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.
Claims 1, 2, 3, 4, 5 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 2, 3, 4 and 7, respectively, of U.S. Patent No. 12137870, (the pending claim nos. are listed in order of correspondence to the patented claim nos.).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the only difference between the claims of the present application and the patented claims is that the patented claims include more elements and are thus more specific. Thus, the invention of the patented claims is in effect a “species” of the “generic” invention of the claims of the present application. It has been held that the generic invention is “anticipated” by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the claims of the present application are anticipated by the patented claims, they are not patentably distinct from the patented claims.
Claims 11, 12, 13, 15, 18, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 12, 9, 10, 11, 14 and 15 respectively, of U.S. Patent No. 12137870, (the pending claim nos. are listed in order of correspondence to the patented claim nos.)
Although the conflicting claims are not identical, they are not patentably distinct from each other because the only difference between the claims of the present application and the patented claims is that the patented claims include more elements and are thus more specific. Thus, the invention of the patented claims is in effect a “species” of the “generic” invention of the claims of the present application. It has been held that the generic invention is “anticipated” by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the claims of the present application are anticipated by the patented claims, they are not patentably distinct from the patented claims.
Claims 1, 2, 3, 4, 8,11,15, 18 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 2, 3, 7, 9, 11, 12, and 15, respectively, of U.S. Patent No. 11141047, (the pending claim nos. are listed in order of correspondence to the patented claim nos.).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the only difference between the claims of the present application and the patented claims is that the patented claims include more elements and are thus more specific. Thus, the invention of the patented claims is in effect a “species” of the “generic” invention of the claims of the present application. It has been held that the generic invention is “anticipated” by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the claims of the present application are anticipated by the patented claims, they are not patentably distinct from the patented claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claims 9 and 16, the recitation “oral cavity proper of the patient” renders the claim vague and indefinite because it is unclear what extent of the oral cavity is being claimed. For examination purposes, it is assumed that Applicant intended to recite “inside the oral cavity of the patient.”
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-11 and 13-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Prakash et al. (US 20130209954).
Regarding claims 1 and 11, Prakash et al. disclose a portable handheld system for imaging of a throat of a patient including: a mouthpiece 210 comprising at least one bite guide 212a-b (Figs. 2A-2C) for stabilizing the mouthpiece with respect to teeth of the patient when the patient bites on the at least one bite guide; intraoral optics (either pin hole or wide angle lens mounted to flange 222 which is fitted within opening 211 of mouthpiece 210) operable to collect light from the throat of the patient and to direct the light towards an imaging sensor, the intraoral optics being mechanically coupled to the mouthpiece; and an imaging sensor (camera CD 1365) operable to capture light directed by the intraoral optics to provide an image of the throat; wherein the mechanical coupling between the mouthpiece and the intraoral optics constrains a spatial relationship of the intraoral optics with respect to the mouthpiece so that when the patient bites on the at least one bite guide the intraoral optics is stabilized by the mouthpiece inside a mouth of the patient having a field of view which comprises at least part of a tonsil of the patient (Figs. 2A-C, paras [0047]-[0050], [0053], [0056]-[0058], [0066], [0070]-[0072], and para[0103]).
Regarding the recitation “selectively trigger capturing of the image by the imaging sensor in response recognizing the at least part of the selected body part within the body orifice of the patient,” Prakash et al. disclose imaging performed automatically for e.g. a bright field image is followed by a fluorescence image wherein the selected body part is a specific body part, namely the oral cavity inside the mouth or orifice of the patient (paras [0079]-[0081]).
Regarding claims 3 and 15, Prakash et al. disclose the imaging sensor is operable to capture the image when a posterior most optical component of the intraoral optics is located posterosuperiorly to an inferior most point of any maxillary central incisor of the patient (optical path 223 comprising either pin hole or wide angle lens mounted to flange 222 which is fitted within opening 211 of mouthpiece 210 such that the optics are behind the maxillary central incisor).
Regarding claims 4, 10 and 18, Prakash et al. disclose a display 1307 (cell phone 280) mechanically coupled to the mouthpiece (via camera mount 220), the display operable to display images as images are captured by the imaging sensor.
Regarding claims 5, 9, 13 and 16, Prakash et al. disclose a mechanical coupling between the mouthpiece and the intraoral optics constrains a spatial relationship of the intraoral optics with respect to the at least one bite guide such that the intraoral optics are located in the oral cavity proper of the patient when the patient bites on the at least one bite guide (para [0050], [0053], [0054], [0056]-[0058], fig 2A-C, optical path 223 comprising either pin hole or wide angle lens mounted to flange 222 which is fitted within opening 211 of mouthpiece 210 such that the optics are within the oral cavity).
Regarding claim 6, the Prakash et al. disclose a handgrip that can be used by the patient or attending doctor to adjust the mouthpiece (Fig. 5A).
Regarding claims 7 and 14, Prakash et al. disclose the spatial relationship of the intraoral optics with respect to the mouthpiece as constrained by the mechanical coupling, enables the imaging sensor to image the at least part of the tonsil when a tongue of the patient is not mechanically forced down (flange 222 constrains the optics with respect to the mouthpiece in order to suitably aim the optics at any anatomical part in view which includes the tonsils, tongue is not restrained).
Regarding claims 8 and 19, Prakash et al. disclose a display device 1114 for presenting images (para [0122]).
The method steps of claims 11 and 13-19 are performed when the Prakash et al. device is used to image the throat of a patient.
Regarding claim 20, Prakash et al. disclose a computer readable medium to be configured to cause the apparatus to perform one or more steps of the computer program method (para [0011]).
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 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. (US 20130209954) in view of Meah (US 6257238).
Prakash et al. disclose all elements of the claimed invention except for a tongue depressor mechanically coupled to the mouthpiece so as to enable the tongue depressor to depress a tongue of the patient when the patient bites on the at least one bite guide.
Meah discloses a tongue depressor mechanically coupled to a mouthpiece to keep the tongue depressed.
Therefore, it would have been obvious to one having ordinary skill in the art to have provided a tongue depressor in the mouthpiece of Prakash et al., as taught by Meah, since it was well known to provide a tongue depressor to keep the tongue of a patient depressed when a mouthpiece is inserted into the mouth of a patient.
The functional language “wherein the image is acquired while the tongue depressor depresses the tongue of the patient” is met when the Prakash et al. device is used to image the throat of the patient while the tongue is depressed by the tongue depressor.
The claimed method steps are rendered obvious when the Prakash et al. device is used to image the throat of a patient.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anu Ramana whose telephone number is (571)272-4718. The examiner can normally be reached 8:00 am-5:00 pm.
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December 29, 2025
/Anu Ramana/Primary Examiner, Art Unit 3775