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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/112026 has been entered.
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 32-51 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite an abstract idea as discussed below. This abstract idea is not integrated into a practical application for the reasons discussed below. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the reasons discussed below.
Step 1 of the 2019 Guidance requires the examiner to determine if the claims are to one of the statutory categories of invention. Applied to the present application, the claims belong to one of the statutory classes of a process or product as a computer implemented method or a computer system/product.
Step 2A of the 2019 Guidance is divided into two Prongs. Prong 1 requires the examiner to determine if the claims recite an abstract idea, and further requires that the abstract idea belong to one of three enumerated groupings: mathematical concepts, mental processes, and certain methods of organizing human activity.
Regarding claim 32, the independent claim is directed to a method of operating a shape sensing apparatus. The examiner notes that claim limitations “determining a first shape of elongate shape sensor between the first and second portions; determining a second shape of the elongate shape sensor between the third and second portions; and tracking a position of the anatomic target based on the first shape and the second shape” are directed to an abstract because the claim limitation can be performed via mathematical concepts and mental process, with assistance of basic physical aids or with pen and paper. See MPEP § 2106.04(a)(2)(III)(B). Intellectual Ventures LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) established that mental processes encompass acts which, absent anything beyond generic computer components, may be “performed by a human, mentally or with pen and paper.”
Furthermore, the claim does not include additional elements which are sufficient to amount to significantly more than the abstract idea. The examiner notes that claim limitations “receiving shape data from an elongate shape sensor having a first portion coupled to a first location of reference fixture, a second portion coupled to an anatomic target, and a third portion coupled to a second location of the reference fixture” do not sufficient to amount to significantly more than the abstract idea because these claim limitations are directed to extra solution activity of data gathering, and the claims dies not positively recites the elongate shape sensor.
Furthermore, the additional elements of an elongate shape sensor having first, second and third portion are not significantly more than the abstract idea because these elements are not positively recited in claim 32, and these additional elements are well known in the art (see prior art Van).
In consideration of each of the relevant factors and the claim elements both individually and in combination, claim 32 is directed to an abstract ideas without sufficient integration into a practical application and without significantly more.
Regarding claims 33-36, the additional claim element of the elongate shape sensor is not positively recited in claim 32 as claim 32 merely is directed to receiving data from the elongate shape sensor, and therefore, are not significantly more than the abstract idea. Furthermore, multi core optical fiber is well known (see Van), and length of the elongate shape sensor having different length in different portion of the elongate shape sensor is also well known (see Van).
Regarding claims 37-39, the claims further recites limitation (determining and tracking steps) that are directed to abstract idea because the claim limitation can be performed via mathematical concepts and mental process, with assistance of basic physical aids or with pen and paper.
Regarding claim 40, the independent claim is directed to a method of operating a shape sensing apparatus. The examiner notes that claim limitations “determining a shape of the elongated shape sensor between the first and third portions; determining a measured position for the third portion; determining a correction factor between the measured position of the third portion and an actual position of the third portion; determining a measured position for the second portion; determining a corrected position of the second portion by correcting the measured position for the second portion based upon the correction factor; and tracking a position of the anatomic target based on the corrected position of the second portion of the elongated shape sensor” are directed to an abstract because the claim limitation can be performed via mathematical concepts and mental process, with assistance of basic physical aids or with pen and paper. See MPEP § 2106.04(a)(2)(III)(B). Intellectual Ventures LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) established that mental processes encompass acts which, absent anything beyond generic computer components, may be “performed by a human, mentally or with pen and paper.”
Furthermore, the claim does not include additional elements which are sufficient to amount to significantly more than the abstract idea. The examiner notes that claim limitations “receiving shape data from an elongate shape sensor having a first portion coupled to a first location of reference fixture, a second portion coupled to an anatomic target, and a third portion coupled to a second location of the reference fixture” do not sufficient to amount to significantly more than the abstract idea because these claim limitations are directed to extra solution activity of data gathering, and the claims dies not positively recites the elongate shape sensor.
Furthermore, the additional elements of an elongate shape sensor having first, second and third portion are not significantly more than the abstract idea because these elements are not positively recited in claim 40, and these additional elements are well known in the art (see prior art Van).
In consideration of each of the relevant factors and the claim elements both individually and in combination, claim 40 is directed to an abstract ideas without sufficient integration into a practical application and without significantly more.
Regarding claims 41-45, the claims further recite limitation (i.e., correcting steps, determining steps) that are directed to abstract idea because the claim limitation can be performed via mathematical concepts and mental process, with assistance of basic physical aids or with pen and paper.
Regarding claim 46, the independent claim is directed to a system. The examiner notes that claim limitations “determine first shape of the elongate shape sensor between the first and second portions; determining a second shape of the elongated shape sensor between the third and second portions; and tracking a position of the anatomic target based on the first shape and the second shape” are directed to an abstract because the claim limitation can be performed via mathematical concepts and mental process, with assistance of basic physical aids or with pen and paper. See MPEP § 2106.04(a)(2)(III)(B). Intellectual Ventures LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) established that mental processes encompass acts which, absent anything beyond generic computer components, may be “performed by a human, mentally or with pen and paper.”
Furthermore, the claim does not include additional elements which are sufficient to amount to significantly more than the abstract idea. The examiner notes that claim limitations “receiving shape data from an elongate shape sensor having a first portion coupled to a first location of a reference fixture, a second portion coupled to an anatomic target, and a third portion coupled to a second location of the reference fixture” do not sufficient to amount to significantly more than the abstract idea because these claim limitations are directed to extra solution activity of data gathering, and the claims dies not positively recites the elongate shape sensor.
Furthermore, the additional elements of a processor and memory does not amount to significantly more than the abstract idea because these elements are generic computer to perform the abstract idea.
Furthermore, the additional elements of an elongate shape sensor having first, second and third portion are not significantly more than the abstract idea because these elements are not positively recited in claim 46, and these additional elements are well known in the art (see prior art Van).
In consideration of each of the relevant factors and the claim elements both individually and in combination, claim 46 is directed to an abstract ideas without sufficient integration into a practical application and without significantly more.
Regarding claims 47-49, the additional claim element of the elongate shape sensor is not positively recited in claim 46 as claim 46 merely is directed to receiving data from the elongate shape sensor, and therefore, are not significantly more than the abstract idea. Furthermore, multi core optical fiber is well known (see Van), and length of the elongate shape sensor having different length in different portion of the elongate shape sensor is also well known (see Van).
Regarding claims 50-51, the claims further recite limitation (determining and tracking steps) that are directed to abstract idea because the claim limitation can be performed via mathematical concepts and mental process, with assistance of basic physical aids or with pen and paper.
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 32, 34-36, and 38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. US 11,266,466. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and U.S. Patent No. US 11,266,466 are directed to a method of operating a shape sensing apparatus, the method comprising receiving shape data from an elongate shape sensor having a first portion, second portion and a third portion, the first and second portions are maintained in a known kinematic relationship, determining a first, second shape and tracking a position of the second portion from the determined shaped. Furthermore, the claims of U.S. Patent No. US 11,266,466 are narrower than the claims of current application.
Claims 46, 48, 49 and 51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. US 11,266,466. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and U.S. Patent No. US 11,266,466 are directed to a system comprising a processor and memory, and the processor configured to receiving shape data from an elongate shape sensor having a first portion, second portion and a third portion, the first and second portions are maintained in a known kinematic relationship, determining a first, second shape and tracking a position of the second portion from the determined shaped. Furthermore, the claims of U.S. Patent No. US 11,266,466 are narrower than the claims of current application.
Claim 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 11,266,466 in view of Prisco (US 2009/0324161). Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and U.S. Patent No. US 11,266,466 are directed to a method of operating a shape sensing apparatus, but U.S. Patent No. US 11,266,466 fails to explicitly state the shape sensor includes a multi-core optical fiber. Prisco discuses a shape sensor with multi core optical fiber (see fig. 4b). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of multi core optical fiber in the invention of U.S. Patent No. US 11,266,466, as taught by Prisco, to provide a more accurate shape sensing data.
Claims 37 and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 11,266,466 in view of Ramamurthy et al. (US 2013/0085333; hereinafter Ramamurthy). Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and U.S. Patent No. US 11,266,466 are directed to a method of operating a shape sensing apparatus, but U.S. Patent No. US 11,266,466 fails to explicitly state averaging the first and second shapes to determine the position of the second portion. Therefore, it would have been obvious to one of ordinary skill in art, before the effective filing of the claimed invention, to have utilized the teaching of averaging shape data together from two fiber optics in the invention of U.S. Patent No. US 11,266,466, as taught by Ramamurthy, to provide a better measurement which will provide accurate shape of the elongated optical fiber.
Claims 40-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. US 11,266,466 in view of Krueger et al. (US 2008/0294034; hereinafter Krueger). Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and U.S. Patent No. US 11,266,466 are directed to a method of operating a shape sensing apparatus, the method comprising receiving shape data from an elongate shape sensor having a first portion, second portion and a third portion, the first and second portions are maintained in a known kinematic relationship, determining a shape of the elongate shape sensor, and tracking a position of the second portion from the determined shaped. Furthermore, the claims of U.S. Patent No. US 11,266,466 are narrower than the claims of current application, but US patent No. US 11,266,466 fail to explicitly state determining a correction factor between the measured position of the third portion and an actual position of the third portion; determining a corrected position of the second portion by correcting the measured position of the second portion based upon the correction factor.
Krueger discloses a device and method for determining the position of an elongate device. Krueger teaches determining a correction factor between measured position of a sensor portion and actual position of the sensor portion (see par. [0029]-[0035]; fig. 2); determining a corrected position of a second sensor portion by correcting the measured position of the second sensor portion based upon the correction factor ((see par. [0029]-[0035]; fig. 2)).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of a correction factor between measured position of a sensor portion and actual position of the sensor portion; determining a corrected position of a second sensor portion by correcting the measured position of the second sensor portion based upon the correction factor in the invention of U.S. Patent No. US 11,266,466, as taught by Krueger, to help avoid potential risk of injury by providing accurate measurement position of the elongate device. The examiner notes that upon incorporating the teaching of Krueger into the invention of U.S. Patent No. US 11,266,466 would provide a correction factor between the measured position of the third portion and an actual position of the third portion; determining a corrected position of the second portion by correcting the measured position of the second portion based upon the correction factor.
Claim 45 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1of U.S. Patent No. US 11,266,466 in view of Krueger et al. (US 2008/0294034; hereinafter Krueger) as applied to claim 40 above, and further in view of Ramamurthy et al. (US 2013/0085333; hereinafter Ramamurthy). Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and U.S. Patent No. US 11,266,466 are directed to a method of operating a shape sensing apparatus, but U.S. Patent No. US 11,266,466 fails to explicitly state averaging the first and second shapes to determine the position of the second portion. Therefore, it would have been obvious to one of ordinary skill in art, before the effective filing of the claimed invention, to have utilized the teaching of averaging shape data together from two fiber optics in the invention of U.S. Patent No. US 11,266,466 and Krueger, as taught by Ramamurthy, to provide a better measurement which will provide accurate shape of the elongated optical fiber.
Claim 47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. US 11,266,466 in view of Prisco (US 2009/0324161). Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and U.S. Patent No. US 11,266,466 are directed to a system for shape sensing, but U.S. Patent No. US 11,266,466 fails to explicitly state the shape sensor includes a multi-core optical fiber. Prisco discuses a shape sensor with multi core optical fiber (see fig. 4b). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of multi core optical fiber in the invention of U.S. Patent No. US 11,266,466, as taught by Prisco, to provide a more accurate shape sensing data.
Claim 50 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. US 11,266,466 in view of Ramamurthy et al. (US 2013/0085333; hereinafter Ramamurthy). Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and U.S. Patent No. US 11,266,466 are directed to a system for shape sensing, but U.S. Patent No. US 11,266,466 fails to explicitly state averaging the first and second shapes to determine the position of the second portion. Therefore, it would have been obvious to one of ordinary skill in art, before the effective filing of the claimed invention, to have utilized the teaching of averaging shape data together from two fiber optics in the invention of U.S. Patent No. US 11,266,466, as taught by Ramamurthy, to provide a better measurement which will provide accurate shape of the elongated optical fiber.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 32-51 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 32, the claim limitation “wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor” in lines 6-7 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Fig. 8 of the present application discloses a first segment to be between A and B and second segment to be between B and C, but the figure 8 and specification does not explicitly disclose wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor since the second portion which is Fig. 8 referred it as B is part of first shape of elongated shape sensor which is between the first and second portions and second shape elongate shape sensor which is between second portions and third portions.
Claims 33-39 are rejected as they depend upon rejected claim 32.
Regarding claim 40, the claim limitation “wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor” in lines 6-7 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Fig. 8 of the present application discloses a first segment to be between A and B and second segment to be between B and C, but the figure 8 and specification does not explicitly disclose wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor since the second portion which is Fig. 8 referred it as B is part of first shape of elongated shape sensor which is between the first and second portions and second shape elongate shape sensor which is between second portions and third portions.
Claims 41-45 are rejected as they depends upon rejected claim 40.
Regarding claim 46, the claim limitation “wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor” in lines 8-10 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Fig. 8 of the present application discloses a first segment to be between A and B and second segment to be between B and C, but the figure 8 and specification does not explicitly disclose wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor since the second portion which is Fig. 8 referred it as B is part of first shape of elongated shape sensor which is between the first and second portions and second shape elongate shape sensor which is between second portions and third portions.
Claims 47-51 are rejected as they depend upon rejected claim 46.
Response to Arguments
In view of Applicant’s amendments to claims 32, 40 and 46, and remarks filed on 02/26/2026 (see pages 12-14), the previous prior art rejection has been withdrawn.
Applicant's arguments filed 02/26/2026, with respect to claim rejection under 35 USC 101 have been fully considered but they are not persuasive.
In response to Applicant’s arguments on pages 7-11, with respect to claim rejection under 35 USC 101, the examiner respectfully disagrees. The examiner maintains that claims 32, 40 and 46 still recite claim limitations that are directed to abstract idea without reciting any limitation significantly more than the abstract idea. The examiner notes that the independent claims as a whole do not integrate the recited judicial exception into a practical application. The limitation of tracking a position of the anatomic target based on the first shape and the second shape still directed to abstract idea because the claim limitation can be performed via mental process, with assistance of basic physical aids or with pen and paper. A physician can view the first shape data and second shape data and track the position of the anatomic target from first shape data image and second data image. The examiner notes that a judicial exception alone is not eligible subject matter, if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. The independent claims need to limit additional claim elements which integrate the judicial exception into a practical application, however, none of the independent claims recite any additional elements that are significantly more than the abstract idea and ties the claim limitations that are directed to abstract idea into practical use.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Prisco et al. (US 2011/0202069) disclose 3D measurement with shape sensors with relation to reference fixture (see abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAHDEEP MOHAMMED whose telephone number is (571)270-3134. The examiner can normally be reached Monday to Friday, 9am to 5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne M Kozak can be reached at (571)270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHAHDEEP MOHAMMED/Primary Examiner, Art Unit 3797
