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 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 21, 28, 30-33, 35 and 37-40 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 21, 28 and 35, it is not clear what is meant by “participant in the digital simulation”. The phrase is not described in the specification.
Claims 30-33 and 37-40 recite additional method steps; however, they depend from apparatus claims 27 and 34 respectively. A claim which recites both an apparatus and method steps is indefinite under In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011), as cited in MPEP 2173.05(p).
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,220,175. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations are recited or suggested in the claims of the ‘175 patent, as follows:
Claim 20
Claim 1 of ‘175 patent
A computer-implemented method comprising:
A computer-implemented method comprising:
determining a plurality of surgical paths for accessing one or more anatomical features for treating a patient, wherein the plurality of surgical paths are determined based on a set of comparative patients;
determining a plurality of surgical paths for accessing one or more anatomical features for treating the identified condition, wherein the plurality of surgical paths are determined based on a set of comparative patients;
for each of the plurality of surgical paths, determining an adverse event score based on adverse event data of one of more of the comparative patients;
for each of the plurality of surgical paths, determining an adverse event score based on correlated attributes of adverse event data of the comparative patients;
selecting one of the surgical paths for treating the patient based on the adverse event scores;
selecting one of the surgical paths for treating the identified condition based on a ranking of the adverse event scores;
producing a digital simulation of one or more surgical steps performed using at least one of virtual reality (VR) or augmented reality (AR), wherein the digital simulation displays information for at least one potential adverse event associated with the selected surgical path;
producing a digital simulation of one or more surgical steps performed via the selected surgical path, wherein the digital simulation displays information for at least one potential adverse event associated with the selected surgical path, wherein the at least one potential adverse event is based on the adverse event data of the comparative patients, wherein the digital simulation includes at least one of a virtual reality (VR) simulation or an augmented reality (AR) simulation;
obtaining pre-operative user input for addressing the at least one potential adverse event; and
receiving user-inputted pre-operative annotations for avoiding the at least one potential adverse event; and
after obtaining the pre-operative user input, causing display, via an electronic display viewable by at least one user, of: intraoperative images for an image-guided surgical procedure being performed on the patient, and at least a portion of the obtained pre-operative user input associated with the displayed intraoperative images to assist the at least one user in addressing the at least one potential adverse event during the image-guided surgical procedure.
after receiving the user-inputted pre-operative annotations, displaying, via an electronic display viewable by a user, intraoperative images for an image-guided surgical procedure being performed on the patient, and at least a portion of the received user-inputted pre-operative annotations associated with the displayed intraoperative images to assist the user in avoiding the at least one potential adverse event during the image-guided surgical procedure.
With respect to claims 21, 28 and 35, as discussed above the scope of the claims is unclear. Further, once of ordindary skill would have found it obvious to obtain user input from a participant in a digital simulation.
The limitations of claim 22 are recited in claim 1 of the ‘175 patent.
The limitations of claim 23 are recited in claim 2 of the ‘175 patent.
The limitations of claim 24 are recited in claim 4 of the ‘175 patent.
The limitations of claim 25 are recited in claim 5 of the ‘175 patent.
The limitations of claim 26 are recited in claim 6 of the ‘175 patent.
The limitations of claims 27 and 29 are recited in claim 9 of the ‘175 patent.
The limitations of claim 30 are recited in claim 10 of the ‘175 patent.
The limitations of claim 31 are recited in claim 12 of the ‘175 patent.
The limitations of claim 32 are recited in claim 13 of the ‘175 patent.
The limitations of claims 33 and 40 are recited in claim 14 of the ‘175 patent.
The limitations of claims 34 and 36 are recited in claim 17 of the ‘175 patent.
The limitations of claim 37 are recited in claim 18 of the ‘175 patent.
The limitations of claim 38 are recited in claim 20 of the ‘175 patent.
The limitations of claim 39 are recited in claim 21 of the ‘175 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KURT FERNSTROM whose telephone number is (571)272-4422. The examiner can normally be reached M-F 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KURT FERNSTROM/Primary Examiner, Art Unit 3715
June 30, 2026
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