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 .
Information Disclosure Statement
The ids dated 12/31/24 has npl entries (2, 4 and 6) that are missing dates and haven’t been considered (the date accessed doesn’t count), at least the year is needed in order for a npl to be considered.
Specification
Title of the Invention
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested:
ROTATING MARKER FOR IMAGE GUIDED SURGERY
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 23, 27-30, 33, 35, 37-39 and 41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5 and 8-9 of U.S. Patent No. 11,389,252 B2 in view of ELIMELECH (US2019/0175228A1 from IDS filed on 12/31/24).
Regarding claims 23 and 35 the patent teaches most limitations but doesn’t teach, however the analogous prior art ELIMELECH teaches, the base is configured to be attached to a patient (ELIMELECH: fig. 4A, 60; fig. 2A: 40, 50 see pars. 55 and 78).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the base is configured to be attached to a patient as shown in ELIMELECH with the patent for the benefit of allowing a professional to find the position and orientation of the marker, and thus of the clamp, in a frame of reference of the system. Thus any relative movement between the patient and the system, which may be caused by movement of the patient and/or of the professional, may be compensated for [50].
Regarding claims 23, 30 and 35 the patent doesn’t teach, however the analogous prior art ELIMELECH teaches the claim limitations related to the first end and/or second end of the alignment target (ELIMELECH: fig. 2B, 66 see par. 56 which shows a positioning marker (i.e., alignment target) having a first and second end).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the claim limitations related to the first end and/or second end of the alignment target as shown in ELIMELECH with the patent for the benefit of a fluoroscopic image and an visible spectrum image of the marker may be used to register fluoroscopic and visible spectrum frames of reference of the marker, and of the clamp to which the marker is attached [56].
Regarding claims 33 and 41 the patent doesn’t teach, however the analogous prior art ELIMELECH teaches:
wherein the base is configured to be attached to the patient by a clamp that is configured to be attached to a bone of the patient (ELIMELECH: fig. 2A: 40, 50 see par. 55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine wherein the base is configured to be attached to the patient by a clamp that is configured to be attached to a bone of the patient as shown in ELIMELECH with the patent for the benefit of allowing a professional to find the position and orientation of the marker, and thus of the clamp, in a frame of reference of the system. Thus any relative movement between the patient and the system, which may be caused by movement of the patient and/or of the professional, may be compensated for [50].
Claims 23, 27-30, 33, 35, 37-39 and 41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5 and 8-9 of U.S. Patent No. 12,186,028 B2 in view of ELIMELECH.
Regarding claims 23 and 35 the patent teaches most limitations but doesn’t teach, however the analogous prior art ELIMELECH teaches, the base is configured to be attached to a patient (ELIMELECH: fig. 4A, 60; fig. 2A: 40, 50 see pars. 55 and 78).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the base is configured to be attached to a patient as shown in ELIMELECH with the patent for the benefit of allowing a professional to find the position and orientation of the marker, and thus of the clamp, in a frame of reference of the system. Thus any relative movement between the patient and the system, which may be caused by movement of the patient and/or of the professional, may be compensated for [50].
Regarding claims 23, 30 and 35 the patent doesn’t teach, however the analogous prior art ELIMELECH teaches the claim limitations related to the first end and/or second end of the alignment target (ELIMELECH: fig. 2B, 66 see par. 56 which shows a positioning marker (i.e., alignment target) having a first and second end).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the claim limitations related to the first end and/or second end of the alignment target as shown in ELIMELECH with the patent for the benefit of a fluoroscopic image and an visible spectrum image of the marker may be used to register fluoroscopic and visible spectrum frames of reference of the marker, and of the clamp to which the marker is attached [56].
Regarding claims 33 and 41 the patent doesn’t teach, however the analogous prior art ELIMELECH teaches:
wherein the base is configured to be attached to the patient by a clamp that is configured to be attached to a bone of the patient (ELIMELECH: fig. 2A: 40, 50 see par. 55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine wherein the base is configured to be attached to the patient by a clamp that is configured to be attached to a bone of the patient as shown in ELIMELECH with the patent for the benefit of allowing a professional to find the position and orientation of the marker, and thus of the clamp, in a frame of reference of the system. Thus any relative movement between the patient and the system, which may be caused by movement of the patient and/or of the professional, may be compensated for [50].
Claims of 18/959,270 Claims of 11,389,252
23. A marker for image guided surgery, the marker comprising:
a base configured to be attached to a patient;
an alignment target extending from a first end to a second end,
the first end being
configured to fit
rotatably to the base so that the alignment target is rotatable about an axis with respect to the base,
wherein the second end of the alignment target comprises a target region having an alignment pattern formed thereon; and
an optical indicator configured to be visible through at least one aperture of the first end of the alignment target to indicate an angle of orientation of the alignment target about the axis.
27. The marker of claim 26, wherein the optical indicator is configured to be visible through no more than one of the plurality of apertures at a time.
28. The marker of claim 23, wherein the at least one aperture comprises a semicircular arc.
29. The marker of claim 23, wherein the optical indicator is congruent with the at least one aperture, and wherein a fraction of the optical indicator visible through the at least one aperture is indicative of the angle of orientation of the alignment target about the axis.
30. The marker of claim 23, wherein the first end of the alignment target is configured to only fit to the base in a plurality of discrete orientations about the axis with respect to the base.
33. The marker of claim 23, wherein the base is configured to be attached to the patient by a clamp that is configured to be attached to a bone of the patient.
35. A marker for image guided surgery, the marker comprising:
a base configured to be attached to a patient;
an alignment target extending from a first end to a second end, the first end being configured to fit to the base
in a plurality of discrete orientations about an axis with respect to the base,
wherein the second end of the alignment target comprises a target region having an alignment pattern formed thereon; and
an optical indicator configured to be visible through at least one aperture of the first end of the alignment target to indicate an angle of orientation of the alignment target about the axis.
37. The marker of claim 36, wherein the optical indicator is configured to be visible through no more than one of the plurality of apertures at a time.
38. The marker of claim 35, wherein the at least one aperture comprises a semicircular arc.
39. The marker of claim 35, wherein the optical indicator is congruent with the at least one aperture, and wherein a fraction of the optical indicator visible through the at least one aperture is indicative of the angle of orientation of the alignment target about the axis.
41. The marker of claim 35, wherein the base is configured to be attached to the patient by a clamp that is configured to be attached to a bone of the patient.
1. A marker for image guided surgery, comprising:
a base, having a base axis, connecting to a clamp;
and
an alignment target, comprising:
a target region having an alignment pattern formed thereon;
a socket connected to the target region and configured to fit rotatably to the base, whereby the alignment target is rotatable about the base axis; and
an optical indicator for the socket indicating an angle of orientation of the alignment target about the base axis.
5. The marker according to claim 2, wherein the socket comprises a plurality of apertures equal to the plurality of discrete orientations, and wherein the optical indicator is configured to be visible through one of the apertures indicative of one of the discrete orientations.
5. The marker according to claim 2, wherein the socket comprises a plurality of apertures equal to the plurality of discrete orientations, and wherein the optical indicator is configured to be visible through one of the apertures indicative of one of the discrete orientations.
9. The marker according to claim 8, wherein the aperture comprises a semicircular arc.
8. The marker according to claim 7, wherein the socket comprises an aperture, and wherein the optical indicator is congruent with the aperture, and wherein a fraction of the optical indicator visible through the aperture is indicative of one of the non-discrete orientations.
1. an optical indicator for the socket indicating an angle of orientation of the alignment target about the base axis.
2. The marker according to claim 1, wherein the socket is
configured to only fit to
the base in a plurality of at least two discrete orientations about the base axis.
1. A marker for image guided surgery, comprising:
a base, having a base axis, connecting to a clamp; and
an alignment target, comprising:…
a socket connected to the target region and configured to fit rotatably to the base, whereby the alignment target is rotatable about the base axis; and
2. The marker according to claim 1, wherein the socket is configured to only fit to the base in a plurality of at least two discrete orientations about the base axis.
1. a target region having an alignment pattern formed thereon…
1. an optical indicator for the socket indicating an angle of orientation of the alignment target about the base axis.
5. The marker according to claim 2, wherein the socket comprises a plurality of apertures equal to the plurality of discrete orientations, and wherein the optical indicator is configured to be visible through one of the apertures indicative of one of the discrete orientations.
5. The marker according to claim 2, wherein the socket comprises a plurality of apertures equal to the plurality of discrete orientations, and wherein the optical indicator is configured to be visible through one of the apertures indicative of one of the discrete orientations.
9. The marker according to claim 8, wherein the aperture comprises a semicircular arc.
8. The marker according to claim 7, wherein the socket comprises an aperture, and wherein the optical indicator is congruent with the aperture, and wherein a fraction of the optical indicator visible through the aperture is indicative of one of the non-discrete orientations.
1. an optical indicator for the socket indicating an angle of orientation of the alignment target about the base axis.
Claims of 18/959,270 Claims of 12,186,028
23. A marker for image guided surgery, the marker comprising:
a base configured to be attached to a patient;
an alignment target extending from a first end to a second end, the first end being configured to fit rotatably to the base so that the alignment target is rotatable about an axis with respect to the base,
wherein the second end of the alignment target comprises a target region having an alignment pattern formed thereon; and
an optical indicator configured to be visible through at least one aperture of the first end of the alignment target to indicate an angle of orientation of the alignment target about the axis.
27. The marker of claim 26, wherein the optical indicator is
configured to be visible through no more than one of the plurality of apertures at a time.
28. The marker of claim 23, wherein the at least one aperture comprises a semicircular arc.
29. The marker of claim 23, wherein the
optical
indicator is congruent with the at least one aperture,
and wherein a fraction of the optical indicator visible through the at least one aperture is indicative of the angle of orientation of the alignment target about the axis.
30. The marker of claim 23, wherein the first end of the alignment target is configured to only fit to the base in a plurality of discrete orientations about the axis with respect to the base.
33. The marker of claim 23, wherein the base is configured to be attached to the patient by a clamp that is configured to be attached to a bone of the patient.
35. A marker for image guided surgery, the marker comprising:
a base configured to be attached to a patient;
an alignment target extending from a first end to a second end, the first end being configured to
fit to the base in a plurality of discrete orientations about an axis with respect to the base,
wherein the second end of the alignment target comprises a target region having an alignment pattern formed thereon; and
an optical indicator configured to be visible through
at least one aperture of the first end of the alignment target to indicate an angle of orientation of the alignment target about the axis.
37. The marker of claim 36, wherein the optical indicator is configured to be visible through no more than one of the plurality of apertures at a time.
38. The marker of claim 35, wherein the at least one aperture comprises a semicircular arc.
39. The marker of claim 35, wherein the
optical
indicator is congruent with the at least one aperture, and wherein a fraction of the optical indicator visible through the at least one aperture is
indicative of the
angle of orientation of the alignment target about the axis.
41. The marker of claim 35, wherein the base is configured to be attached to the patient by a clamp that is configured to be attached to a bone of the patient.
1. A marker for image guided surgery, comprising:
a base, having a base axis, connecting to an anchoring device; and
an alignment target, comprising:
a target region having an alignment pattern formed thereon;
a socket connected to the target region and configured to fit rotatably to the base, whereby the alignment target is rotatable about the base axis; and
5. The marker according to claim 2, wherein the socket comprises a plurality of apertures…the optical indicator is configured to be visible through one of the apertures…
1. an optical indicator for the socket indicating an angle of orientation of the alignment target about the base axis.
5. The marker according to claim 2, …wherein the optical indicator is configured to be visible through one of the apertures indicative of one of the discrete orientations.
9. The marker according to claim 8, wherein the aperture comprises a semicircular arc.
8. The marker according to claim 7, wherein the socket comprises an aperture, and wherein the optical indicator is congruent with the aperture, and wherein
a fraction of the optical indicator visible through the aperture is indicative of one of the non-discrete orientations.
1. an optical indicator for the socket indicating an angle of orientation of the alignment target about the base axis.
2. The marker according to claim 1, wherein the socket is
configured to only fit to
the base in a plurality of at least two discrete orientations about the base axis.
1. A marker for image guided surgery, comprising:
a base, having a base axis, connecting to an anchoring device; and
an alignment target, comprising:
2. The marker according to claim 1, wherein the socket is configured to only fit to the base in a plurality of at least two discrete orientations about the base axis.
1. a target region having an alignment pattern formed thereon;
5. The marker according to claim 2, … wherein the optical indicator is configured to be visible through
one of the apertures
indicative of one of the discrete orientations.
1. …an optical indicator for the socket indicating an angle of orientation of the alignment target about the base axis.
5. The marker according to claim 2, wherein the socket comprises a plurality of apertures equal to the plurality of discrete orientations, and wherein the optical indicator is configured to be visible through one of the apertures indicative of one of the discrete orientations.
9. The marker according to claim 8, wherein the aperture comprises a semicircular arc.
8. The marker according to claim 7, wherein the socket comprises an aperture, and wherein the optical indicator is congruent with the aperture, and wherein
a fraction of the optical indicator visible through the aperture is indicative of one of the non-discrete orientations.
1. an optical indicator for the socket indicating an angle of orientation of the alignment target about the base axis.
Allowable Subject Matter
Claims 24-26, 31-32, 34, 36, 40 and 42 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art doesn’t teach:
24. The marker of claim 23, wherein the optical indicator is positioned within an indentation of the base.
25. The marker of claim 23, wherein the optical indicator is positioned between the first end of the alignment target and the base.
26. The marker of claim 23, wherein the at least one aperture comprises a plurality of apertures.
31. The marker of claim 23, wherein the alignment target comprises a connecting rod that connects the first end to the second end.
32. The marker of claim 23, wherein the first end of the alignment target comprises a socket configured to fit rotatably to the base.
34. The marker of claim 23, wherein the base is configured to be attached to the patient by a pin that is configured to be attached to a bone of the patient.
36. The marker of claim 35, wherein the at least one aperture comprises a plurality of apertures.
40. The marker of claim 35, wherein the first end of the alignment target comprises a socket configured to fit to the base in the plurality of discrete orientations.
42. The marker of claim 35, wherein the base is configured to be attached to the patient by a pin that is configured to be attached to a bone of the patient.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURICE L MCDOWELL, JR whose telephone number is (571)270-3707. The examiner can normally be reached Mon-Fri: 2pm-10pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Said A. Broome can be reached at 571-272-2931. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAURICE L. MCDOWELL, JR/Primary Examiner, Art Unit 2612
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