DETAILED ACTION
Summary
Claims 1-8, 11-14, and 16 are pending in the application. Claims 1-8, 11-14, and 16 are rejected under 35 USC 103.
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 Objections
Claims 1, 11, and 14 objected to because of the following informalities:
Claim 1 recites “at least one frame of the live data stream comprises utilizing” in line 19. It should recite “the at least one frame of the live data stream comprises utilizing” in line 19.
Claim 11 recites “at least one frame of the live data stream comprises utilizing” in line 20. It should recite “the at least one frame of the live data stream comprises utilizing” in line 19.
Claim 14 recites “at least one frame of the live data stream comprises utilizing” in lines 14-15. It should recite “the at least one frame of the live data stream comprises utilizing” in line 19.
Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-5, 11-12, 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Besser (U.S PGPub 2022/0117676 A1) in view of Wallace et al. (U.S PGPub 2013/0072787 A1), Mire et al. (U.S PGPub 2007/0066887 A1), and Vesely et al. (U.S Patent 6,246,898 B1).
Regarding Claim 1, Besser teaches an apparatus for tracing a catheter or a tube (Abstract) (Fig. 3A shows the traced tube), comprising:
A memory that stores a plurality of instructions [0081]+[0085] (a memory of the computer); and
a processor coupled to the memory (Fig. 1, 110) [0085], and configured to execute the plurality of instructions to”
receive a medical image of a patient [0081] (uploaded image) [0113]-[0114];
receive a live data stream [0113] (data from the sensor is obtained continuously in the procedure, which means it is a live data stream) from one or more sensors [0081] (signals from reference sensor), wherein the live data stream comprises data of the patient [0082] (position of the torso), and wherein a sensor coordinate system is defined with respect to the one or more sensors [0082] (reference coordinate system);
receive a sensed location of an end of the catheter or the tube [0027] that is to be inserted into the patient [0044]-[0045];
map the medical image of the patient to the sensor coordinate system [0088];
determine a location of the end of the catheter or the tube in the sensor coordinate system comprising utilizing of the sensed location of the end of the catheter or tube [0109]+[0112] (as the end of the catheter is displayed on the images which are displayed in the sensor coordinate system, the location of the end of the tube is also determined in the sensor coordinate system); and
generate a representation of the sensed location of the end of the catheter or the tube with respect to the medical image (Fig. 3A) comprising utilizing of the medical image of the patient mapped to the sensor coordinate system and the location of the end of the catheter or the tube in the sensor coordinate system [0110]-[0112].
Besser is silent regarding align the data of the patient received from the one or more sensors with the sensor coordinate system.
Wallace teaches a system for different features to a unified coordinate system (Abstract). This system unifies the data from a patient sensor (i.e. a patient coordinate system) with a device coordinate system (i.e. aligns data of the patient with a sensor coordinate system) [0081].
It would have been obvious to one of ordinary skill in the art before the effective filing date to align the data of the patient with the sensor coordinate system, as taught by Wallace, because this improves the ease and reliability of navigating a minimally invasive devices, as recognized by Wallace [0010].
While it is implied the live data of Besser is registered with the medical image [0112]-[0113] (the external image is aligned (registered) with the reference coordinate system), Besser is silent regarding wherein mapping the medical image of the patient to the sensor coordinate system comprises registration between the medical image of the patient and at least one frame of the live data stream.
Mire teaches a surgical navigation system (Abstract). This system registers the medical image with at least one frame of live data from the reference sensor [0050].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combined system to register the medical image with live data, as taught by Mire, because this ensures that the navigation remains accurate even during patient movement, as recognized by Mire [0050].
The combination of references teaches the invention substantially as claimed. Besser fails to explicitly teach wherein registration between the medical image of the patient and at least one frame of the live data stream comprises utilizing a warping transformation to align the medical image of the patient body with the data of the patient in the at least one frame of the live data stream.
Vesely teaches a surgical navigation system (Abstract). This system performs a warping transform to align the medical image of the patient body with date of the patient in the live data stream (Col 14, lines 13-21).
It would have been obvious to one of ordinary skill in the art to modify the combined system to use warping transform to align the data during the registration step, as taught by Vesely, because this allows the system corrects for deformation of the patient, thereby maintaining accuracy during the navigation, as recognized by Vesely (Col 13, lines 46-51)+(Col 14, lines 13-21).
Regarding Claim 2, the combination of references teaches the invention substantially as claimed. Besser further teaches wherein the processor is configured to generate a mapped medical image of the patient (Fig. 3A, the catheter is mapped on the image, and it is a mapped medical image) [0110] comprising utilization of the medical image of the patient mapped to the sensor coordinate system [0112], and
wherein the generation of the representation of the sensed location of the end of the catheter or the tube with respect to the medical image comprises a generation of the representation of the sensed location of the end of the catheter or the tube in the mapped medical image of the patient (Fig. 3A, the tip of the catheter is represented on the image) [0112]+[0113].
Regarding Claim 4, the combination of references teaches the invention substantially as claimed. Besser fails to explicitly teach wherein the one or more sensors comprises a plurality of sensors, and wherein the live data stream comprises data from each of the plurality of sensors.
Vesely teaches a surgical navigation system (Abstract). This system uses a plurality of references sensors (Fig. 16, 1674) (Col 12-13, lines 62-15), and has a live data stream from the plurality of reference sensors (Col 5, lines 52-53)+(Col 13, lines 17-27)+(Col 13, lines 34-41).
It would have been obvious to one of ordinary skill in the art before the effective filing date to use a plurality of sensors, as taught by Vesely, because this allows the system to detect and correct for deformation of the patient, thereby maintaining accuracy during the navigation, as recognized by Vesely (Col 13, lines 46-51)+(Col 14, lines 13-21).
Regarding Claim 5, the combination of references teaches the invention substantially as claimed. Besser fails to explicitly teach wherein the alignment of the data of the patient with the sensor coordinate system comprises utilization of data of the patient from each of the plurality of sensors.
Vesely further teaches using the data from each of the sensors (Col 13, lines 28-56). This data is used by the system to align the patient data with the image data (Col 14, lines 1-21).
It would have been obvious to one of ordinary skill in the art before the effective filing date to use a plurality of sensors for alignment, as taught by Vesely, because this allows the system to detect and correct for deformation of the patient, thereby maintaining accuracy during the navigation, as recognized by Vesely (Col 13, lines 46-51)+(Col 14, lines 13-21). One of ordinary skill would recognize that, as the system of Besser performs the alignment in the sensor coordinate space, the combination would similarly perform the alignment in the sensor coordinate system.
Regarding Claim 11, Besser teaches a system for tracing a catheter or a tube (Abstract) (Fig. 3A shows the traced tube), comprising:
a processor (Fig. 1, 110) [0085];
one or more sensors [0081] (signals from reference sensor);
a visual display [0109];
wherein the processor is configured to receive a medical image of a patient [0081] (uploaded image) [0113]-[0114];
wherein the processor is configured to receive a live data stream [0113] (data from the sensor is obtained continuously in the procedure, which means it is a live data stream) from one or more sensors [0081] (signals from reference sensor), wherein the live data stream comprises data of the patient [0082] (position of the torso), and wherein a sensor coordinate system is defined with respect to the one or more sensors [0082] (reference coordinate system);
wherein the processor is configured to receive a sensed location of an end of the catheter or the tube [0027] that is to be inserted into the patient [0044]-[0045];
wherein the processor is configured to map the medical image of the patient to the sensor coordinate system [0088];
wherein the processor is configured to determine a location of the end of the catheter or the tube in the sensor coordinate system comprising utilizing of the sensed location of the end of the catheter or tube [0109]+[0112] (as the end of the catheter is displayed on the images which are displayed in the sensor coordinate system, the location of the end of the tube is also determined in the sensor coordinate system); and
wherein the processor is configured to generate a representation of the sensed location of the end of the catheter or the tube with respect to the medical image on the visual display (Fig. 3A) [0110] comprising utilizing of the medical image of the patient mapped to the sensor coordinate system and the location of the end of the catheter or the tube in the sensor coordinate system [0110]-[0112].
Besser is silent regarding wherein the processor is configured to align the data of the patient received from the one or more sensors with the sensor coordinate system.
Wallace teaches a system for different features to a unified coordinate system (Abstract). This system unifies the data from a patient sensor (i.e. a patient coordinate system) with a device coordinate system (i.e. aligns data of the patient with a sensor coordinate system) [0081].
It would have been obvious to one of ordinary skill in the art before the effective filing date to align the data of the patient with the sensor coordinate system, as taught by Wallace, because this improves the ease and reliability of navigating a minimally invasive devices, as recognized by Wallace [0010].
While it is implied the live data of Besser is registered with the medical image [0112]-[0113] (the external image is aligned (registered) with the reference coordinate system), Besser is silent regarding wherein mapping the medical image of the patient to the sensor coordinate system comprises registration between the medical image of the patient and at least one frame of the live data stream.
Mire teaches a surgical navigation system (Abstract). This system registers the medical image with at least one frame of live data from the reference sensor [0050].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combined system to register the medical image with live data, as taught by Mire, because this ensures that the navigation remains accurate even during patient movement, as recognized by Mire [0050].
The combination of references teaches the invention substantially as claimed. Besser fails to explicitly teach wherein registration between the medical image of the patient and at least one frame of the live data stream comprises utilizing a warping transformation to align the medical image of the patient body with the data of the patient in the at least one frame of the live data stream.
Vesely teaches a surgical navigation system (Abstract). This system performs a warping transform to align the medical image of the patient body with date of the patient in the live data stream (Col 14, lines 13-21).
It would have been obvious to one of ordinary skill in the art to modify the combined system to use warping transform to align the data during the registration step, as taught by Vesely, because this allows the system corrects for deformation of the patient, thereby maintaining accuracy during the navigation, as recognized by Vesely (Col 13, lines 46-51)+(Col 14, lines 13-21)
Regarding Claim 12, the combination of references teaches the invention substantially as claimed. Besser further teaches wherein the processor is configured to generate a mapped medical image of the patient (Fig. 3A, the catheter is mapped on the image, and it is a mapped medical image) [0110] comprising utilization of the medical image of the patient mapped to the sensor coordinate system [0112],
wherein the processor is configured to present the mapped medical image on the visual display [0110], and
wherein the generation of the representation of the sensed location of the end of the catheter or the tube with respect to the medical image comprises a generation of the representation of the sensed location of the end of the catheter or the tube in the mapped medical image of the patient of the patient presented on the visual display (Fig. 3A, the tip of the catheter is represented on the image) [0110]+[0112]-[0113].
Regarding Claim 14, Besser teaches a method for tracing a catheter or a tube (Abstract) (Fig. 3A shows the traced tube), comprising:
receiving a medical image of a patient [0081] (uploaded image) [0113]-[0114];
providing the medical image of the patient to the processor [0081] [0113]-[0114] (the processor is performing processing on the image, which means the image was provided to the processor);
receiving a live data stream [0113] (data from the sensor is obtained continuously in the procedure, which means it is a live data stream) from one or more sensors [0081] (signals from reference sensor), wherein the live data stream comprises data of the patient [0082] (position of the torso), and wherein a sensor coordinate system is defined with respect to the one or more sensors [0082] (reference coordinate system);
providing the live data stream to the processor [0088];
receiving a sensed location of an end of the catheter or the tube [0027] that is to be inserted into the patient [0044]-[0045];
mapping the medical image of the patient to the sensor coordinate system [0088];
determining a location of the end of the catheter or the tube in the sensor coordinate system comprising utilization of the sensed location of the end of the catheter or tube [0109]+[0112] (as the end of the catheter is displayed on the images which are displayed in the sensor coordinate system, the location of the end of the tube is also determined in the sensor coordinate system); and
generating a representation of the sensed location of the end of the catheter or the tube with respect to the medical image (Fig. 3A) comprising utilization of the medical image of the patient mapped to the sensor coordinate system and the location of the end of the catheter or the tube in the sensor coordinate system [0110]-[0112].
Besser is silent regarding aligning the data of the patient received from the one or more sensors with the sensor coordinate system.
Wallace teaches a system for different features to a unified coordinate system (Abstract). This system unifies the data from a patient sensor (i.e. a patient coordinate system) with a device coordinate system (i.e. aligns data of the patient with a sensor coordinate system) [0081].
It would have been obvious to one of ordinary skill in the art before the effective filing date to align the data of the patient with the sensor coordinate system, as taught by Wallace, because this improves the ease and reliability of navigating a minimally invasive devices, as recognized by Wallace [0010].
While it is implied the live data of Besser is registered with the medical image [0112]-[0113] (the external image is aligned (registered) with the reference coordinate system), Besser is silent regarding wherein mapping the medical image of the patient to the sensor coordinate system comprises registration between the medical image of the patient and at least one frame of the live data stream.
Mire teaches a surgical navigation system (Abstract). This system registers the medical image with at least one frame of live data from the reference sensor [0050].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combined system to register the medical image with live data, as taught by Mire, because this ensures that the navigation remains accurate even during patient movement, as recognized by Mire [0050].
The combination of references teaches the invention substantially as claimed. Besser fails to explicitly teach wherein registration between the medical image of the patient and at least one frame of the live data stream comprises utilizing a warping transformation to align the medical image of the patient body with the data of the patient in the at least one frame of the live data stream.
Vesely teaches a surgical navigation system (Abstract). This system performs a warping transform to align the medical image of the patient body with date of the patient in the live data stream (Col 14, lines 13-21).
It would have been obvious to one of ordinary skill in the art to modify the combined system to use warping transform to align the data during the registration step, as taught by Vesely, because this allows the system corrects for deformation of the patient, thereby maintaining accuracy during the navigation, as recognized by Vesely (Col 13, lines 46-51)+(Col 14, lines 13-21)
Regarding Claim 16, Besser teaches a non-transitory computer readable medium for storing executable instructions that, when executed [0121]-[0122], cause the method of claim 14 to be performed (See rejection of claim 14 above).
Claims 3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Besser in view of Wallace, Mire, and Vesely as applied to claim 1 above, and further in view of Olson et al. (U.S PGPub 2008/0221425 A1).
Regarding Claim 3, the combination of references teaches the invention substantially as claimed. Besser further teaches wherein the generation of the representation of the sensed location of the end of the catheter or the tube with respect to the medical image comprises a generation of the representation of the sensed location of the end of the catheter or the tube in the medical image of the patient (Fig. 3A, the tip of the catheter is represented on the image) [0112]+[0113].
Besser fails to explicitly teach wherein the processor is configured to generate a modified sensor coordinate system comprising utilization of the medical image of the patient mapped to the sensor coordinate system, wherein the determination of the location of the end of the catheter or the tube in the sensor coordinate system comprises a determination of the location of the end of the catheter or the tube in the modified sensor coordinate system.
Olsen teaches a method of registering a catheter navigation system to a medical image (Abstract). This system generates a modified sensor coordinate system utilizing the medical image of the patent mapped to the sensor coordinate system [0056]. The system determined the location of the end of the catheter in the modified sensor coordinate system [0045]-[0046] (the roving electrode 17 is on the distal tip of the catheter [0034]).
It would have bene obvious to one of ordinary skill in the art before the effective filing date to modify the combined system to generate a modified sensor coordinate system, as taught by Olsen, because this more accurately transforms the coordinate system to the external model, thereby allowing for more accurate navigation, as recognized by Olsen [0007]-[0010].
Regarding Claim 13, the combination of references teaches the invention substantially as claimed. Besser further teaches wherein the processor is configured to present the medical image on the visual display [0110], wherein the generation of the representation of the sensed location of the end of the catheter or the tube with respect to the medical image comprises a generation of the representation of the sensed location of the end of the catheter or the tube in the medical image of the patient presented on the visual display (Fig. 3A, the tip of the catheter is represented on the image) [0110]+[0112]-[0113].
Besser fails to explicitly teach wherein the processor is configured to generate a modified sensor coordinate system comprising utilization of the medical image of the patient mapped to the sensor coordinate system, wherein the determination of the location of the end of the catheter or the tube in the sensor coordinate system comprises a determination of the location of the end of the catheter or the tube in the modified sensor coordinate system.
Olsen teaches a method of registering a catheter navigation system to a medical image (Abstract). This system generates a modified sensor coordinate system utilizing the medical image of the patent mapped to the sensor coordinate system [0056]. The system determined the location of the end of the catheter in the modified sensor coordinate system [0045]-[0046] (the roving electrode 17 is on the distal tip of the catheter [0034]).
It would have bene obvious to one of ordinary skill in the art before the effective filing date to modify the combined system to generate a modified sensor coordinate system, as taught by Olsen, because this more accurately transforms the coordinate system to the external model, thereby allowing for more accurate navigation, as recognized by Olsen [0007]-[0010].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Besser in view of Wallace, Mire, and Vesely as applied to claim 4 above, and further in view of Rahimian et al. (U.S PGPub 2012/0215094 A1).
Regarding Claim 6, the combination of references teaches the invention substantially as claimed. Besser fails to explicitly teach wherein the live data stream comprises data of the end of the catheter or the tube, and wherein the sensed location of the end of the catheter or the tube that is to be inserted into the patient is determined from the data of the end of the catheter or the tube from each of the plurality of sensors.
Rahimian teaches a catheterization system (Abstract). This system uses a plurality of sensors (Fig. 5, 508) to detect live data from the tip of the catheter [0066]+[0069]. The location of the catheter is determined by the data from each of the plurality of sensors [0069].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combined system to have live data include an end of the catheter, and to determine the location from the plurality of sensors, as taught by Rahimian, because this allows the catheter tip to be localized in 6 degrees of freedom, thereby allowing for more accurate navigation without ionizing radiation, as recognized by Rahimian [0015]+[0069].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Besser in view of Wallace, Mire, and Vesely as applied to claim 1 above, and further in view of Ganapathy et al. (U.S PGPub 2018/0008802 A1).
Regarding Claim 7, the combination of references teaches the invention substantially as claimed. Besser further teaches sense the location of the end of the catheter or the tube [0027] and to provide the sensed location of the end of the catheter or the tube to the processor [0027]+[0044]-[0045].
Besser fails to explicitly teach a radiolocation system.
Ganapathy teaches a surgical system (Abstract). This system uses radiolocation to determine the tip of a medical instrument within a body [0097].
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the method of tracking the catheter with a radiolocation system, as taught by Ganapathy, as the substitution for one known method for determining a medical device location with another yields predictable results to one of ordinary skill in the art. One of ordinary skill would have been able to carry out such a substitution, and the results of using a radiolocation system to determine the location of the tip of the catheter are reasonably predictable.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Besser in view of Wallace, Mire, and Vesely as applied to claim 1 above, and further in view of Noonan et al. (U.S PGPub 2017/0281282 A1).
Regarding Claim 8, the combination of references teaches the invention substantially as claimed. Besser further teaches the location of the end of the catheter or the tube [0027] and to provide the sensed location of the end of the catheter or the tube to the processor [0027]+[0044]-[0045].
Besser fails to explicitly teach wherein the catheter or the tube comprises a fiber optic shape sensing system.
Noonan teaches an optical shape sensing system for determining position and orientation of a medical device (Abstract). This fiber optic shape sensing system [0037] is used to determine the position and orientation of a catheter [0066]. The position information is analyzed by a processor [0030].
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the method of obtaining the position information with a fiber optic shape sensing, as taught by Noonan, as the substitution for one known method of determining position with another yields predictable results to one of ordinary skill in the art. One of ordinary skill would have been able to carry out such a substitution, and the results of using a fiber optic shape sensing device to determine the position are reasonably predictable.
Response to Arguments
Applicant's arguments filed 6/5/2026 have been fully considered but they are not persuasive.
Applicant argues that Wallace does not teach “align the data of the patient received from the one or more sensors with the sensor coordinate system. The Examiner disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Besser is relied on to teach the sensor coordinate system. Wallace is relied on to teach aligning the data obtained in multiple coordinate systems into one coordinate system. When viewed together, one of ordinary skill would recognize that that coordinate system the aligned values would be presented in would be the sensor coordinate system.
Applicant argues that Mire does not teach “map the medical image of the patient to the sensor coordinate system using a registration between the medical image of the patient ant at least one frame of the live data stream”. The Applicant argues that the disclosure of [0050] is different from the claimed mapping. The Examiner disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Besser teaches mapping the medical image to the sensor coordinate system [0088]. Mire teaches a method for mapping (updating registration correlation (i.e. mapping) based on the image data and live frame data [0004]+[0050]).
Applicant argues that Vesely does not teach “wherein registration between the medical image of the patient and at least one frame of the live data stream comprises utilizing a warping transformation to align the medical image of the patient with the data of the patient in at least one frame of the live data stream”. The Examiner disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The warping transform of Vesely aligns the medical image data of Vesely with a frame of a live data stream (i.e. the reference transducers) (Col 14, lines 12-21). As indicated by Besser, the reference sensors are the sensors presenting the live data stream. When views together, one of ordinary skill in the art would recognize the combinations teaching “wherein registration between the medical image of the patient and at least one frame of the live data stream comprises utilizing a warping transformation to align the medical image of the patient with the data of the patient in at least one frame of the live data stream”.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the prior art provides motivation to combine the references to achieve the claimed invention. The Applicant argues that the cited motivations are “broad, desired results”. The Examiner disagrees. In each case, the cited motivations are benefits which can be realized for applying the cited technique to the claimed system. The Wallace reference was relied on to teach aligning the data in a common coordinate system. The cited motivation is the benefit of aligning the data in a common coordinate system. One of ordinary skill would have recognized the clear nexus between proposed modification and the resulting benefit, all of which were detailed in the Wallace reference. Similarly, the motivations to modify Mire and Vesely are not broadly desired results, but benefits which can be realized by incorporating the cited features. In Mire, updating the registration leads specifically to achieving the benefit of improved navigation when the subject is moving [0050]. In Vesely, the use of a warping transform is directly responsible for correcting deformations which may occur in the patient, which results in improved accuracy (Col 13, lines 46-51)+(Col 14, lines 13-21). Therefore, there is a proper motivation with an articulate line of reasoning to modify the reference to achieve the invention (MPEP 2143(I)(G)).
Applicant argues that the office action does not “ explain how the proposed combination would preserve the intended purpose and principle of operation of each cited reference while producing the particular claimed configuration”. This is not one of the requirements for setting forth a 103 rejection. As detailed in MPEP 2142, a 103 rejection needs to set forth, A) the relevant teachings of the prior art relied upon, preferably with reference to the relevant column or page number(s) and line number(s) where appropriate, (B) the difference or differences in the claim over the applied reference(s), (C) the proposed modification of the applied reference(s) necessary to arrive at the claimed subject matter, and (D) an explanation as to why the claimed invention would have been obvious to one of ordinary skill in the art at the relevant time. As detailed above, the rejections meet this standard.
In response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991). As detailed above, the claims have a proper motivation to combine, and the claim is properly rejected under 35 USC 103.
Claim 1 therefore remains rejected under 35 USC 103. For similar reasons, claims 2-8, 11-14, and 16 also remain rejected under 35 USC 103.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SEAN D MATTSON/Primary Examiner, Art Unit 3798
