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 .
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 9-20 (“present claims”) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 9, and 11-20, respectively of U.S. Patent No. 12,161,427 (“patent claims”). Although the claims at issue are not identical, they are not patentably distinct from each other because they would have been anticipated by the patented claims.
Present claim:
Patent claim:
9. A registration fixture for registration of a medical image to a three-dimensional tracking space comprising: a base frame adapted to be mounted to an x-ray medical imaging device; an orientation plate attached to the base frame comprising a first set of radiopaque markers arranged along a plurality of radial lines extending from a center location and at least three of the radiopaque markers are arranged along each radial line of the plurality of radial lines; and a registration plate attached to the base frame and spaced apart from the orientation plate, the registration plate having a second set of radiopaque markers.
10. The registration fixture of claim 9, wherein the second set of radiopaque markers are arranged along a circle.
9. A registration fixture for registration of a medical image to a three-dimensional tracking space comprising: a base frame adapted to be mounted to an x-ray medical imaging device; an orientation plate attached to the base frame and having a first set of radiopaque markers arranged along at least four radial lines which extend from a center location, the radial lines are angularly spaced apart about the center location, and at least three of the radiopaque markers are arranged along each of the radial lines; and a registration plate attached to the base frame and spaced apart from the orientation plate, the registration plate having a second set of radiopaque markers arranged along a circle.
Present claims 11-20 appear to directly respond to Patent claims 11-20.
Allowable Subject Matter
Claims 1-8 are allowed.
Claims 9-20 would be allowable if rewritten or amended to overcome the Double Patenting rejection(s) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Wan (US 2022/0346831 A1) discloses a system for medical imaging, including a needle guide comprising a pair of plates (Fig. 17), each comprising a pattern of radiopaque markers (89, radiopaque lines).
Wolf et al. (US 2022/0142730 A1) discloses a medical marking device (abstract) comprising a radiotransparent plate having a plurality of radiopaque elements embedded therein in a predefined pattern (par. [0022]).
Eslami et al. (US 2020/0397370 A1) discloses a system for locating a position in a body (abstract) comprising two sets of radiopaque markers on a first and second longitudinal axis (par. [0004]).
Izmirli et al. (US 2019/0328482 A1) discloses a registration plate for use with a medical imaging system for calculation of a position in a 3D and 2D coordinate system (abstract) comprising a plurality of fiducial markers in predefined patterns (par. [0033], Fig. 6-9).
With respect to claims 1 and 9, the cited prior art does not appear to disclose or reasonably suggest: an orientation plate attached to a base frame and having a first set of radiopaque markers arranged along at least four radial lines which extend from a center location, the radial lines are angularly spaced apart about the center location, and at least three of the radiopaque markers are arranged along each of the radial lines; and a registration plate attached to the base frame and spaced apart from the orientation plate, the registration plate having a second set of radiopaque markers, as claimed.
Claims 2-8 are allowable for reasons of dependency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK R GAWORECKI whose telephone number is (571)272-8540. The examiner can normally be reached Monday-Friday 8 AM-6 PM.
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/MARK R GAWORECKI/Primary Examiner, Art Unit 2884 10 February 2026