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 without traverse of Group I, claims 1-8 in the reply filed on December 29, 2025 is acknowledged.
Claims 9-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected claims, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 29, 2025.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,063,433 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-8 of this application are broader and encompass claims 1-7 of U.S. Patent No. 12,063,433 B2.
Regarding claim 1 of this application, claim 1 of U.S. Patent No. 12,063,433 B2 recites all the claimed limitations of claim 1. It is noted that claim 1 of this application is broader and encompasses claim 1 of U.S. Patent No. 12,063,433 B2.
Regarding claim 2 of this application, claim 1 of U.S. Patent No. 12,063,433 B2 recites all the claimed limitations of claim 1.
Regarding claims 3-8 of this application, claims 2-7 of U.S. Patent No. 12,063,433 B2 recite all the claimed limitations of claims 3-8, respectively.
Claim Rejections - 35 USC § 102
6. 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.
7. Claims 1, 3-4 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipate by Dorman (US Patent No. 10,123,840 B2).
In considering claim 1, Dorman discloses all the claimed subject matter, note 1) the claimed a camera operable to capture a target image is met by the camera 320 (Fig. 3A, col. 4, lines 31-62), 2) the claimed a display screen configured to display the target image is met by the display 360 (Fig. 3A, col. 5, lines 51-60 and col. 8, lines 6-35), 3) the claimed an orientation sensor configured to determine an orientation of the orientation calibration system is met by the gyroscope 332 which includes more than one sensing axes of rotation, such as three axes of rotation for detecting changes in orientation (Fig. 3A, col. 5, lines 2-41), 4) the claimed one or more processors configured to: receive a present orientation of the orientation calibration system is met by the processor 350 which detects the orientation of the apparatus 300 (Fig. 3A, col. 4, lines 29-50), 5) the claimed display at least a portion of the present orientation of the orientation calibration system and a desired orientation of the orientation calibration system on the display screen is met by the display 360 which displays the angle-indicative line to the user and provides a notification when the apparatus is approximately aligned with the predefined desired angle (Fig. 3A, col. 5, lines 51-60), and 6) the claimed capture the target image using the camera in response to receiving the request to capture the target image, and when a difference between the present orientation of the orientation calibration system and the desired orientation of the orientation calibration system is within a threshold is met by using the camera button 640 to take a picture of the vertebra when the axis 305 has reached the desired angle or within an acceptable range of the desired angle (Fig. 3A, col. 5, lines 51-59 and col. 9, lines 29-61).
In considering claim 3, the claimed wherein the one or more processors is further configured to generate a notification when the difference between the present orientation of the orientation calibration system and the desired orientation of the orientation calibration system is within a threshold is met by providing notification when the axis 305 has reached the desired angle or within an acceptable range of the desired angle (Fig. 3A, col. 5, lines 51-59 and col. 9, lines 29-61).
In considering claim 4, the claimed wherein the notification is generated by the orientation calibration system and may include at least one from the group that includes a visual notification on the display screen, an auditory notification using a speaker of the orientation calibration system, and a tactile notification to generate a vibratory movement is met by visual alert or an audio alert (col. 7, lines 23-60).
In considering claim 6, the claimed wherein the orientation calibration system is implemented as part of a medical alignment device is met by the medical system (col. 1, lines 19-26).
In considering claim 7, the claimed wherein the one or more processors are configured to capture the target image upon receiving both the request to capture the target image, and after the difference between the present orientation of the orientation calibration system and the desired orientation of the orientation calibration system is within the threshold is met by using the camera button 640 to take a picture of the vertebra when the axis 305 has reached the desired angle or within an acceptable range of the desired angle (Fig. 3A, col. 5, lines 51-59 and col. 9, lines 29-61).
In considering claim 8, the claimed wherein the request to capture the target image is received after the difference between the present orientation of the orientation calibration system and the desired orientation of the orientation calibration system is within the threshold is met by using the camera button 640 to take a picture of the vertebra when the axis 305 has reached the desired angle or within an acceptable range of the desired angle (Fig. 3A, col. 5, lines 51-59 and col. 9, lines 29-61).
Claim Rejections - 35 USC § 103
8. 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.
9. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Dorman (US Patent No. 10,123,840 B2).
In considering claim 5, the claimed wherein the one or more processors is further configured to generate a graphical element to display the at least a portion of the present orientation of the orientation calibration system and the desired orientation on the display screen, and wherein the graphical element includes a circle or an object on the display screen, and wherein the circle or the object changes color when the difference between the present orientation of the orientation calibration system and the desired orientation of the orientation calibration system is within the threshold is met by displaying a movable marker (crosshairs 633) (Figs. 6A-6D, col. 7, lines 23-60 and col. 9, lines 9-61 of Dorman). However, Dorman explicitly does not disclose the claimed the graphical element includes a circle or object movable in a curved track on the display screen. It was notoriously well-known in the art before the effective filing date of the claimed invention to incorporate the graphical element includes a circle or object movable in a curved track on the display screen into Dorman’s system in order to select alternative equivalent graphical element to display.
Allowable Subject Matter
10. Claim 2 is 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.
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Drain (US 2020/0237446 A1) disclose surgical instrument with led lighting and absolute orientation.
Wallace et al. (US Patent No. 11,020,016 B2) disclose system and method for displaying anatomy and devices on a movable display.
Christian et al. (US Patent No. 10,335,237 B2) disclose visual orientation aid for medical instruments.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRANG U TRAN whose telephone number is (571)272-7358. The examiner can normally be reached M-F 10:00AM- 6:00PM.
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January 24, 2026
/TRANG U TRAN/Primary Examiner, Art Unit 2422