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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 13, 15 and 19 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 17, 18 and 19, respectively, of prior U.S. Patent No. 12,102,466 B2. This is a statutory double patenting rejection.
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 1-7, 11, 12, 17, 18, 21, 24 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 9, 4, 3, 3, 9, 9, 9, 9, 17, 17, 17, 19 and 19, respectively, of U.S. Patent No. 12,102,466. Although the claims at issue are not identical, they are not patentably distinct from each other because every feature of the claims of the instant Application are recited in the claims of the Patent. Since the word “comprising” in claims of the instant Application does not preclude further limitations of the claims of the Patent, the claims of the instant Application would be obvious in view of the claims of the Patent.
Claim Objections
Claim 2 is objected to because of the following informalities: claim 2 depends from itself. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The first incident of the phrase “the missing mu-map”, in section (e) of claims 1, 4 and 5 seems to be referring to a previously cited missing mu-map which does not appear in claim. Therefore, theses citations are vague and confusing because it is unclear what feature or element is further limited by this language. For the purposes of this office action, its iterated as referring to missing mu-map.
Claims 2-3 depend from an indefinite base claim and are thus indefinite themselves.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The phrase “by estimating the missing mu-map data using the pet data” in section (e) of claims 1, 4 and 5 is indefinite since it is unclear which pet data is being used i.e. the pet data from scanning, or the truncated pet data. Therefore, the claims are ambiguous for not clearly and precisely define the metes and bounds of the claimed invention.
Claims 2-3 depend from an indefinite base claim and are thus indefinite themselves.
Allowable Subject Matter
Claims 8-10, 14, 16, 19, 20, 22 and 23 are 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. The following is a statement of reasons for the indication of allowable subject matter: the prior art or the prior art of record specifically, US 8620053 B2 to Michel et al, US 2010/0303319 A1 to Wang and US 6,490,476 B1 to Townsend et al, does not disclose:
. . . . (e) generating a mu-map for full axial FOV of the PET scan by extending the truncated mu-maps generated from each of the truncated FOV CT scan by estimating the missing mu-map data for the regions not covered by the truncated FOV CT scans using the full axial FOV PET data, wherein estimating the missing mu-map data comprises using a combination of, prior predictions, numerical methods, CT scout scans or artificial intelligence type algorithms and reconstruct the PET image using a combination of truncated PET data, truncated CT, estimated CT, other correction factors and measured PET data, in claims 8-10 combined with other features and elements of the claims;
. . . . (f) performing a quality check of the PET scanner system if any inconsistencies between the estimated mu-map and the truncated mu-maps are detected; and (g) using the detected inconsistencies between the estimated mu-map and the truncated mu-maps to correct any inconsistencies in the PET scanner system’s parameters and improve the measured full axial FOV PET scan data, of claims 14-16 combined with other features and element of the claims;
. . . . (f) using the detected inconsistencies between the estimated mu-map and the truncated mu-maps to determine whether the PET scanner requires calibration, of claims 20-23 combined with other features and element of the claims.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHERVIN K NAKHJAVAN whose telephone number is (571)272-5731. The examiner can normally be reached Monday-Friday 9:00-12:00 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Lefkowitz can be reached at (571)272-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHERVIN K NAKHJAVAN/ Primary Examiner, Art Unit 2672
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