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 Objections
Claims 1 and 2 are objected to because of the following informalities: both claims have a period (“.”) within the middle of the claim; and thus, there are two periods within both claims. The Examiner believes that the first period should be a semi-colon with the word “The” afterwords being lowercase (i.e. “the”). Appropriate correction is required.
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.
Claims 1 and 2 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. Both claims 1 and 2 state in the beginning and end of each claim respectfully a version of “a convolution kernel as part of a method for reconstructing an image of an examined object using a method of tomographic imaging, is carried out in accordance with the formula…”. It is unclear if the first equation or the last equation is the formula that is the component for reconstructing an image. It is also unclear, based on the claim language, of how the formula is used for “reconstructing an image” since the claim only states that the formulas are “a part of” or “a component of” instead of positively stating how the formulas are used to actually reconstruct and image.
Claim 2 recites the limitation "used in the positron emission tomography scanner". There is insufficient antecedent basis for this limitation in the claim. Claim 2 only states in the preamble that it is “a method of tomographic imaging” and does not talk about “a positron emission tomography scanner” (such as in claim 1). However, if “a positron emission tomography scanner” was added to the preamble of claim 2, then there would be Double Patenting between claims 1 and 2 in the Application. Thus, a different correction would be required. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 2 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an Abstract Idea without significantly more. The claim(s) recite(s) mathematical equations, without positively claiming how the formulas are used to change/convert/reconstruct an image. This judicial exception is not integrated into a practical application because the “scanner” and “tomographic imaging” are additional generic computer elements, and the recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims are merely mathematical formulas passively claimed within method claims, which is an Abstract Idea without significantly more. Appropriate correction is required.
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 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 respectfully of copending Application No. 19/004,310 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each teaches forming a convolution kernel as part of a method for reconstructing an image of an examined object using tomographic imaging with equations that are not identical but don’t appear patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1 and 2 would be allowable if the 35 USC 112, 35 USC 101, and Double Patenting rejections were overcome, since none of the prior art, either alone or in combination teaches each and every limitation within the claim language.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2019/0206094 A1: teaches a fully analytical fast iterative statistical algorithm for image reconstruction from radiation measurements obtained in emission tomography, e.g. in a Positron Emission Tomography scanner, is described in this invention (Abstract); wherein the method presented here improves the resolution of the reconstructed images and/or decreases the tracer dosage absorbed by a patient during examination and at the same time it maintains the quality of the functional images obtained (Abstract); wherein all of the calculations in this step of the reconstruction procedure can be pre-calculated, i.e. they can be carried out before the scanner performs any measurements ([0035]); and wherein making the simplification that the coefficients h.sub.Δi,Δj are the same for all pixels of the reconstructed image, and they can be calculated numerically ([0035]). US 2020/0393579 A1: teaches the method includes gating the PET data based on the gating data and the motion signal (Abstract); and wherein the method includes reconstructing a PET image of the subject based on the gated PET data (Abstract).
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J VANCHY JR whose telephone number is (571)270-1193. The examiner can normally be reached Monday - Friday 9am - 5pm.
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, Emily Terrell can be reached at (571) 270-3717. 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.
/MICHAEL J VANCHY JR/Primary Examiner, Art Unit 2666 Michael.Vanchy@uspto.gov
Prosecution Insights