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 .
DETAILED ACTION
This Office Action is in response to the Amendment After Non-Final Rejection filed 05/21/2026. Claims 1, 4-11 and 15-25 are pending and have been examined.
Response to Arguments
Applicant’s arguments with respect to claims 1, 4-11 and 15-25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
Claim limitations:
a preoperative image detector configured to capture;
a preoperative image detector configured to track;
a preoperative image detector configured to detect;
an intraoperative image detector configured to detect;
have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because they use a generic placeholder “configured to” coupled with functional language “capture” “track” and “detect” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1, 4-10 and 21-23 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: Figs. 4A, 11A, paragraphs [0098], [0154], [0165], [0214]-[0217].
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
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.
Claims 1, 4-11, 15-20 and 22-25 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.
The claims have been amended to introduce the limitation:
a display that includes a first display that encompasses a totality field of view associated with a first eye of the user and a second display that encompasses a totality field of view associated with a second eye of the user with at least one display that is head-mounted so that the first display is associated with the first eye of the user and the second display is associated with the second eye of the user and is configured to: display via the first display the corrected projection image to be visualized by the user that is projected onto the first display, and display via the second display that is partially transparent to light to enable the user to view via natural vision of the second eye of the user a surrounding environment of the user via the second display simultaneously with the corrected image projection onto the first display thereby enabling the user to view the surrounding environment with the natural vision simultaneously with the corrected projection image via the display;
The originally filed disclosure contains no support for a display including a first display corresponding to a first eye of a user displaying the corrected projection image and a transparent second display corresponding to a second eye of a user enabling the user to view the surrounding environment with the second eye and the corrected projection image with the first eye as claimed. Therefore, the claims contain 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, at the time the application was filed, had possession of the claimed invention.
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, 4-11 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 14-20 of U.S. Patent No. 12,166,953. Although the claims at issue are not identical, they are not patentably distinct from each other because they are different definitions or descriptions of the same subject matter varying in breadth. For example, note the following relationship between claim 1 of the instant application and the patented claims.
Application No. 18/960,123
U.S. Patent No. 12,166,953
1. (Currently Amended) An optical imaging system to image a target object, comprising:
1. An optical imaging system to image a target object, comprising:
a preoperative image detector configured to:
capture a preoperative image of the target object before the target object is positioned to be illuminated by at least one or more light rays projected onto the target object, wherein the preoperative image includes a three-dimensional (3D) topography of the target object,
track a position of the target object, and
detect intraoperative topography information of the target object when the target object is illuminated by one or more polarized light rays projected onto the target object,
an image detection module configured to:
capture a preoperative image of the target object before the target object is positioned to be illuminated by at least one or more light rays projected onto the target object, wherein the preoperative image includes a preoperative three-dimensional (3D) topography of the target object,
track a position of the target object, and
detect intraoperative topography information of the target object when the target object is illuminated by one or more polarized light rays projected onto the target object;
an image projector configured to:
emit a first set of the one or more light rays to project a corrected projection image of the preoperative image of the target object to be visualized by a user, and
emit a second set of the one or more light rays through a polarizer positioned between the image projector and the target object to generate the one or more polarized light rays projected onto the target object to enable polarization imaging of the target object, thereby enabling a depth-resolved topography of the preoperative image of the target object as captured by the preoperative image detector;
a display that includes a first display that encompasses a totality field of view associated with a first eye of the user and a second display that encompasses a totality field of view associated with a second eye of the user with at least one display that is head-mounted so that the first display is associated with the first eye of the user and the second display is associated with the second eye of the user and is configured to:
display via the first display the corrected projection image to be visualized by the user that is projected onto the first display, and
display via the second display that is partially transparent to light to enable the user to view via natural vision of the second eye of the user a surrounding environment of the user via the second display simultaneously with the corrected image projection onto the first display thereby enabling the user to view the surrounding environment with the natural vision simultaneously with the corrected projection image via the display; and
a projector configured to:
emit a first set of the one or more light rays to project a corrected projection image of the preoperative image of the target object to be visualized by a user; and
emit a second set of the one or more light rays through a polarizer positioned between the projector and the target object to generate the one or more polarized light rays projected onto the target object to enable polarization imaging of the target object, thereby enabling a depth-resolved topography of the preoperative image of the target object as captured by the image detection module;
a display that includes a first display that encompasses a totality field of view associated with a first eye of the user and a second display that encompasses a totality field of view associated with a second eye of the user with at least one display that is head-mounted so that the first display is associated with the first eye of the user and the second display is associated with the second eye of the user and is configured to:
display via the first display the corrected projection image to be visualized by the user that is projected onto the first display, and
display via the second display that is partially transparent to light to enable the user to view via natural vision of the second eye of the user a surrounding environment of the user via the second display simultaneously with the corrected projection image projected onto the first display thereby enabling the user to view the surrounding environment with the natural vision simultaneously with the corrected projection image via the display; and
a controller that includes at least one graphics processing unit and is configured to:
map each relative distance determined from preoperative image data included in the preoperative 3D topography of the target object to the corrected projection image based on a position of the image projector, wherein the corrected projection image incorporates each relative distance determined from the preoperative image data included in the preoperative 3D topography of the target to thereby display at least a portion of the preoperative 3D topography of the target object included in the preoperative image in the corrected projection image; and
instruct the image projector to project the preoperative image data included in the corrected projection image to be visualized by the user via the display.
a controller that includes at least one graphics processing unit and is configured to:
map each relative distance determined from preoperative image data included in the preoperative 3D topography of the target object to the corrected projection image based on a position of the projector, wherein the corrected projection image incorporates each relative distance determined from the preoperative image data included in the preoperative 3D topography of the target object based on the intraoperative topography information of the target object detected from the projection of the one or more polarized light rays onto the target object to thereby display at least a portion of the preoperative 3D topography of the target object included in the preoperative image in the corrected projection image,
co-register the preoperative image data included in the corrected projection image and the intraoperative topography information to generate co-registered topography information and preoperative information, wherein the co-registered topography information and preoperative information is segmented to isolate an organ of interest and surface-based registration, and
instruct the projector to project the preoperative image data included in the corrected projection image to be visualized by the user via the display for visualization based on the co-registered topography information and preoperative information.
It would have been obvious to one of ordinary skill in the art to readily recognize that the conflicting claims are different definitions or descriptions of the same subject matter varying in breadth. In this case, the application claims are broader than and inclusive of the patented claims.
Claim 4 of the application corresponds to claim 1 of the patent.
Claim 5 of the application corresponds to claim 4 of the patent.
Claim 6 of the application corresponds to claim 5 of the patent.
Claim 7 of the application corresponds to claim 6 of the patent.
Claim 8 of the application corresponds to claim 7 of the patent.
Claim 9 of the application corresponds to claim 8 of the patent.
Claim 10 of the application corresponds to claim 9 of the patent.
Claim 11 of the application corresponds to claim 10 of the patent.
Claim 15 of the application corresponds to claim 14 of the patent.
Claim 16 of the application corresponds to claim 15 of the patent.
Claim 17 of the application corresponds to claim 16 of the patent.
Claim 18 of the application corresponds to claim 17 of the patent.
Claim 19 of the application corresponds to claim 18 of the patent.
Claim 20 of the application corresponds to claim 19 of the patent.
Claim 21 of the application corresponds to claim 20 of the patent.
Claim 22 of the application corresponds to claim 2 of the patent.
Claim 23 of the application corresponds to claim 3 of the patent.
Claim 24 of the application corresponds to claim 11 of the patent.
Claim 25 of the application corresponds to claim 12 of the patent.
Conclusion
In the case of amending the claimed invention, applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R SCHNURR whose telephone number is (571)270-1458. The examiner can normally be reached M-F 6a-4p.
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, Brian Pendleton can be reached at (571)272-7527. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN R SCHNURR/Primary Examiner, Art Unit 2425
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