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 § 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 10-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because, taken as a whole, “machine-readable instructions” are directed to the description of a computer program. 35 U.S.C. 101 enumerates four categories of subject matter that Congress deemed to be appropriate subject matter for a patent: processes, machines, manufactures and compositions of matter. These "four categories together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101." In re Nuijten, 500 F.3d 1346, 1354, 84 USPQ2d 1495, 1500 (Fed. Cir. 2007). Non-limiting examples of claims that are not directed to any of the statutory categories include a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations. Software expressed as code or a set of instructions detached from any medium is an idea without physical embodiment. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449, 82 USPQ2d 1400, 1407 (2007); see also Benson, 409 U.S. 67, 175 USPQ2d 675 (An "idea" is not patent eligible). Thus, a product claim to a software program that does not also contain at least one structural limitation (such as a "means plus function" limitation) has no physical or tangible form, and thus does not fall within any statutory category.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Songbai Ji et al, “Cortical Surface Strain Estimation Using Stereovision”.
With regards to claim 1, Songbai Ji discloses an input for receiving temporally consecutive images (e.g., “[I]mages of the left camera taken at times t and (t+1)”) of the target issue the temporally consecutive images comprising at least one reference image and at least one subsequent image taken after the at least one reference image at pp. 2-3, secs. 2.1-2.2.
Songbai Ji discloses a strain measurement processor comprising measurement calculation circuitry, responsive to a data associated with a difference (e.g., “displacements ux, uy, uz”) between the at least one reference image and the at least one subsequent image, to determine strain measurement data (e.g., “strain of each element ε“) indicative of strain within the target tissue at pp. 2-4, secs. 2.2-2.3; pp. 4-5, sec. 3; FIG. 1 and FIG. 2:
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Songbai Ji discloses an output device for outputting strain measurement data associated the measure of strain at pp. 4-5, sec. 3; FIG. 2 and FIG. 3:
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With regards to claim 2, Songbai Ji discloses a camera to generate the consecutive images of the target issue at pp. 2-3, secs. 2.1-2.2 (“Acquisition of stereo image pairs was externally triggered using two charge-coupled device (CCD) cameras ... The stereo image acquisition frame rate varied for different patients…”)
With regards to claim 3, Songbai Ji discloses the camera is a stereoscopic camera at pp. 2-3, secs. 2.1-2.2 (“Acquisition of stereo image pairs was externally triggered using two charge-coupled device (CCD) cameras ... The stereo image acquisition frame rate varied for different patients…”)
With regards to claim 4, Songbai Ji discloses the strain measurement processor is arranged to generate the strain measurement data (e.g., “strain of each element ε“) by identifying differences (e.g., “displacements ux, uy, uz”) between the at least one reference image and the subsequent image at pp. 2-4, secs. 2.2-2.3; pp. 4-5, sec. 3; FIGS. 1-2.
With regards to claim 8, Songbai Ji discloses the strain measurement data (e.g., “strain of each element ε“) represents a 2D map of variation of strain across a respective region at pp. 2-4, secs. 2.2-2.3; pp. 4-5, sec. 3; FIG. 1 and FIG. 2:
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With regards to claim 9, Songbai Ji discloses the 2D map is arranged to be displayed in an overlay registered relationship with an image of the target tissue material at pp. 4-5, sec. 3; FIG. 2 and FIG. 3:
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Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5-7 and 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over Songbai Ji et al, “Cortical Surface Strain Estimation Using Stereovision” in view of Bing Pan et al, “Two-dimensional digital image correlation for inplane displacement and strain measurement: a review.”
With regards to claim 5, Songbai Ji implicitly discloses the strain measurement processor is arranged to generate at least one 2D vector (xs, Ys,) = (xsub - Xref, Ysub - Yref) when it discloses displacement vectors ux and uy at pp. 2-4, secs. 2.2-2.3; pp. 4-5, sec. 3; FIGS. 1-2 because one of ordinary skill in the art would understand displacement of a point between subsequent images to comprise the recited difference in x and y coordinates. Songbai Ji does not specify the 2D vector (displacement vectors ux and uy) are associated with movement of at least one indicium common to the at least one reference image and the at least one subsequent image. However, this limitation was known in the art:
Bing Pan discloses a strain measurement processor arranged to generate at least one 2D vector (xs, Ys,) = (xsub - Xref, Ysub - Yref) and at least one 3D vector (xs, Ys, Zs) = (Xsub - Xref, Ysub - Yref, Zsub - Zref) associated with movement of at least one indicium (e.g., “random speckle pattern”) common to the at least one reference image and the at least one subsequent image at pp. 3-4, secs. 2.1-2.2 and FIGS. 2-4. At the time of the filing of the present application, it would have been obvious to a person of ordinary skill in the art to use an indicium (e.g., “random speckle pattern”), as taught by Bing Pan, when measuring deformation information, as taught by Songbai Ji. The motivation for doing so comes from Bing Pan, which discloses that the random speckle pattern serves as, “a carrier of deformation information.” (p. 3, sec. 2.1). Therefore, it would have been obvious to combine Bing Pan with Songbai Ji to obtain the invention specified in this claim.
With regards to claim 6, Bing Pan discloses the at least one indicium (e.g., “random speckle pattern”) common to the at least one reference image and the at least one subsequent image comprises at least two indicia common to the at least one reference image and the at least one subsequent image, optionally, in which the at least one indicium common to the at least one reference image and the at least one subsequent image comprises a speckle pattern at pp. 3-4, secs. 2.1-2.2 and FIGS. 2-4. The motivation for the combination is the same as previously presented.
With regards to claim 7, Songbai Ji discloses the strain measurement processor derives the strain measurement data (e.g., “strain of each element ε“) of the target tissue from the at least one 2D vector (e.g., “displacements ux, uy”) at pp. 2-4, secs. 2.2-2.3; pp. 4-5, sec. 3; FIG. 1 and FIG. 2.
With regards to claim 10, Songbai Ji discloses instructions for receiving temporally consecutive images of the target tissue the temporally consecutive images comprising at least one reference image and at least one subsequent image, taken after the at least one reference image at pp. 2-3, secs. 2.1-2.2.
Songbai Ji discloses instructions to generate strain measurement data, based on data associated with a difference the at least one reference image and the at least one subsequent image, indicative of strain of the target tissue at pp. 2-4, secs. 2.2-2.3; pp. 4-5, sec. 3; FIG. 1 and FIG. 2:
Songbai Ji discloses instructions for outputting the strain measurement data at pp. 4-5, sec. 3; FIG. 2 and FIG. 3.
Bing Pan discloses temporally consecutive images comprising at least one reference image bearing at least one reference indicium and at least one subsequent image, taken after the at least one reference image, bearing the at least one reference indicium at pp. 3-4, secs. 2.1-2.2 and FIGS. 2-4. The motivation for the combination is the same as previously presented.
With regards to claim 11, the machine-readable instructions of this claim are obvious over the combination of Bing Pan and Songbai Ji for the same reasons as were provided in the discussion of claim 2, which recites an apparatus performing these same steps.
With regards to claim 12, Songbai Ji discloses instructions to control at least one display device for displaying the strain measurement data
With regards to claim 13, the machine-readable instructions of this claim are obvious over the combination of Bing Pan and Songbai Ji for the same reasons as were provided in the discussion of claim 8, which recites an apparatus performing these same steps.
With regards to claim 14, the machine-readable instructions of this claim are obvious over the combination of Bing Pan and Songbai Ji for the same reasons as were provided in the discussion of claim 9, which recites an apparatus performing these same steps.
With regards to claim 15, the machine-readable instructions of this claim are obvious over the combination of Bing Pan and Songbai Ji for the same reasons as were provided in the discussion of claim 4, which recites an apparatus performing these same steps.
With regards to claim 16, the machine-readable instructions of this claim are obvious over the combination of Bing Pan and Songbai Ji for the same reasons as were provided in the discussion of claim 5, which recites an apparatus performing these same steps.
With regards to claim 17, the machine-readable instructions of this claim are obvious over the combination of Bing Pan and Songbai Ji for the same reasons as were provided in the discussion of claim 6, which recites an apparatus performing these same steps.
With regards to claim 18, the machine-readable instructions of this claim are obvious over the combination of Bing Pan and Songbai Ji for the same reasons as were provided in the discussion of claim 7, which recites an apparatus performing these same steps.
With regards to claim 19, Songbai Ji performing a surgical action as part of a surgical procedure that subjects the body member to strain in the region of interest of the body member at pp. 1-2, abstract and sec. 1; p. 5 and sec. 4.
Songbai Ji discloses deriving a measure of strain within the body member from a reference image and a further image at pp. 2-4, secs. 2.2-2.3; pp. 4-5, sec. 3; FIG. 1 and FIG. 2.
Bing Pan discloses creating at least two reference indicia on the body member in a predetermined region of interest of the body member, the at least two reference indicia being spaced-apart by a respective distance, capturing a reference image comprising the at least two reference indicia and capturing a further image comprising the at least two reference indicia at pp. 3-4, secs. 2.1-2.2 and FIGS. 2-4. The motivation for the combination is the same as previously presented.
With regards to claim 20, Songbai Ji discloses deriving a measure of strain within the body member from the reference image and the further image comprises comparing the change in separation between the reference image and the further image, and calculating a measure of strain from the change in separation and the respective distance at pp. 2-4, secs. 2.2-2.3; pp. 4-5, sec. 3; FIG. 1 and FIG. 2.
Bing Pan discloses deriving a measure of strain within the body member from the reference image and the further image comprises comparing the change in separation of the at least two reference indica between the reference image and the further image, and calculating a measure of strain from the change in separation of the at least two reference indicia and the respective distance at pp. 3-4, secs. 2.1-2.2.2; pp. 10-11, sec. 4. The motivation for the combination is the same as previously presented.
Allowable Subject Matter
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID F DUNPHY whose telephone number is (571)270-1230. The examiner can normally be reached 9 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chineyere Wills-Burns can be reached at (571) 272-9752. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID F DUNPHY/Primary Examiner, Art Unit 2673
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