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
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/228,890 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claim is a variation of the claim of the instant application. Claim 1 of the instant application is anticipated by co-pending claim 1, in that claim 1 of the co-pending application contains all the limitations of claim 1 of the instant application. Claim 1 of the instant application therefore is not patently distinct from the co-pending claim and as such is unpatentable for anticipatory-type double patenting
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application 18/881,403
Co-Pending Application 19/228,890
1. An image processing device comprising: at least one memory configured to store instructions;
1. An endoscopic examination assistance device comprising: at least one memory configured to store instructions;
and at least one processor configured to execute the instructions to:
and at least one processor configured to execute the instructions to:
acquire, based on an endoscopic image obtained by photographing an examination target by an endoscope, an infiltration distance of a tumor part of the examination target in the endoscopic image; and
detect at least one lesion included in an endoscopic image obtained during an endoscopic examination; estimate an infiltration state of the lesion detected from the endoscopic image;
output an image or sound based on the infiltration distance by an output device.
determines whether or not an infiltration distance indicating the infiltration state exceeds a predetermined threshold value; and display the infiltration distance relative to the threshold value in a visually discernible manner.
The above table illustrates a comparative mapping between the limitations of claim 1 of the instant application and the limitations of claim 1 of co-pending application 19/228,890.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 9, 10, 11, and 12, is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Saito et al. (US 2022/0020496 A1).
Regarding claim 1, Saito discloses an image processing device comprising: at least one memory configured to store instructions; (Paragraph 0046 and 0093, computer-readable recording medium storing a diagnostic assistance program) and at least one processor configured to execute the instructions to (Paragraph 0094, computer for diagnostic assistance for a disease): acquire, based on an endoscopic image obtained by photographing an examination target by an endoscope, an infiltration distance of a tumor part of the examination target in the endoscopic image; (Paragraph 0118, determination of an invasion depth of a squamous cell carcinoma based on an endoscopic image) and output an image or sound based on the infiltration distance by an output device (Paragraph 0118, display of the invasion depth in an image).
Regarding claim 9, Saito discloses wherein the at least one processor is configured to further execute the instructions to identify an endoscopic image which contains the tumor part among the endoscopic images captured by the endoscope, and wherein the at least one processor is configured to execute the instructions to estimate the infiltration distance based on the identified endoscopic image which contains the tumor part (Paragraph 0083, a convolutional neural network (CNN) can take endoscopic image to determine the probability of a presence of a carcinoma and its invasion depth).
Regarding claim 10, Saito discloses wherein the at least one processor is configured to execute the instructions to estimate the infiltration distance, based on a model to which the identified endoscopic image which contains the tumor part or a partial image of the identified endoscopic image is input, and wherein the model is a model which has performed a machine learning of a relation between an input image to the model and the infiltration distance of the examination target shown in the input image (Abstract, the CNN is trained on endoscopic images to determine the probability of the presence of the carcinoma).
Regarding claims 11 and 12, similar reasoning as discussed in claim 1 is applied.
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) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (US 2022/0020496 A1) in view of Merchant et al. (US 2022/0336058 A1).
Regarding claim 2, Saito discloses all limitations as discussed in claim 1. Saito does not clearly disclose wherein the at least one processor is configured to execute the instructions to cause the output device to display, as the image based on the infiltration distance, a map of the infiltration distance in the endoscopic image which contains the tumor part. Merchant discloses producing a contour immunographic map representing distances between immune cells and tumors (Paragraph 0251). Merchant’s technique of producing a contour immunographic map representing distances between immune cells and tumors would have been recognized by one of ordinary skill in the art to be applicable to the determined invasion depth of a carcinoma of Saito and the results would have been predictable in producing a contour immunographic map representing invasion depths between a carcinoma and immune cells. Therefore, the claimed subject matter would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claim 3, Merchant discloses wherein the map is a contour map of the infiltration distance (Paragraph 0251, contour immunographic map) or a heat map of the infiltration distance other than the contour map.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (US 2022/0020496 A1) in view of Endo et al. (US 2016/0314582 A1).
Regarding claim 4, Saito discloses all limitations as discussed in claim 1. Saito does not clearly disclose wherein the at least one processor is configured to execute the instructions to cause the output device to display, as the image based on the infiltration distance, a cross section view of the examination target at the tumor part. Endo discloses displaying a cross-section of a tumor where the cross-section can be selected from different distances (Paragraph 0080). Endo’s technique of displaying a cross-section of a tumor where the cross-section can be selected from different distances would have been recognized by one of ordinary skill in the art to be applicable to the invasion depth of a carcinoma of Saito and the results would have been predictable in the displaying of a cross-section of a carcinoma selected based on an invasion depth. Therefore, the claimed subject matter would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (US 2022/0020496 A1) in view of Endo et al. (US 2016/0314582 A1) and further in view of Ozawa et al. (US 2022/0233190 A1).
Regarding claim 5, Saito in view of Endo discloses all limitations as discussed in claim 4. Sato further discloses imaging an esophagus (Paragraph 0118). Sato in view of Endo does not clearly disclose wherein the cross section view includes the tumor part and a wall layer of the examination target. Ozawa discloses tumors can be part of an internal wall of an esophagus (Paragraph 0003). Ozawa’s internal wall of an esophagus having a tumor would have been recognized by one of ordinary skill in the art to be applicable to the displaying of a cross-section of a carcinoma of an esophagus of Saito in view of Endo and the results would have been predictable in the display of a cross-section of a carcinoma in a wall of an esophagus. Therefore, the claimed subject matter would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (US 2022/0020496 A1) in view of Endo et al. (US 2016/0314582 A1) and further in view of Gauthier et al. (US 2019/0357889 A1).
Regarding claim 6, Saito in view of Endo discloses all limitations as discussed in claim 4. Saito in view of Endo does not clearly disclose wherein the at least one processor is configured to execute the instructions to cause the output device to display the cross-section view cut along a line designated on the endoscopic image displayed on the output device. Gauthier discloses selection of a line for a slice of a tumor to display a cross-section image of (Paragraph 0048). Gauthier’s technique of selecting a line for a slice of a tumor to display a cross-section image of would have been recognized by one of ordinary skill in the art to be applicable to the display of cross-sections of a carcinoma based on an invasion depth of Saito in view of Endo and the results would have been predictable in the selection of a line of a slice of an imaged carcinoma at an invasion depth for displaying a cross-section at the slice. Therefore, the claimed subject matter would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (US 2022/0020496 A1) in view of Endo et al. (US 2016/0314582 A1) in view of Gauthier et al. (US 2019/0357889 A1) and further in view of Merchant et al. (US 2022/0336058 A1).
Regarding claim 7, Saito in view of Endo and further in view of Gauthier discloses all limitations as discussed in claim 6. Saito in view of Endo and further in view of Gauthier does not clearly disclose wherein the at least one processor is configured to execute the instructions to cause the output device to display a map of the infiltration distance in the endoscopic image which contains the tumor part. Merchant discloses producing a contour immunographic map representing distances between immune cells and tumors (Paragraph 0251). Merchant’s technique of producing a contour immunographic map representing distances between immune cells and tumors would have been recognized by one of ordinary skill in the art to be applicable to the determined invasion depth of a carcinoma of Saito in view of Endo and further in view of Gauthier and the results would have been predictable in producing a contour immunographic map representing invasion depths between a carcinoma and immune cells. Therefore, the claimed subject matter would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. Saito in view of Endo in view of Gauthier and further in view of Mercahnt further discloses thereafter receive an external input specifying the line (Gauthier, paragraph 0048, display of lines on the map image of the carcinoma).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (US 2022/0020496 A1) in view of Leblond et al. (US 2011/0275932 A1).
Regarding claim 8, Saito discloses all limitations as discussed in claim 1. Saito does not clearly disclose wherein the at least one processor is configured to execute the instructions to cause the output device to display a three dimensional model of the tumor part as the image based on the infiltration distance. Leblond discloses displaying a three-dimensional model of a tumor that shows the depth of the tumor (Paragraph 0040).
Leblond’s technique of displaying a three-dimensional model of a tumor that shows the depth of the tumor would have been recognized by one of ordinary skill in the art to be applicable to the imaged carcinoma with invasion depth of Saito and the results would have bene predictable in the display of a three-dimensional model of a carcinoma that shows invasion depth. Therefore, the claimed subject matter would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Okimura et al. (US 2013/0338790 A1) discloses determining cell infiltration distances from images.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHI HOANG whose telephone number is (571)270-3417. The examiner can normally be reached Mon-Fri 8:00-5:00.
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/PHI HOANG/Primary Examiner, Art Unit 2619
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