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 .
Claim Interpretation
Claim interpretation: "determinable"
Claims 1 and 10 recite the phrase "wherein the first location is determinable based on…" See last clause. The verbal phrase “is determinable” indicates in English that there is the ability to perform the gerund function; but there is no requirement to perform that function. This interpretation is analogous to: 1) "For example, the ferrule or connector member is crimpable but not required, structurally, to be crimped." In re Collier, 397 F.2d 1003, 1006 (CCPA 1968), and 2) "capable of" in MPEP 2114 (IV).
Claim 1 is directed to a surgical imaging device and comprises of a single element, namely a "processor" having the functions of "capture…, communicate…, and identify…." These functions are taken to be algorithms. As the claim requires that "the first location is determinable base on…," the claim is being interpreted that the processor does not require an algorithm that determines the first location in the claimed manner in which it can be determined. The same interpretation applies to dependent claims 2-9.
Claim 10 is directed to a methods performed by a surgical imaging device and positively recites steps of "capturing…, communicating…, and identifying…" These are clearly steps of the method because each are listed separately by an indented line ("Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation." 37 C.F.R. 1.75(i)) and use a present participle. An undisputable method claim has clauses that are designated by a present participle and separated with a comma (or a semicolon that includes a comma). See Credle v. Bond, 25 F.3d 1566, 1572 (Fed. Cir. 1994). The recitation of "wherein the first location is determinable based on…" is not taken to mean that the determination is made in the manner in which it is determinable for these reasons and reason discussed above. he same interpretation applies to dependent claims 11-18.
Claim interpretation - 35 U.S.C. 112(f)
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 limitation(s) is/are:
"processor…" in claims 1-9. See WSOU Investments LLC v. Google LLC, Nos. 2022-1063, 2022-1065 (Fed. Cir. 2023)), where "processor" was found to invoke 35 U.S.C. § 112(f) and it was held "As such, there is no categorical rule regarding whether the term 'processor' connotes sufficient structure to avoid interpretation in means-plus-function format" (page 8).
"first surgical imaging device" in claims 10-18.
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 specification 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 § 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 the claimed invention is directed to a judicial exception, abstract idea, without significantly more.
Step 1: Claim 1 is directed to product and claim 10 is directed to a process and are thus one of the statutory categories of invention.
Step 2A:
A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception.
Examiner notes that independent claims 1 and 10 recite the step of –identify, based on the registration information, a first location, within the first imaging data stream, associated with the visualized surgical structure all fall under the grouping of
The determining of the first location is done by mathematics. See paragraphs [0150]-[0158] of the specification as published. Alternatively, the location can be performed in the human mind by looking at two images of different perspectives of the same scene, compare the common landmarks, shapes, and their orientation and determine the location. The determination of the location does not require calculating numerical coordinates in space, but only requires a generic location.
Hence under Prong One of Step 2A, claim 1 recites a judicial exception.
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
The only additional elements recited by the claims, beyond the judicial exception, are recitations of a processor in claim 1. The focus of the claim is not on improvement in processors, but on using a processor as a tool. Steps that do nothing more than spell out what is means to “apply it on a computer” cannot confer patent eligibility. Thus, the claimed limitations are not indicative of integration into a practical application.
Hence, under Prong Two of PEG 2019, the independent claims do not integrate the abstract idea into a practical application.
For the above reasons, claims are ineligible under Step 2A.
Step 2B:
In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
Claim 1 recites the steps of "capture a first imaging data stream…" and "communicate registration information…." These steps are directed to gathering information in order to perform the abstract idea of identifying the location. These do not amount to significantly more as data gathering is insignificant extra-solution activity.
Hence, the claim is ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to a judicial exception without significantly more.
Claims 2-9 and 11-18 are not found to add additional elements/significantly more.
Dependent claims 2, 7, 11, 12, and 16 are directed to the mathematical calculation of the abstract idea.
Dependent claims 3-8 and 12-16 recite the imaging devices are intra-operative, endoscopes, laparoscope, etc. which do not add significantly more because these elements are not elements of the claimed device but rather the claims identify the source of the insignificant data gathering. In addition, these instruments are well known/conventional for providing image data.
Dependent claims 9 and 18 recite that the data is gathered at the same time. This does not add significantly more because the recitation is directed to how the processor intended to be used for claim 9, and do not add to the claimed processor/algorithm. Furthermore, the intended manner of use is also directed to the insignificant data gathering and capturing images at the same time is well known and conventional for the insignificant gathering of data.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends.
Claims 5 depends on claim 1 which is drawn to the structure of an imaging device that comprises a processor and algorithm for performing the claimed functions. No other structure is recited to be an element of the device save the processor and algorithm. The recited is not an element of the device but rather the datastream is an object intended to be worked upon by the device that comprises the processor/algorithm. Dependent claim 5 describes the object that is imaged and what the reference landmark is. These are in digital form within the recited datastream and therefore are also not an element of the claimed device. As such, the object and the landmark are not found to further limit the structure of the processor or algorithm, because no additional structure is recited as being an element of the device, nor narrow the scope of the processor and algorithm. Rather, claim 5 limits the datastream. See MPEP 2115. Because the structure covered by claim 5 is the same as the structure covered by claim 1, claim 5 does not further limit claim 1 and thus, is rejected under 35 U.S.C. § 112(d).
Claim 9 depends on claim 1 which is drawn to the structure of an imaging device that comprises a processor and algorithm for performing the claimed functions. No other structure is recited to be an element of the device save the processor and algorithm. Dependent claim 9 is not found to further limit the structure of the processor or algorithm, because no additional structure is recited as being an element of the device, nor narrow the scope of the processor and algorithm. Rather, claim 5 recites how the imaging device is intended to be used., i.e., at the same time as the second imaging device. Because the structure covered by claim 9 is the same as the structure covered by claim 1, claim 9 does not further limit claim 1 and thus is rejected under 35 U.S.C. § 112(d).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shelton et al. (US 2023/0116781).
Sheldon shows:
1. A first surgical imaging device (control system 133) comprising:
a processor (processor 172) configured to:
capture a first imaging data stream of a visualized surgical structure (Para. [0124]: "The first and second video output signals 640, 642 include data representative of the position of the critical structure on a three-dimensional surface model, which is provided to an integration module 643.");
communicate registration information with a second surgical imaging device capturing a second imaging data stream of the visualized surgical structure (Para. [0124]); and
identify, based on the registration information, a first location, within the first imaging data stream, associated with the visualized surgical structure (Para. [0168]: "In particular, characterizing, identifying, and/or visualizing surgical instruments (including their positions, orientations, and actions), tissues, structures, users, and/or other things located within the surgical field "; [Para. 0198]: "In general, identifying, determining a location of, and determining an orientation of a first and second imaging systems relative to one another can allow for controlling cooperative surgical imaging interactions.")
wherein the first location is determinable based on (This "wherein" clause does not serve to distinguish for reasons discussed above in the Claim Interpretation section above pertaining to the term "determinable"; In addition Shelton teaches the limitations) a first reference geometry associated with a field of view of the first surgical imaging device, a second reference geometry associated with a field of view of the second surgical imaging device (Para. [0198]: "determining a location of, and determining an orientation of a first and second imaging systems relative to one another"; Para. [0124]:"e.g., via triangularization algorithms 644"; please note that "reference geometry" is not limited to "reference plane"), a transformation between the first reference geometry and the second reference geometry (The "transformation" is not taken to be any particular transformation. See "conversion algorithm" of Para. [0124]), and a reference landmark common to the first imaging data stream and the second imaging data stream (Para. [0200]:"For another example, a first imaging system located on a first side of a tissue wall can be configured to use common anatomic landmarks to detect a location and orientation of a second imaging system").
2. The first surgical imaging device of claim 1, wherein the processor is further configured to calculate the transformation between the first reference geometry and the second reference geometry based on a first physical orientation of the first surgical imaging device, a second physical orientation of the second surgical imaging device, and the reference landmark (The "transformation" is not taken to be any particular transformation. Para. [0198]: "determining a location of, and determining an orientation of a first and second imaging systems relative to one another" See also Para. [0124]: "The foregoing conversion logic can encompass the conversion logic circuit 648 intermediate video monitors 652 and the camera 624 / laser pattern projector 630 positioned at the surgical site 627" where the conversion logic is referring to "The first and second video output signals 640, 642 include data representative of the position of the critical structure on a three-dimensional surface model, which is provided to an integration module 643. In combination with data from the video out processor 608 of the spectral control circuit 602, the integration module 643 is configured to determine the distance (e.g., distance dA of FIG. 1) to a buried critical structure (e.g., via triangularization algorithms 644), and the distance to the buried critical structure can be provided to the image overlay controller 610 via a video out processor 646").
3. The first surgical imaging device of claim 1, wherein the first surgical imaging device is an intraoperative imaging device (Para. [0086]: "the surgical visualization system 100 can be used intraoperatively") and the second surgical imaging device is a pre-operative imaging device (this is not an element of the claimed imaging device, but rather an object intended to be used in conjunction with the claimed imaging device and thus it does not impart distinguishing structure from Shelton) and wherein the processor is further configured to calculate the transformation between the first reference geometry and the second reference geometry based on a difference between a first patient position during capture of the first imaging data stream and a second patient position during capture of the second imaging data stream (see citation given for claim 2).
4. The first surgical imaging device of claim 1, wherein the first surgical imaging device is an intraoperative imaging device (Para. [0086]: "the surgical visualization system 100 can be used intraoperatively") and the second surgical imaging device is a pre-operative imaging device (this is not an element of the claimed imaging device, but rather an objected intended to be used in conjunction with the claimed imaging device and thus it does not impart distinguishing structure from Shelton. In addition see para. [0081]:"A surgical visualization system can allow for intraoperative identification"), wherein the first imaging data stream is captured with a patient in a first patient position and the second imaging data stream is captured with the patient in a second patient position, and wherein the reference landmark comprises an anatomical structure that has relatively little movement between capture of the first and second imaging data streams (see citation given for claim 2).
5. The first surgical imaging device of claim 1, wherein the visualized surgical structure comprises an object to be removed from a patient (this claim does not serve to distinguish for reasons discussed above in the rejection of claim 5 under 35 U.S.C. § 112(d). In addition, see para. [0130]: "the tumor 324 being visualized on a display screen associated with or coupled to the imaging system,…to ensure complete removal of the tumor 324"), and wherein the reference landmark comprises an anatomical structure of the patient (This limitation is drawn to the intended operation of the device and thus does not serve to structurally distinguish from Shelton. See also para. [0200]:"a first imaging system located on a first side of a tissue wall can be configured to use common anatomic landmarks").
6. The first surgical imaging device of claim 1, wherein the first surgical imaging device is an endoscopic device, the second surgical imaging device is a laparoscopic device (this is not an element of the claimed imaging device, but rather an objected intended to be used in conjunction with the claimed imaging device and thus it does not impart distinguishing structure from Shelton), the first surgical imaging device and the second surgical imaging device are separated by a tissue barrier (This limitation is drawn to the intended operation of the device and thus does not serve to structurally distinguish from Shelton. Also, See Paras. [0007]-[0008]).
7. The first surgical imaging device of claim 6, wherein the processor is further configured to calculate the transformation between the first reference geometry and the second reference geometry based on one or more lights projected, by the laparoscopic device, through the tissue barrier, and detected by the endoscopic device (The recitation to the light projected, the laparoscopic device, tissue barrier, and endoscopic device are not elements of the claimed device nor found to impart any particular logic to the algorithm within the processor. As to the transformation between the reference geometries, see the discussion for claim 1. See also para. [0016] regarding the tissue barrier: "the second imaging device can have a point of view from a first side of a tissue wall, the first imaging device can have a point of view from a second side of the tissue wall that is opposite to the first side of the tissue wall").
8. The first surgical imaging device of claim 1, wherein the processor is further configured to:
generate an augmented reality (AR) overlay of the first imaging data stream, the second imaging data stream, based on the transformation between the first reference geometry and the second reference geometry, wherein the AR overlay depicts the first imaging data stream and the second imaging data stream overlapped onto one another based on the transformation(Para. [0116]: "For example, the control system 600 can be employed to create of three-dimensional data set for surgical use in a system with augmentation image overlays."); and
output the AR overlay to a display device for displaying (Para. [0126]: "The video monitors 652 are configured to output the integrated/augmented views from the image overlay controller 610").
9. The first surgical imaging device of claim 1, wherein the first surgical imaging device and the second surgical imaging device are capturing video data at the same time (implicit; Para. [0019]: "a surgical method includes gathering, with a first imaging device, first images of a surgical site during performance of a surgical procedure, gathering, with a second imaging device, second images of the surgical site during the performance of the surgical procedure").
10. A method performed by a first surgical imaging device, the method comprising (See citations given for claim 1 above):
capturing a first imaging data stream of a visualized surgical structure;
communicating registration information with a second surgical imaging device capturing a second imaging data stream of the visualized surgical structure; and
identifying, based on the registration information, a first location, within the first imaging data stream, associated with the visualized surgical structure, wherein the first location is determinable based on: a first reference geometry associated with a field of view of the first surgical imaging device, a second reference geometry associated with a field of view of the second surgical imaging device, a transformation between the first reference geometry and the second reference geometry, and a reference landmark common to the first imaging data stream and the second imaging data stream.
11. The method of claim 10, wherein the method further comprises calculating the transformation between the first reference geometry and the second reference geometry based on a first physical orientation of the first surgical imaging device, a second physical orientation of the second surgical imaging device, and the reference landmark (See citations given for claim 2 above).
12. The method of claim 10, wherein the first surgical imaging device is an intraoperative imaging device and the second surgical imaging device is a pre-operative imaging device, and wherein the method further comprises calculating the transformation between the first reference geometry and the second reference geometry based on a difference between a first patient position during capture of the first imaging data stream and a second patient position during capture of the second imaging data stream (See citations given for claim 3 above).
13. The method of claim 10, wherein the first surgical imaging device is an intraoperative imaging device and the second surgical imaging device is a pre-operative imaging device (Para. [0116]: "techniques can be employed both intraoperatively and preoperatively using additional visual information"), wherein the first imaging data stream is captured with a patient in a first patient position and the second imaging data stream is captured with the patient in a second patient position (implicit; furthermore the first and second patient position covers both the same position and different position), and wherein the reference landmark comprises an anatomical structure that has relatively little movement between capture of the first and second imaging data streams (Para. [0200]: "For another example, a first imaging system located on a first side of a tissue wall can be configured to use common anatomic landmarks to detect a location and orientation of a second imaging system located on a second, opposite side of the tissue wall.").
14. The method of claim 10, wherein the visualized surgical structure comprises an object to be removed from a patient (Para. [0130]:"The margin 330 can indicate the area or amount of tissue that should be excised to ensure complete removal of the tumor 324."), and wherein the reference landmark comprises an anatomical structure of the patient (Para. [0200]:"For another example, a first imaging system located on a first side of a tissue wall can be configured to use common anatomic landmarks to detect a location and orientation of a second imaging system located on a second, opposite side of the tissue wall.").
15. The method of claim 10, wherein the first surgical imaging device is an endoscopic device, the second surgical imaging device is a laparoscopic device, the first surgical imaging device and the second surgical imaging device are separated by a tissue barrier (Para. [0007]: "The first imaging system is…a laparoscopic imaging system. The method also includes visualizing, with an endoscopic imaging system, a second, opposite side of the tissue wall during the performance of the surgical procedure.").
16. The method of claim 15, wherein the method further comprises calculating the transformation between the first reference geometry and the second reference geometry based on one or more lights projected, by the laparoscopic device, through the tissue barrier, and detected by the endoscopic device (This limitation is not required to be performed because it is directed to the "determinable" clause of claim 10 as discussed above in the Claim Interpretation section above).
17. The method of claim 10, wherein the method further comprises: generating an augmented reality (AR) overlay of the first imaging data stream, the second imaging data stream, based on the transformation between the first reference geometry and the second reference geometry, wherein the AR overlay depicts the first imaging data stream and the second imaging data stream overlapped onto one another based on the transformation; and outputting the AR overlay to a display device for displaying (see citations for claim 8).
18. The method of claim 10, wherein the first surgical imaging device and the second surgical imaging device are capturing video data at the same time (see citations for claim 9).
Claim(s) 1-11, 14, 15, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Charles et al. (US 2023/0116781).
Charles shows:
1. A first surgical imaging device (Fig 14) comprising:
a processor (control system 384) configured to:
capture a first imaging data stream of a visualized surgical structure (Para. [0124]: "image processing system is described as receiving and/or outputting imagery, images, and/or video.");
communicate registration information with a second surgical imaging device capturing a second imaging data stream of the visualized surgical structure (Para. [0309]: "In certain implementations, a target structure with alignment features can be included in a field of view of one or more cameras to assist in feature-based alignment methods"); and
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identify, based on the registration information, a first location, within the first imaging data stream, associated with the visualized surgical structure (Para. [0309]: "In certain implementations, a target structure with alignment features can be included in a field of view of one or more cameras to assist in feature-based alignment methods"; Para. [0322]: "the image processing system can identify a location and/or orientation of the surgical tool within the surgical site." Para. [0318]: "In some embodiments, the image processing system can use the location information to calculate a magnification of a camera and use this information when combining images from multiple cameras having differing magnifications")
wherein the first location is determinable based on (This "wherein" clause does not serve to distinguish for reasons discussed above in the Claim Interpretation section above pertaining to the term "determinable"; In addition Charles teaches the limitations as follows) a first reference geometry associated with a field of view of the first surgical imaging device, a second reference geometry associated with a field of view of the second surgical imaging device (Para. [0311]: "For example, the image processing system can receive a first image of a region of interest from a first viewpoint and a second image from a second viewpoint of a region of interest and generate intermediate images from viewpoints that lie between the first and second viewpoints."; please note that "reference geometry" is not limited to "reference plane" found in the specification), a transformation between the first reference geometry and the second reference geometry (The "transformation" is not taken to be any particular transformation. See "a first image of a region of interest from a first viewpoint and a second image from a second viewpoint of a region of interest and generate intermediate images" of Para. [0311]), and a reference landmark common to the first imaging data stream and the second imaging data stream (Para. [0309]: "In certain implementations, a target structure with alignment features can be included in a field of view of one or more cameras" or the "region of interest" above).
2. The first surgical imaging device of claim 1, wherein the processor is further configured to calculate the transformation between the first reference geometry and the second reference geometry based on a first physical orientation of the first surgical imaging device, a second physical orientation of the second surgical imaging device, and the reference landmark (The "transformation" is not taken to be any particular transformation. See "a first image of a region of interest from a first viewpoint and a second image from a second viewpoint of a region of interest and generate intermediate images from viewpoints" of Para. [0311]. This generation involves transforming the different viewpoints).
3. The first surgical imaging device of claim 1, wherein the first surgical imaging device is an intraoperative imaging device (Para. [0005]: "such as endoscopy, laparoscopy, arthroscopy, pharyngo-laryngoscopy, as well as small incision procedures utilizing an operating microscope for visualization") and the second surgical imaging device is a pre-operative imaging device (this is not an element of the claimed imaging device, but rather an object intended to be used in conjunction with the claimed imaging device and thus it does not impart distinguishing structure from Charles.) and wherein the processor is further configured to calculate the transformation between the first reference geometry and the second reference geometry based on a difference between a first patient position during capture of the first imaging data stream and a second patient position during capture of the second imaging data stream (see citation given for claim 2).
4. The first surgical imaging device of claim 1, wherein the first surgical imaging device is an intraoperative imaging device (Para. [0005]: "such as endoscopy, laparoscopy, arthroscopy, pharyngo-laryngoscopy, as well as small incision procedures utilizing an operating microscope for visualization") and the second surgical imaging device is a pre-operative imaging device (this is not an element of the claimed imaging device, but rather an object intended to be used in conjunction with the claimed imaging device, and thus it does not impart distinguishing structure from Charles. In addition, the term pre-operative describes how/when the imaging device is used, rather than structure and thus does not structurally distinguish), wherein the first imaging data stream is captured with a patient in a first patient position and the second imaging data stream is captured with the patient in a second patient position, and wherein the reference landmark comprises an anatomical structure that has relatively little movement between capture of the first and second imaging data streams (see citation given for claim 2).
5. The first surgical imaging device of claim 1, wherein the visualized surgical structure comprises an object to be removed from a patient (this claim does not serve to distinguish for reasons discussed above in the rejection of this claim under 35 U.S.C. § 112(d). In addition, see para. [0009]: "the method further comprises removing bone at the surgical site with the surgical tool"), and wherein the reference landmark comprises an anatomical structure of the patient (This limitation is drawn to the intended operation of the device and thus does not serve to structurally distinguish from Shelton. See also para. [0311]: "This approach can be performed for any pair of cameras that image a common region" the region being within a surgical site).
6. The first surgical imaging device of claim 1, wherein the first surgical imaging device is an endoscopic device (Para. [0005]: "such as endoscopy, laparoscopy, arthroscopy, pharyngo-laryngoscopy, as well as small incision procedures utilizing an operating microscope for visualization"), the second surgical imaging device is a laparoscopic device (this is not an element of the claimed imaging device, but rather an objected intended to be used in conjunction with the claimed imaging device and thus it does not impart distinguishing structure from Charles; also Para. [0005]: "such as endoscopy, laparoscopy"), the first surgical imaging device and the second surgical imaging device are separated by a tissue barrier (This limitation is drawn to the intended operation of the device and thus does not serve to structurally distinguish from Charles. Also, See para. [0311]).
7. The first surgical imaging device of claim 6, wherein the processor is further configured to calculate the transformation between the first reference geometry and the second reference geometry based on one or more lights projected, by the laparoscopic device, through the tissue barrier, and detected by the endoscopic device (The recitation to the light projected, the laparoscopic device, tissue barrier, and endoscopic device are not elements of the claimed device nor found to impart any particular logic to the algorithm within the processor. As to the transformation between the reference geometries, see the discussion for claim 1. Also, See para. [0311]).
8. The first surgical imaging device of claim 1, wherein the processor is further configured to:
generate an augmented reality (AR) overlay of the first imaging data stream, the second imaging data stream, based on the transformation between the first reference geometry and the second reference geometry, wherein the AR overlay depicts the first imaging data stream and the second imaging data stream overlapped onto one another based on the transformation (Para. [0304]: "For example, a virtual display can be used wherein the surgeon viewing displays through binoculars motions with his or her hand in a manner consistent with the imagery seen by the surgeon"); and
output the AR overlay to a display device for displaying (see above).
9. The first surgical imaging device of claim 1, wherein the first surgical imaging device and the second surgical imaging device are capturing video data at the same time (This limitation is drawn to how/when the devices are used, not drawn to structure of the processor/algorithm. See the rejection of this claim under 35 U.S.C. § 112(d). Furthermore the cameras are used at the same time since cameras are used in "real-time" para. [0276]).
10. A method performed by a first surgical imaging device, the method comprising (See citations given for claim 1 above):
capturing a first imaging data stream of a visualized surgical structure;
communicating registration information with a second surgical imaging device capturing a second imaging data stream of the visualized surgical structure; and
identifying, based on the registration information, a first location, within the first imaging data stream, associated with the visualized surgical structure, wherein the first location is determinable based on: a first reference geometry associated with a field of view of the first surgical imaging device, a second reference geometry associated with a field of view of the second surgical imaging device, a transformation between the first reference geometry and the second reference geometry, and a reference landmark common to the first imaging data stream and the second imaging data stream.
11. The method of claim 10, wherein the method further comprises calculating the transformation between the first reference geometry and the second reference geometry based on a first physical orientation of the first surgical imaging device, a second physical orientation of the second surgical imaging device, and the reference landmark (See citations given for claim 2 above).
14. The method of claim 10, wherein the visualized surgical structure comprises an object to be removed from a patient, and wherein the reference landmark comprises an anatomical structure of the patient (para. [0009]: "the method further comprises removing bone at the surgical site with the surgical tool").
15. The method of claim 10, wherein the first surgical imaging device is an endoscopic device, the second surgical imaging device is a laparoscopic device (Para. [0005]: "such as endoscopy, laparoscopy, arthroscopy, pharyngo-laryngoscopy, as well as small incision procedures utilizing an operating microscope for visualization"), the first surgical imaging device and the second surgical imaging device are separated by a tissue barrier (Para. [0270]:"The additional camera included with the surgical tool…may provide…reduced obscuration.").
17. The method of claim 10, wherein the method further comprises: generating an augmented reality (AR) overlay of the first imaging data stream, the second imaging data stream, based on the transformation between the first reference geometry and the second reference geometry, wherein the AR overlay depicts the first imaging data stream and the second imaging data stream overlapped onto one another based on the transformation; and outputting the AR overlay to a display device for displaying (Para. [0304]: "For example, a virtual display can be used wherein the surgeon viewing displays through binoculars motions with his or her hand in a manner consistent with the imagery seen by the surgeon").
18. The method of claim 10, wherein the first surgical imaging device and the second surgical imaging device are capturing video data at the same time (the cameras are used at the same time since cameras are used in "real-time" para. [0276]).
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, 2, 10, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 3 of U.S. Patent No. 12,295,667. Although the claims at issue are not identical, they are not patentably distinct from each other because the wording may be different but the claimed structure is already covered by the reference patent. The "tracking and coordinating means" of claim 2, under 35 U.S.C. § 112(f) performs the functions of claim 1 of the application and has a processor (Fig. 5) and performs the steps of claim 10.
Application
Reference Patent
1. A first surgical imaging device comprising:
a processor configured to: capture a first imaging data stream of a visualized surgical structure ;
1. A surgical system, comprising: a first imaging system configured to provide visualization of a surgical site
communicate registration information with a second surgical imaging device capturing a second imaging data stream of the visualized surgical structure; and
(claim 2) the first and second surgical instruments includes integrated tracking and coordinating means configured to … communicate the location to the first imaging system
identify, based on the registration information, a first location, within the first imaging data stream, associated with the visualized surgical structure,
(claim 2) the first and second surgical instruments includes integrated tracking and coordinating means configured to identify a location of the at least one first surgical instrument
wherein the first location is determinable based on: a first reference geometry associated with a field of view of the first surgical imaging device, a second reference geometry associated with a field of view of the second surgical imaging device, a transformation between the first reference geometry and the second reference geometry, and a reference landmark common to the first imaging data stream and the second imaging data stream
although the limitation does not have patentable weight: the tracking and coordinating means has "control circuit can determine a geometric surface map" which are reference geometry; and has "are configured to each visualize a common anatomic landmark"
2. (claim 11 also) The first surgical imaging device of claim 1, wherein the processor is further configured to calculate the transformation between the first reference geometry and the second reference geometry based on a first physical orientation of the first surgical imaging device, a second physical orientation of the second surgical imaging device, and the reference landmark.
3. the first imaging system is configured to determine a location and orientation of the second surgical instrument relative to the first surgical instrument to facilitate the first surgical instrument being guided based on the visualization provided by the endoscopic imaging system; and the endoscopic imaging system is configured to determine a location and orientation of the first surgical instrument relative to the second surgical instrument to facilitate the second surgical instrument being guided based on the visualization provided by the first imaging system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Zhao et al. (US 8,108,072) show a system for robotic instrument tool tracking used overlay one or more drop virtual point/marks on images of the tissue surface. A camera coordinate system is a coordinate system based on a chosen camera, or a common reference coordinate system for multiple cameras in FIG. 12B.
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/Hwa Andrew Lee/Primary Examiner, Art Unit 2877