CTNF 18/909,308 CTNF 82211 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. Priority Applicant’s claim for domestic benefit under 35 U.S.C. 119(e) is acknowledged. Information Disclosure Statement The information disclosure statement submitted has been considered by the Examiner and made of record in the application file. Claim Rejections - 35 USC § 112 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 1-21 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. 07-34-12 Claims 1 and 19-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being incomplete for omitting essential steps/elements, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps/elements are: fig. 5, S2 or fig. 9, S12. Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s of U.S. Patent No. 12143755 . Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art at a time before the effective filing date of the claimed subject matter to arrive at the slightly broader instant invention . Instant App. Pat. # 12143755 Comments 1 . An image processing apparatus for use with an endoscope system, the image processing apparatus comprising: 1. An image processing apparatus for use with an endoscope system, the image processing apparatus comprising: Substantially the similar recitation. a first processor configured to perform image processing on an inputted image, the image processing including a diagnostic process; a first processor configured to: perform image processing on an inputted image, the image processing including a diagnostic process; Substantially the similar recitation. a second processor configured to perform selection processing to select and transmit the inputted image to an external image processing apparatus connected to an external network; and a second processor configured to perform selection processing to select and transmit a portion of the inputted image to an external image processing apparatus connected to an external network; Substantially the similar recitation. an interface configured to receive a processing result of the diagnostic process by the external image processing apparatus, an interface configured to receive a processing result of the diagnostic process by the external image processing apparatus; and Substantially the similar recitation. wherein the external image processing apparatus is configured to perform at least one of a detection of a lesion candidate or a differentiation of the lesion candidate. outputs the inputted image and at least one of the processing result by the first processor or the processing result by the external image processing apparatus. Substantially the similar recitation. Obvious over Sorenson USPN 2018/0137244. Claims 2-18 are obvious over claims 2-20 of Pat # 12143755. Instant App. Pat. # 12143755 Comments 20 . An image processing method using an endoscope system and an external image processing apparatus, the image processing method comprising: 21. An image processing method used in an endoscope system comprising: Substantially the similar recitation. performing, by the endoscope system, image processing on an inputted image, the image processing including diagnostic process; performing image processing on an inputted image, the image processing including a diagnostic process; Substantially the similar recitation. performing, by the endoscope system, selection processing to select and transmit the inputted image to the external image processing apparatus performing, by the external image processing apparatus, at least one of a detection of a lesion candidate or a differentiation of the lesion candidate; and performing selection processing to select and transmit a portion of the inputted image to an external image processing apparatus connected to an external network; Substantially the similar recitation. receiving, by the endoscope system, a processing result of the diagnostic process by the external image processing apparatus. receiving a processing result of the diagnostic process by the external image processing apparatus; and outputting the inputted image and at least one of the processing result by the first processor or the processing result by the external image processing apparatus. Substantially the similar recitation. Instant App. Pat. # 12143755 Comments 21 . An image processing apparatus for use with an endoscope system, the image processing apparatus comprising: 1. An image processing apparatus for use with an endoscope system, the image processing apparatus comprising: Substantially the similar recitation. at least one processor configured to perform a first image processing on an inputted image, the image processing including diagnostic process and to perform selection processing to select and transmit the inputted image to an external image processing apparatus which processes a second process different from the first image process; and a first processor configured to: perform image processing on an inputted image, the image processing including a diagnostic process; a second processor configured to perform selection processing to select and transmit a portion of the inputted image to an external image processing apparatus connected to an external network; Substantially the similar recitation. an interface configured to receive a processing result of the second image process including diagnostic process by the external image processing apparatus, an interface configured to receive a processing result of the diagnostic process by the external image processing apparatus; and Substantially the similar recitation. wherein the external image processing apparatus is configured to perform at least one of a detection of a lesion candidate or a differentiation of the lesion candidate. outputs the inputted image and at least one of the processing result by the first processor or the processing result by the external image processing apparatus. Substantially the similar recitation. Obvious over Sorenson USPN 2018/0137244. Allowable Subject Matter Claims 1-21 are allowable over prior art. Conclusion Any response to this Office Action should be faxed to (571) 273-8300 or mailed to : Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 Hand-delivered responses should be brought to Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314 Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Fayyaz Alam whose telephone number is (571) 270-1102. The Examiner can normally be reached on Monday-Friday from 9:30am to 7:00pm. If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Jeanette Parker can be reached on (571) 270-3647. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free) or 703-305-3028. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist/customer service whose telephone number is (571) 272-2600. Fayyaz Alam June 21, 2026 /FAYYAZ ALAM/ Primary Examiner, Art Unit 2674 Application/Control Number: 18/909,308 Page 2 Art Unit: 2646 Application/Control Number: 18/909,308 Page 3 Art Unit: 2646 Application/Control Number: 18/909,308 Page 4 Art Unit: 2646 Application/Control Number: 18/909,308 Page 5 Art Unit: 2646 Application/Control Number: 18/909,308 Page 6 Art Unit: 2646 Application/Control Number: 18/909,308 Page 7 Art Unit: 2646 Application/Control Number: 18/909,308 Page 8 Art Unit: 2646 Application/Control Number: 18/909,308 Page 9 Art Unit: 2646 Application/Control Number: 18/909,308 Page 10 Art Unit: 2646 Application/Control Number: 18/909,308 Page 11 Art Unit: 2646 Application/Control Number: 18/909,308 Page 12 Art Unit: 2646 Application/Control Number: 18/909,308 Page 13 Art Unit: 2646 Application/Control Number: 18/909,308 Page 14 Art Unit: 2646 Application/Control Number: 18/909,308 Page 15 Art Unit: 2646 Application/Control Number: 18/909,308 Page 16 Art Unit: 2646 Application/Control Number: 18/909,308 Page 17 Art Unit: 2646 Application/Control Number: 18/909,308 Page 18 Art Unit: 2646 Application/Control Number: 18/909,308 Page 19 Art Unit: 2646 Application/Control Number: 18/909,308 Page 20 Art Unit: 2646 Application/Control Number: 18/909,308 Page 21 Art Unit: 2646
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