CTNF 18/897,488 CTNF 82797 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-42-05 AIA 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 allowance or after an Office action under Ex Parte Quayle , 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 5/20/2026 has been entered. Claim Rejections - 35 USC § 112 07-30-01 AIA 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. 07-31-01 Claims 16-35 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. With respect to claims 16, 26, and 31, the instant specification provides written description covering the acquisition of a “plurality of images of a plurality of surgical sites as captured by each imaging system during a plurality of surgical procedures ” ( emphasis added). Instant claims 16, 26, and 31 lack this important distinction in that they generally list the acquisition and do not qualify the acquisition requirements for the modus described in the specification (see 0004, 0196, 0228 (goals/outcomes), 0246-0247, 0255, 0281). One of ordinary skill would not reduce the instant claims to their intended practice merely by “…receive the EMR reflected by a tissue at a surgical site”, but rather would require there to be a surgical procedure being performed (or at the very least being classified or connotated during a perioperative period (0246-0250)), as the database of the instant specification explicitly requires the imaging data to be associated with one of a plurality of surgical procedures. Please see the 112(b) rejection below for discussion of potential amendments. Insofar as the instant system identifies (or can assist to identify) the procedure from devices/aux equipment, the act of pairing those devices (0234) can provide contextual information about the procedure, but that is the only disclosure Examiner has discovered with respect to a non-surgical procedure based content for classification of procedure being utilized in the written description. 07-30-02 AIA 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. 07-34-01 Claims 16-35 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. With respect to claims 16, 26, and 31 above, the claims currently lack the distinction that the imaging system receives the reflected tissue imaging data at the surgical site during a surgical procedure . This is subsequently recalled during the reception of imaging data from the imaging system wherein the imaging data is “associated with one of a plurality of surgical procedures”, and accordingly needs to be positively set forth during the imaging system classification/tagging/databasing that is utilized by the control circuit. For the purpose of examination, and based on the specification analysis above in the 112(a) rejection, it is believed that the claims do require acquisition during a surgical procedure (and at the surgical site) so that the analysis system can provide the identification of step, instrument, etc from the database. Allowable Subject Matter 07-43-01 AIA Claim s 16-35 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL M. LAMPRECHT whose telephone number is (571)272-3250. The examiner can normally be reached Mon - Fri 9:00-5:30. 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, Keith Raymond can be reached at (571)270-1790. 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. /JOEL LAMPRECHT/Primary Examiner, Art Unit 3798 Application/Control Number: 18/897,488 Page 2 Art Unit: 3798 Application/Control Number: 18/897,488 Page 3 Art Unit: 3798
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