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 § 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.
Claim 12 is 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.
Claim 12 recites, in line 6, “positioning at least one component of the imaging system” and in line 10, “moving at least one component of the imaging system”. It is unclear if these are both the same component or different components of the imaging system.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(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 2, 8-12, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ramsauer (US 2007/0139799 A1).
With respect to claim 2, Ramsauer discloses an imaging system (1) comprising: a gantry (20); an immobilization system coupled to the gantry and rotatable relative to the gantry, wherein the immobilization system comprises a paddle (22), a support platform (21), and an x-ray receptor (33); and an x-ray tube head (31) coupled to the gantry and comprising an x-ray source (32) and a light source (41 & 51), wherein the x-ray tube head is independently rotatable relative to the gantry and the immobilization system (paragraph 0027), wherein the imaging system is configured to be positioned in a plurality of component conditions, wherein the light source is configured to generate at least a first light type (41) and a different second light type (51) directed towards the support platform (21), and wherein the first light type is based on the imaging system having a first component condition (paragraphs 0035-0036) and the second light type is based on the imaging system having a different second component condition (paragraph 0037).
With respect to claim 12, Ramsauer discloses a method of illuminating a support platform (21) of an imaging system (1), the imaging system comprising: (a) a gantry (20), (b) an immobilization system comprising a paddle (22), the support platform (21), and an x-ray receptor (33), the immobilization system rotatable relative to the gantry, and (c) an x-ray tube head (31) comprising an x-ray source (32) and a light source (41 & 51), and independently rotatable relative to the gantry and the immobilization system (paragraph 0027), the method comprising: positioning at least one component of the imaging system such that the imaging system is in a first component condition; generating, via the light source, a first light type directed towards the support platform based on the imaging system being in the first component condition (paragraphs 0035-0036); moving at least one component of the imaging system such that the imaging system is in a different second component condition; and changing the first light type to a different second light type based on the imaging system being in the second component condition (paragraph 0037).
With respect to claims 8 and 18, Ramsauer discloses wherein the first light type is mapped to an x-ray field of the x-ray source (paragraph 0035 - “The first light source 41 displays (illuminates) the surface region through which the X-radiation shines when it is operated.”).
With respect to claim 9, Ramsauer discloses wherein the light source includes a multi-colored light source (paragraph 0037 – “The colors of the emitted light can be selected arbitrarily.”).
With respect to claims 10 and 19, Ramsauer discloses wherein the first light type is a different color than the second light type (paragraphs 0035-0037).
With respect to claim 11, Ramsauer discloses wherein the second light type is a working light (paragraphs 0037 & 0043).
With respect to claim 20, Ramsauer discloses adjusting intensity of at least one of the first light type or the second light type (paragraph 0014).
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 3-7, 13-17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ramsauer (US 2007/0139799 A1) as applied to claims 2 and 12 above.
With respect to claims 3 and 13, Ramsauer does not specifically disclose wherein the first component condition is based on a rotational position of the x-ray tube head relative to the support platform. Ramsauer teaches (paragraph 0035) - “The first light source 41 displays (illuminates) the surface region through which the X-radiation shines when it is operated.” This implies that, for example, when initially positioning an object under compression for impending imaging, with the x-ray tube head positioned fully upright, the first light source displays to illuminate the object area to ensure proper coverage. It would have been obvious to one of ordinary skill in the art at the time the invention was made that Ramsauer has a first component condition based on a rotational position of the x-ray tube head relative to the support platform, in applications or steps when the X-ray illumination is desired to be known, such as when positioning a patient for radiation imaging or treatment by the X-ray head, to ensure accurate positioning.
With respect to claims 4 and 14, Ramsauer does not specifically disclose wherein the first component condition is based on a rotational position of the x-ray tube head and a compression force generated by the paddle. Ramsauer teaches (paragraph 0035) - “The first light source 41 displays (illuminates) the surface region through which the X-radiation shines when it is operated.” This implies that, for example, when initially positioning an object under compression for impending imaging, with the x-ray tube head positioned fully upright and with a compression generated by the paddle, the first light source displays to illuminate the object area to ensure proper coverage. It would have been obvious to one of ordinary skill in the art at the time the invention was made that Ramsauer has a first component condition based on a rotational position of the x-ray tube head and a compression force generated by the paddle, in applications or steps when the X-ray illumination is desired to be known, such as when positioning a patient for radiation imaging or treatment by the X-ray head, to ensure accurate positioning.
With respect to claims 5 and 15, Ramsauer does not specifically disclose wherein the first component condition is based on a rotational position of the x-ray tube head or a compression force generated by the paddle. Ramsauer teaches (paragraph 0035) - “The first light source 41 displays (illuminates) the surface region through which the X-radiation shines when it is operated.” This implies that, for example, when initially positioning an object under compression for impending imaging, with the x-ray tube head positioned fully upright and a compression force generated by the paddle, the first light source displays to illuminate the object area to ensure proper coverage. It would have been obvious to one of ordinary skill in the art at the time the invention was made that Ramsauer has a first component condition based on a rotational position of the x-ray tube head or a compression force generated by the paddle, in applications or steps when the X-ray illumination is desired to be known, such as when positioning a patient for radiation imaging or treatment by the X-ray head, to ensure accurate positioning.
With respect to claims 6 and 16, Ramsauer does not specifically disclose wherein the first component condition is based on a type of paddle attached to the imaging system. Ramsauer teaches (paragraph 0035) - “The first light source 41 displays (illuminates) the surface region through which the X-radiation shines when it is operated.” This implies that, for example, when initially positioning an object under compression for impending imaging, by attaching a paddle to the imaging system, the type of paddle attached to the imaging system determines that the first light source should display to illuminate the object area to ensure proper coverage. It would have been obvious to one of ordinary skill in the art at the time the invention was made that Ramsauer has a first component condition based on a type of paddle attached to the imaging system, in applications or steps when the X-ray illumination is desired to be known, such as when positioning a patient for radiation imaging or treatment by the X-ray head, to ensure accurate positioning.
With respect to claims 7 and 17, Ramsauer does not specifically disclose wherein the first component condition is based on a biopsy device attached to the imaging system. Ramsauer teaches (paragraph 0035) - “The first light source 41 displays (illuminates) the surface region through which the X-radiation shines when it is operated.” This implies that, for example, when initially positioning an object for impending biopsy, by attaching a biopsy device to the imaging system, the first light source displays to illuminate the object area to ensure proper coverage. It would have been obvious to one of ordinary skill in the art at the time the invention was made that Ramsauer has a first component condition based on a biopsy device attached to the imaging system, in applications or steps when the X-ray illumination is desired to be known, such as when positioning a patient for radiation imaging or treatment by the X-ray head, to ensure accurate positioning.
With respect to claim 21, Ramsauer does not specifically disclose generating audible feedback when generating at least one of the first light type or the second light type. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Ramsauer to generate audible feedback when generating at least one of the first light type or the second light type, as a matter of design choice, to ensure the proper light type is being applied in the specific situation.
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 2-5, 8-15, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6, 17-18, and 20 of U.S. Patent No. 11,801 018 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3-4, 6, 17-18, and 20 of the patent claim all of the elements claimed in claims 2-5, 8-15, and 18-20 of the instant application, but in broader terms. For example, claim 1 of the patent recites that the first and second light type is based on a tilt angle of the x-ray tube head relative to the support platform and a compression force of the compression paddle, whereas independent claim 2 of the instant application recites that the first and second light type is based on the imaging system having a first or second component condition, respectively. It would have been obvious to one of ordinary skill in the art at the time the invention was made that first and second component conditions are a broader recitation of tilt angle of the x-ray tube head relative to the support platform and a compression force of the compression paddle. The claims of the instant application are broader and therefore anticipated by the claims of the patent.
Claims 2-7, 9-10, 12-17, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 7-10, 12-15, and 18-20 of U.S. Patent No. 12,121,377 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2, 4, 7-10, 12-15, and 18-20 of the patent claim all of the elements claimed in claims 2-7, 9-10, 12-17, and 19 of the instant application, but in broader terms. For example, claim 1 of the patent recites that the first and second light type is based on the imaging system being in a first or second imaging mode, respectively, whereas independent claim 2 of the instant application recites that the first and second light type is based on the imaging system having a first or second component condition, respectively. It would have been obvious to one of ordinary skill in the art at the time the invention was made that first and second component conditions are a broader recitation of the imaging system being in a first or second imaging mode. The claims of the instant application are broader and therefore anticipated by the claims of the patent.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6, 17-18, and 20 of U.S. Patent No. 11,801 018 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3-4, 6, 17-18, and 20 of the patent recite all of the elements except for generating audible feedback when generating at least one of the first light type or the second light type. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the claims of the patent to generate audible feedback when generating at least one of the first light type or the second light type, as a matter of design choice, to ensure the proper light type is being applied in the specific situation.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 7-10, 12-15, and 18-20 of U.S. Patent No. 12,121,377 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2, 4, 7-10, 12-15, and 18-20 of the patent recite all of the elements except for generating audible feedback when generating at least one of the first light type or the second light type. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the claims of the patent to generate audible feedback when generating at least one of the first light type or the second light type, as a matter of design choice, to ensure the proper light type is being applied in the specific situation.
Conclusion
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/JURIE YUN/Primary Examiner, Art Unit 2884
August 5, 2026
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