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
Claims 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 20, 2025.
Applicant's election with traverse of Invention I, claims 1-9 in the reply filed on November 20, 2025 is acknowledged. The traversal is on the ground(s) that the International Searching Authority (ISA) did not reject these claims for lack of unity of invention, and therefore Applicant submits that the present case falls into the situation where the MPEP urges the Examiner to take the broad practical approach and examine the claims, instead of making a narrow academic distinction. This is not found persuasive because the amended claims are still considered to lack unity of invention because even though the inventions of the Groups I, II, III, IV, V and VI require the technical feature of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art (see the restriction requirement mailed on 9/24/25; further see the rejection of claim 1). Further, Applicant’s argument that lack of unity does not exist since the ISA has not presented the Groups as lacking unity of invention is not persuasive as lack of unity has been demonstrated.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-3 and 5-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Granneman (US Pub No. 2018/0220052).
With regards to claim 1, Granneman discloses a computer-implemented image processing method for generating a digital output color image of an object, the method comprising:
retrieving a digital white-light color image (i.e. “visible light images”) of the object recorded in a first imaged spectrum (i.e. visible light spectrum) (paragraphs [0056]-[0057], referring to the digitized signals each representing streams of images or image representations based on the data and visible light images of image signals (27); paragraphs [0046]-[0047], referring to emitting visible light; Figures 4, 6, referring to steps 301, 401, “Receive first image stream including visible light images having first color space”);
retrieving a digital fluorescence-light color image (“images based on detected fluoresce of the object”) recorded in a second imaged spectrum, the second imaged spectrum overlapping with a fluorescence emission spectrum of at least one fluorophore, the second imaged spectrum being different from the first imaged spectrum, both the first imaged spectrum and the second imaged spectrum overlapping with a visible spectrum (paragraphs [0046]-[0047], referring to fluorescence excitation light; paragraphs [0056]-[0057], referring to the fluoresced light data in signal (29); Figures 4, 6, steps 302, 402, “Receive second image stream including images based on detected fluoresced light”; paragraph [0051], referring to “the fluoresced light is in a spectrum detectable by light sensor 20 that is in or near the visible light spectrum typically detected by a RGB sensor arrays”, and thus both the first imaged spectrum (i.e. visible light spectrum) and the second imaged spectrum (i.e. fluoresced light spectrum) overlaps with a visible spectrum; Figures 4, 6, referring to steps 302, 402, “Receive second image stream including images based on detected fluoresced light”); and
generating the digital output color image by combining the digital fluorescence-light color image and the digital white-light color image (paragraph [0069], referring to the image processing circuitry (30) which performs digital image processing function for a white-light imaging modality to process and combine visible light images of image signal (27) with the fluoresced light data in signal (29) to produce the desired form of image from the data received; paragraph [0099], referring to image combining occurring at block 313, which combines the converted first image stream and the transformed second image stream into a combined image stream; Figures 2, 4, 6).
With regards to claim 2, Granneman discloses that the first imaged spectrum and the second imaged spectrum are complementary to one another (paragraphs [0009], [0051], [0071], [0090], referring to image signal (27) undergoing color space conversion which may involve compressing the color space to allow “better” distinguishability from fluorescent display colors, and allowing the FI images to be combined with the first image stream “without any color overlap”, thus improving the ability to visually distinguish the FI images, and therefore the first imaged spectrum is complementary to the second imaged spectrum as they do not overlap; Figure 5).
With regards to claim 3, Granneman discloses that the digital white-light color image is represented in a first color space using at least three first color bands (paragraphs [0023], paragraph [0025], referring to the WL image stream (i.e. visible light image) having a first color space; paragraphs [0072]-[0073], [0089], referring to the BT-709 8-bit per channel RGB color space being employed for the first image stream, and therefore the first color space uses at least three first colors bands (i.e. red (R ), green (G) and blue (B); Figures 4-7); the digital fluorescence-light color image is represented in a second color space comprising at least three second color bands (paragraphs [0013]-[0014], [0017], [0071], referring to fluorescence (FI) image stream may include a red channel, a green channel and a blue channel (i.e. “fluoresced light in one or more of the RGB channels”; Figures 4-7); the digital output color image is generated in a third color space comprising at least three third color bands (paragraphs [0093], referring to transforming the second image stream to a portion of the second color space outside compressed color space produced by block 305, or if no compressed color space is used for the white-light images at block 305, block 306 transforms the second image stream to a desired color or color range that has been chosen to be highly visible when overlaid with visible light images; paragraph [0099], referring to combining the converted first image stream and the transformed second image stream into a combined image stream, wherein the combination may be done by overlaying or alpha blending the images, and thus the combination of the converted first image stream and the transformed second image stream would result in a third color space; paragraphs [0102]-[0103], referring to transforming the first color space to a new, second, data format which has a larger color space than the first color space, wherein the second color space can be defined by at least three or four primaries; Figures 4-7);
the first color bands and the second color bands are mapped onto the third color bands of the digital output color image using a linear transformation (paragraph [0103], referring to the format conversion at block 405 (i.e. converting first image stream to larger color space) being directly calculated with a matrix multiplication (i.e. linear transformation) of the RGB values in the first color stream; paragraphs [0078]-[0080], referring to scaling luminance values of the F1 images, wherein “scaling” corresponds to a linear transformation; paragraph [0096], referring to transforming the second image stream by using intensity scaling or color transformation, which corresponds to a linear transformation; Figures 4-7); wherein each first color band of the first color bands and each second color band of the second color bands are input as separate color bands into the linear transformation (paragraph [0103], referring to the matrix multiplication of the RGB values of the first image stream, which would encompass inputting the first color band of the first image stream into a linear transformation, separate from the second color bands; paragraphs [0078]-[0080], [0096], referring to the scaling of the F1 images/second image stream, which would encompass inputting the second color band of the F1 image stream into a linear transformation (i.e. scaling), separate from the first color bands; Figures 4-7).
With regards to claim 5, Granneman discloses that the first color space and the second color space are identical (paragraph [0051], referring to “the fluoresced light is in a spectrum detectable by light sensor 20 that is in or near the visible light spectrum typically detected by a RGB sensor arrays”, and thus the first color space and second color space are identical as they overlap; paragraphs [0072], [0074]-[0075]; Figures 5, 7).
With regards to claim 6, Granneman discloses that the first imaged spectrum comprises a first sub-band in a first color band of a color space, the second imaged spectrum comprises a second sub-band in the color band, and the first sub-band and the second sub-band are complementary to one another (paragraphs [0009], [0051], [0071], [0090], referring to image signal (27) undergoing color space conversion which may involve compressing the color space to allow “better” distinguishability from fluorescent display colors, and allowing the FI images to be combined with the first image stream “without any color overlap”, thus improving the ability to visually distinguish the FI images, and therefore the first imaged spectrum is complementary to the second imaged spectrum as they do not overlap; paragraph [0105], referring to one or more of the at least three FI output signals including WL image signals and one channel carries the F1 image data, and therefore the first imaged spectrum (WL) comprises a first sub-band of the RGB color space and the F1 spectrum comprises a second sub-band in the RGB color band; Figures 5 and 7, which depict the first sub-band (i.e. VI-1) and the second sub-band (i.e. FI-1 or FI-2)).
With regards to claim 7, Granneman discloses that a color band of the third color space (i.e. VI-2 and FI-1 or FI2) comprises the first sub-band (i.e. VI-2 is part of VI-1) and the second sub-band (FI-1 or FI-2) (paragraphs [0094]-[0096], [0103]-[0106]; Figures 5, 7).
With regards to claim 8, Granneman discloses that the second imaged spectrum comprises near infrared (NIR) wavelengths (paragraphs [0006], [0050]-[0051], [0095], referring to the fluoresced light being NIR ICG FI).
With regards to claim 9, Granneman discloses that the digital fluorescence-light color image and the digital white- light color image are processed jointly as a digital multispectral image comprising at least five color bands (paragraph [0088], referring to the color space being defined by “at least three primaries”, which would encompass at five (or more) color bands; paragraphs [0090], [0094]; Figures 4-7, in particular see Figures 4 and 6, wherein the visible light mages and the images based on detected fluoresced light are processed jointly).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Granneman as applied to claim 3 above, and further in view of Higgins (US Pub No. 2005/0083352).
With regards to claim 4, as discussed above, Granneman meets the limitations of claim 3. Further, Granneman discloses that the linear transformation comprises a color conversion matrix having a dimension of a number X times a number Y (paragraphs [0015], [0033], [0073], referring to the conversion being calculated using a matrix multiplication of the RGB values in the first color stream and referring to the color conversion matrix, wherein a matrix is inherently defined by a dimension of a number (i.e. X) times another number (i.e. Y)). Granneman further discloses that the first color space is defined by “at least three primaries” (paragraph [0088]).
However, though Granneman discloses that the first color space is defined by “at least three primaries” (paragraph [0088]), Granneman do not specifically disclose that the number X is a sum of a quantity of the first color bands and a quantity of the second color bands and the number Y is a quantity of a third color band in the third color space.
Higgins discloses a method for converting from a source color space to a target color space, wherein the source color space results from a combination of N primary color points and the target color space results from a combination of a N+1 or more primary color points in the target color space, thus providing multiple primary conversions (Abstract; paragraph [0038]). Matrices may be combined together to perform conversion directly without going through intermediate color spaces (paragraph [0038]). As depicted in Figure 5, a 3x6 matrix may be used for converting 3-valued colors for a 6-primary display (paragraph [0046]; Figure 5, wherein it is depicted that a X by Y matrix is used, wherein X is the sum (i.e. total number) of a quantity of the first color bands (i.e. source color bands, which is equal to 3 color bands) and Y is the quantity of third color bands (i.e. target color bands, which is equal to 6 target color bands).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have the number X be a sum of a quantity of the first color bands and a quantity of the second color bands and the number Y be a quantity of a third color band in the third color space, as taught by Higgins, in order to effectively provide multiple primary color conversions (paragraph [0038]).
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 18/864,555 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the instant application is generic to all that is recited in claim 1 of the reference application. That is, claim 1 of the reference application falls entirely within the scope of instant claim 1, or in other words, instant claim 1 is anticipated by claim 1 of the copending application. Specifically, because claim 1 of the reference application claims the same steps (i.e. retrieving a digital white-light color image, retrieving a digital fluorescence-light color image, generating the digital output color image by combining the digital fluorescence-light color image and the digital white-light color image (i.e. “a digital output color image generated by the image processor from a combination of the digital fluorescence-light color image and the digital white-light color image”), etc.), as claimed in instant claim 1, the method of instant claim 1 is anticipated by claim 1 of the reference application.
With regards to instant claim 2, claim 7 of the reference application sets forth the same limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fengler et al. (US Pub No. 2011/0063427) disclose a NIR endoscopic imaging device to provide a continuous color image and either a superimposed or side-by-side display of the NIR image information (paragraphs [0031]-[0032], [0043]).
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/KATHERINE L FERNANDEZ/Primary Examiner, Art Unit 3798