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 .
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 reference fixture, a second portion coupled to an anatomic target, and a third portion coupled to 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 reference fixture, a second portion coupled to an anatomic target, and a third portion coupled to 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 reference fixture, a second portion coupled to an anatomic target, and a third portion coupled to 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 § 103
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.
Claims 32-36, 38, 46-49 and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Van Vorhis et al. (US 2009/0314925), in view of Prisco (US 2009/0324161).
Regarding claim 32, Van discloses a fiber optic tracking system and method for tracking. Van shows a method of operating a shape sensing apparatus (par. [0033] states “...estimate the shape of the optical fiber 6...”), the method comprising: receiving shape data (see par. [0033], [0049]) from an elongated shape sensor (see 6 in fig. 2, 3 and 5) having a first portion coupled to a reference fixture (see proximal end of fiber optic 6 which is connected to a coupler in fig. 3 and 5), a second portion coupled to an anatomic target (see fiber optic 6’ or 6 coupled to element 19 in fig. 3 and fiber optic 6 coupled to element 19 in fig. 5), and a third portion coupled to the reference fixture (see proximal end of fiber optic 6 which is connected to a coupler in fig. 3 and 5); determining a first shape of the elongated shape sensor between the first and second portions (see par. [0042], [0047], [0052], [0058], [0060], [0062]); determining a second shape of the elongated shape sensor between the third and second portions (see par. [0042], [0047], [0052], [0058], [0060], [0062]); and tracking a position of the second portion at the anatomic target from the first and second shapes (see par. [0042], [0047], [0052], [0058], [0060], [0062]). Furthermore, Van shows wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor (fig. 2 and 3 shows that the second portion is between the first and third portion along a longitudinal axis of the elongated shape sensor, the examiner notes that the claim does not require that the third portion is coupled to a second location of the reference fixture and therefore, the second portion which is optic 6’ coupled to element 19 in fig. 19 is in between first and third portions).
Van fails to explicitly state wherein the first and third portions are maintained in a known kinematic relationship.
Prisco discloses a fiber shape sensor. Prisco teaches wherein the first and second portions are maintained at a fixed kinematic relationship (see abstract; see par. [0027], [0031]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the filing date of the claimed invention, to have utilized the teaching of having the first and second portions are maintained at a fixed kinematic relationship in the invention of Van, as taught by Prisco, to avoid redundant degrees of freedom, and be able to use kinematic calculation to determine instrument’s pose.
Regarding claim 33, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows wherein the elongated shape sensor includes a multi-core optical fiber (see par. [0047]; see 141, 142, 143 in fig. 7).
Regarding claim 34, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows wherein a length of the elongated shape sensor between the first and second portions is substantially different than a length of the elongated shape sensor between the third and second portions (see fig. 3 and 8).
Regarding claim 35, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Prisco teaches wherein maintaining a fixed kinematic relationship between two locations (see abstract; see par. [0027], [0031]). Therefore, it would have been obvious to one of ordinary skill in the art, before the filing date of the claimed invention, to have utilized the teaching of maintaining at a fixed kinematic relationship between two locations in the invention of Van, as taught by Prisco, to avoid redundant degrees of freedom, and be able to use kinematic calculation to determine instrument’s pose.
Regarding claim 36, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows wherein the second portion is coupled to the anatomic target in a predetermined shape (see par. [0042], [0047], [0052], [0058], [0060], [0062]).
Regarding claim 38, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows further comprising tracking an orientation of of the anatomic target based on the first and second shapes (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]).
Regarding claim 46 , Van discloses a fiber optic tracking system and method for tracking. Van shows a system comprising: a processor (see fig. 6; par. [0039]); and a memory including computer readable instructions stored thereon (see par. [0039]), the computer readable instructions, when executed by the processor, cause the system to: receive shape data (see par. [0033], [0049]) from an elongated shape sensor (see 6 in fig. 3 and 5) having a first portion coupled to a reference fixture (see proximal end of fiber optic 6 which is connected to a coupler in fig. 3 and 5), a second portion coupled to an anatomic target (see fiber optic 6’ or 6 coupled to element 19 in fig. 3 and fiber optic 6 coupled to element 19 in fig. 5), and a third portion coupled to the reference fixture (see proximal end of fiber optic 6 which is connected to a coupler in fig. 3 and 5); determining a first shape of the elongated shape sensor between the first and second portions (see par. [0042], [0047], [0052], [0058], [0060], [0062]); determining a second shape of the elongated shape sensor between the third and second portions (see par. [0042], [0047], [0052], [0058], [0060], [0062]); and tracking a position of the second portion at the anatomic target from the first and second shapes (see par. [0042], [0047], [0052], [0058], [0060], [0062]). Furthermore, Van shows wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor (fig. 2 and 3 shows that the second portion is between the first and third portion along a longitudinal axis of the elongated shape sensor, the examiner notes that the claim does not require that the third portion is coupled to a second location of the reference fixture and therefore, the second portion which is optic 6’ coupled to element 19 in fig. 19 is in between first and third portions).
Van fails to explicitly state wherein the first and third portions are maintained in a known kinematic relationship.
Prisco discloses a fiber shape sensor. Prisco teaches wherein the first and second portions are maintained at a fixed kinematic relationship (see abstract; see par. [0027], [0031]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the filing date of the claimed invention, to have utilized the teaching of having the first and second portions are maintained at a fixed kinematic relationship in the invention of Van, as taught by Prisco, to avoid redundant degrees of freedom, and be able to use kinematic calculation to determine instrument’s pose.
Regarding claim 47, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows wherein the elongated shape sensor includes a multi-core optical fiber (see par. [0047]; see 141, 142, 143 in fig. 7).
Regarding claim 48, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows wherein a length of the elongated shape sensor between the first and second portions is substantially different than a length of the elongated shape sensor between the third and second portions (see fig. 3 and 8).
Regarding claim 49, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Prisco teaches wherein maintaining a fixed kinematic relationship between two locations (see abstract; see par. [0027], [0031]). Therefore, it would have been obvious to one of ordinary skill in the art, before the filing date of the claimed invention, to have utilized the teaching of maintaining at a fixed kinematic relationship between two locations in the invention of Van, as taught by Prisco, to avoid redundant degrees of freedom, and be able to use kinematic calculation to determine instrument’s pose.
Regarding claim 51, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows further comprising tracking an orientation of the anatomic target based the first and second shapes (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]).
Claims 37, 39 and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Van Vorhis et al. (US 2009/0314925), in view of Prisco (US 2009/0324161) as applied to claims 32 and 46 above, and further in view of Ramamurthy et al. (US 2013/0085333; hereinafter Ramamurthy).
Regarding claim 37, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows wherein tracking the position of the anatomic target based on the first and second shape includes combining the first and second shapes (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]), but fails to explicitly state averaging the first and second shapes to determine the position of the second portion.
Ramamurthy discloses fiber optical instrument shape and sensing system. Ramamurthy teaches averaging shape data together from two fiber optics (see par. [0070]).
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 Van and Prisco, as taught by Ramamurthy, to provide a better measurement which will provide accurate shape of the elongated optical fiber.
Regarding claim 39, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows wherein tracking the orientation the anatomic target from the first and second shapes includes combining the first and second shapes (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]), but fails to explicitly sate averaging the first and second shapes to determine the orientation 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 Van and Prisco, as taught by Ramamurthy, to provide a better measurement which will provide accurate shape of the elongated optical fiber.
Regarding claim 50, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows wherein tracking the position of anatomic target from the first and second shapes includes combining the first and second shapes (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]), but fails to explicitly state averaging the first and second shapes to determine the position of the second portion.
Ramamurthy discloses fiber optical instrument shape and sensing system. Ramamurthy teaches averaging shape data together from two fiber optics (see par. [0070]).
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 Van and Prisco, as taught by Ramamurthy, to provide a better measurement which will provide accurate shape of the elongated optical fiber
Claims 40-44 are rejected under 35 U.S.C. 103 as being unpatentable over Van Vorhis et al. (US 2009/0314925), in view of Prisco (US 2009/0324161), in view of Krueger et al. (US 2008/0294034; hereinafter Krueger).
Regarding claim 40, Van discloses a fiber optic tracking system and method for tracking. Van shows a method of operating a shape sensing apparatus (par. [0033] states “...estimate the shape of the optical fiber 6...”), the method comprising: receiving shape data (see par. [0033], [0049]) from an elongated shape sensor having a first portion coupled to a reference fixture (see proximal end of fiber optic 6 which is connected to a coupler in fig. 3 and 5), a second portion coupled to an anatomic target (see fiber optic 6’ or 6 coupled to element 19 in fig. 3 and fiber optic 6 coupled to element 19 in fig. 5), and a third portion coupled to the reference fixture (see proximal end of fiber optic 6 which is connected to a coupler in fig. 3 and 5); determining a shape of the elongated shape sensor between the first and third portions (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]; fig. 3-5 and 8); determining a measured position for the third portion (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]); determining a measured position for the second portion (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]); and tracking a position of the anatomic target based on the second portion (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]). Furthermore, Van shows wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor (fig. 2 and 3 shows that the second portion is between the first and third portion along a longitudinal axis of the elongated shape sensor, the examiner notes that the claim does not require that the third portion is coupled to a second location of the reference fixture and therefore, the second portion which is optic 6’ coupled to element 19 in fig. 19 is in between first and third portions).
Van fails to explicitly state wherein the first and third portions are maintained in a known kinematic relationship, determining a correction factor between the measured position of the third portion and an actual position of the third portion; 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, and tracking the position of target based on the corrected position of the sensor portion.
Prisco discloses a fiber shape sensor. Prisco teaches wherein the first and second portions are maintained at a fixed kinematic relationship (see abstract; see par. [0027], [0031]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the filing date of the claimed invention, to have utilized the teaching of having the first and second portions are maintained at a fixed kinematic relationship in the invention of Van, as taught by Prisco, to avoid redundant degrees of freedom, and be able to use kinematic calculation to determine instrument’s pose.
But, Van and Prisco 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, tracking the position of target based on the corrected position of the sensor portion.
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)), and tracking the position of target based on the corrected position of the sensor portion (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, and tracking the position of target based on the corrected position of the sensor portion in the invention of Van and Prisco, 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 combined invention of Van and Prisco 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.
Regarding claim 41, Van, Prisco and Krueger disclose the invention substantially as described in the 103 rejection above, furthermore, Krueger teaches wherein correcting the measured position for the second portion includes determining a second correction factor 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 wherein correcting the measured position for the second portion includes determining a second correction factor based upon the correction factor in the invention of Van and Prisco, as taught by Krueger, to help avoid potential risk of injury by providing accurate measurement position of the elongate device.
Regarding claim 42, Van, Prisco and Krueger disclose the invention substantially as described in the 103 rejection above, furthermore, Krueger teaches wherein the correction factor includes a first offset distance between the measured position for sensor portion and an actual position of the sensor portion (see par. [0029]-[0035]; fig. 2), and wherein the second correction factor includes a second offset distance between the measured position for the second sensor portion and the corrected position of the second sensor portion (see par. [0029]-[0035]; fig. 2), the second offset distance being less than the first offset distance (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 wherein the correction factor includes a first offset distance between the measured position for sensor portion and an actual position of the sensor portion, and wherein the second correction factor includes a second offset distance between the measured position for the second sensor portion and the corrected position of the second sensor portion, the second offset distance being less than the first offset distance in the invention of Van and Prisco, as taught by Krueger, to help avoid potential risk of injury by providing accurate measurement position of the elongate device.
Regarding claim 43, Van, Prisco and Krueger disclose the invention substantially as described in the 103 rejection above, furthermore, Krueger teaches wherein the correction factor is a three-dimensional 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 wherein teaches wherein the correction factor is a three-dimensional correction factor in the invention of Van and Prisco, as taught by Krueger, to help avoid potential risk of injury by providing accurate measurement position of the elongate device.
Regarding claim 44, Van and Prisco disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows wherein determining the measured position for the second portion includes: determining a first shape of the elongated shape sensor between the first and second portions (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]).; determining a second shape of the elongated shape sensor between the third and second portions (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]).; and determining the measured position for the second portion at the anatomic target from the first and second shapes (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]).
Claims 45 are rejected under 35 U.S.C. 103 as being unpatentable over Van Vorhis et al. (US 2009/0314925), in view of Prisco (US 2009/0324161), in view of Krueger et al. (US 2008/0294034; hereinafter Krueger) as applied to 40 and 44 above, and further in view of Ramamurthy et al. (US 2013/0085333; hereinafter Ramamurthy).
Regarding claim 45, Van, Prisco and Krueger disclose the invention substantially as described in the 103 rejection above, furthermore, Van shows wherein determining the position of the second portion at the anatomic target from the first and second shapes includes combining the first and second shapes (see par. [0034], [0042], [0047], [0052], [0058], [0060], [0062]), but fails to explicitly state averaging the first and second shapes to determine the position of the second portion.
Ramamurthy discloses fiber optical instrument shape and sensing system. Ramamurthy teaches averaging shape data together from two fiber optics (see par. [0070]).
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 Van, Prisco and Krueger, as taught by Ramamurthy, to provide a better measurement which will provide accurate shape of the elongated optical fiber.
Response to Arguments
Applicant's arguments filed 11/25/2025 have been fully considered but they are not persuasive.
Applicant’s statement on page 7, that proposed amendment was discussed in a phone interview that would overcome the previous prior art rejection of claim 32, however, the claim limitation added to current amended claim 32 (“wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor”) was not discussed as the specific claim limitation that would overcome the previous prior art rejection of claim 32. During the interview (see interview summary dated 12/02/2025), examiner stated that adding that the first portion is coupled to the reference fixture at a first location and the third portion is coupled to the reference fixture at a second location would overcome the previous prior art rejection of claim 32.
In response to Applicant’s arguments on pages 8-11, with respect to claim rejection under 35 USC 101, the examiner respectfully disagrees. Upon further consideration, the examiner maintains that amended claims 32, 40 and 46 still recite claim limitation that are directed to abstract idea without reciting any limitation significantly more than the abstract idea. With respect to claims 32 and 46, the examiner notes that newly added limitation “tracking a position of the anatomic target based on the first shape and the second shape” still directed to abstract is 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.” 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 claims 32 and 46 do not recite any additional elements that are significantly more than the abstract idea and ties the limitation that are directed to abstract idea into practical use. With respect to claim 40, the examiner notes that newly added limitation “tracking a position of the anatomic target based on the corrected position of the second portion of the elongated shape sensor” still directed to abstract is 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.” A physician can view the corrected position data of the second portion of the elongated shape sensor and track the position of the anatomic target from the corrected position data of the second portion. The claim 40 do not recite any additional elements that are significantly more than the abstract idea and ties the limitation that are directed to abstract idea into practical use.
In response to Applicant arguments on pages 13-14, with respect to prior art rejection of claims 32 and 40, the examiner respectfully disagrees. The examiner maintains that prior art Van does disclose all the claim limitations set forth in claims 32 and 46, particular the claim limitation of wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor (fig. 2 and 3 shows that the second portion is between the first and third portion along a longitudinal axis of the elongated shape sensor, the examiner notes that the claim does not require that the third portion is coupled to a second location of the reference fixture and therefore, the second portion which is optic 6’ coupled to element 19 in fig. 19 is in between first and third portions).
In response to Applicant arguments on pages 15-16, with respect to prior art rejection of claim 40, the examiner respectfully disagrees. The examiner maintains that prior art Van does disclose all the claim limitations set forth in claim 40, particular the claim limitation of wherein the second portion is between the first and third portions along a longitudinal axis of the elongated shape sensor (fig. 2 and 3 shows that the second portion is between the first and third portion along a longitudinal axis of the elongated shape sensor, the examiner notes that the claim does not require that the third portion is coupled to a second location of the reference fixture and therefore, the second portion which is optic 6’ coupled to element 19 in fig. 19 is in between first and third portions). Furthermore, the examiner notes that Krueger teaches tracking a position of target based on the corrected position of the sensor portion and (see par. [0029]-[0035]; fig. 2).
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 a method and system for absolute 3D measurement using twist-insensitive shape sensor.
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.
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.
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/SHAHDEEP MOHAMMED/ Primary Examiner, Art Unit 3797
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