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 .
Election/Restrictions
Applicant's election with traverse of claim 21-37 in the reply filed on September 22, 2025 is acknowledged. The traversal is successful. All restriction issued in the Office Action Dated on July 23, 2025 have been withdrawn.
In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Status of Claims
Claims 21-40 are pending and are currently under consideration for patentability under 37 CFR 1.104.
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 40 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 12,076,094. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘094 anticipate a system comprising: a fluoroscope configured to capture fluoroscopic images of a portion of anatomy of a patient; an acetabular cup impaction instrument adapted to impact an acetabular cup into an acetabula of the patient; and a computing device including a processor and a memory device, the memory device including instructions that, when executed by the processor, cause the processor to perform operations including: determining a first acetabular cup ellipse within a first fluoroscopic image generated by the fluoroscope, the first fluoroscopic image including the acetabular cup impaction instrument in a first position, the acetabular cup impaction instrument including the acetabular cup affixed to a distal end; determining a second acetabular cup ellipse within a second fluoroscopic image generated by the fluoroscope, the second fluoroscopic image including the acetabular cup impaction instrument in a second position; aligning an instrument coordinate system to an image coordinate system associated with the fluoroscope using the first acetabular cup ellipse and the second acetabular cup ellipse; receiving a target inclination and a target anteversion for impaction of the acetabular cup; and generating commands to position the acetabular cup impaction instrument into a position and an orientation to align the acetabular cup to the target inclination and the target anteversion (claim 20).
Allowable Subject Matter
Claims 21-39 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art fail to teach:
A: acquiring a calibration image from a medical imaging device, the calibration image including a portion of the anatomy and an instrument in a first position and orientation relative to a virtual coordinate system, the instrument including a cup-shaped element affixed to a distal end; identifying a first plurality of patient landmarks on the portion of the anatomy in the calibration image; identifying a first elliptical outline of an opening of the cup-shaped element in the calibration image; acquiring a navigation image from the medical imaging device, the navigation image including the portion of anatomy, the cup-shaped element and the instrument at a second position and orientation; identifying a second plurality of patient landmarks on the portion of anatomy in the navigation image; identifying a second elliptical outline of the opening of the cup-shaped element in the navigation image; aligning the virtual coordinate system to a frame of reference of the anatomy of the patient using the first elliptical outline and the second elliptical outline; and output a registration transformation between the virtual coordinate system and the frame of reference of the anatomy of the patient.
B: determining a first acetabular cup elliptical outline within a first fluoroscopic image including an acetabular cup impaction instrument in a first position, the acetabular cup impaction instrument including an acetabular cup affixed to a distal end; determining a second acetabular cup elliptical outline within a second fluoroscopic image including the acetabular cup impaction instrument in a second position; and aligning a virtual coordinate system to a target coordinate system associated with the first fluoroscopic image and the second fluoroscopic image using the first acetabular cup elliptical outline and the second acetabular cup elliptical outline, wherein the target coordinate system is one of a coordinate system relative to a fluoroscopic imaging device or a coordinate system relative to anatomy of a patient.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BO JOSEPH PENG whose telephone number is (571)270-1792. The examiner can normally be reached Monday thru Friday: 8:00 AM-5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH M RAYMOND can be reached at (571)270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BO JOSEPH PENG/Primary Examiner, Art Unit 3798