Part III DETAILED ACTION
1. The present application is being examined under the pre-AIA first to invent provisions.
This application has been examined. This office action is in response to the amendment filed on 08/02/25. Claims 1-34 are pending in this application.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
2. Claims 1-34 are rejected on the ground of nonstatutory double patenting as being unpatentable
over claims 1-34 of U.S. Patent No. 12,016,633. Although the claims at issue are not identical, they
are not patentably distinct from each other because claims 1-34 of the instant application are
anticipated recited by the limitations of claims 1-34 of ‘633, such as claim 1 of the instant application
recites a method comprising: obtaining an image data set of a portion of a body of a person, wherein
the image data set includes a marker to identify an anatomical location (reads on the obtaining step of
‘633); identifying a spatial location using a physical pointer object in a field of view of an optical
sensor associated with an AR (augmented reality) headset (reads on the identifying step of ‘633);
registering the spatial location for a visible anatomical feature as identified using the physical pointer
object (reads on the registering step of ‘633); and aligning the image data set with the body of the
person using the spatial location recorded for the visible anatomical feature as referenced to the
marker in the image data set (reads on the aligning step of ‘633) . Clearly the features of independent
claims 1, 27 and 32 of the instant application are covered by the limitations of claims are described in
claims 1,27 and 32 of ‘633. With regard to claims 2-26, 27-31 and 32-34 of the instant application are
covered by the limitations of claims are described in claims 2-26, 27-31 and 32-34 of ‘633
3. 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.
4. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Gabriel I. Garcia whose telephone number is (571)
272-7434. The examiner can normally be reached Monday-Thursday from 7:30 AM-6:00 PM.. The fax
phone number for this group is (571) 273-8600.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Benny Tieu can be reached on (571) 272-7490. The fax phone
number for the organization where this application or proceeding is assigned is 571-
273-8300.
Information regarding the status of an application may be obtained from the Patent
Application Information Retrieval (PAIR) system. Status information for published
applications may be obtained from either Private PAIR or Public PAIR. Status
information for unpublished applications is available through Private PAIR only. For
more information about the PAIR system, see http://pair-direct.uspto.gov. Should you
have questions on access to the Private PAIR system, contact the Electronic Business
Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO
Customer Service Representative or access to the automated information system, call
800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Any inquiry of a general nature or relating to the status of this application should be
directed to the Group receptionist whose telephone number is (571) 272-2600.
/Gabriel I Garcia/
Primary Examiner, Art Unit 2682
October 07, 2025
