiner, Art Unit 2665
1 A phase information acquisition unit construed as a processing unit in Applicant’s Spec. ¶50; a three-dimensional medical image acquisition unit 621 is embedded in an information processing device 6 in ¶58; an endoscopic image acquisition unit construed as an endoscope device 10 in ¶24; a position specification unit construed as a control unit 62 in ¶96; and output unit construed as an operation support information unit 624 in ¶67.
2 In light of Spec. ¶27, Applicant defines “portable recording medium such as a USB connector, a secure digital (SD) card slot, or a compact disc read only memory (CD-ROM) drive.” (emphasis added) However, claim 1 recites a “computer-readable medium” without the requisite “non-transitory” limitation. Under a broadest reasonable interpretation (BRI), the claim as written is significantly broader than the technical embodiments disclosed in the specification, extending to ineligible transitory signals (e.g., carrier waves). Therefore, the specification does not satisfy the threshold requirement for patent eligibility under 35 U.S.C. § 101.
3 Under In re Nuijten, transitory signals are not considered a “manufacture” under § 101, and therefore ineligible for patent protection. The Court held that a transitory signal—a carrier wave or electromagnetic transmission—is not a “manufacture” because it is not a physical, tangible entity. It is fleeting, lacks permeance, and does not fit within the traditional definition of a physical article of manufacture. See MPEP § 2106.03, II. ELIGIBILITY STEP 1: WHETHER A CLAIM IS TO A STATUTORY CATEGORY. Thus, a claim to a computer readable medium that can be a compact disc (emphasis added) or a carrier wave covers a non-statutory embodiment and therefore should be rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Prosecution Insights