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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12220181. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims read on the application claims. The patent claim limitation of an identified event is interpreted in light of the specification Para. 45, to identify an event that has occurred or an event that is likely to occur.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shelton (US 11273001 B2) in view of Niemeyer (US 6424885 B1).
Regarding claims 1, 13, and 20 Shelton discloses a system comprising: a memory storing instructions (eg. Fig. 3, Ln. 35-48); and a processor communicatively coupled to the memory and configured to execute the instructions (eg. Fig. 3, Ln. 35-48) accessing, during a surgical session performed with a computer-assisted surgical system, surgical session data generated by the computer-assisted surgical system during the surgical session, the surgical session including performance of one or more operations by the computer-assisted surgical system; determining, based on the surgical session data, that an event associated with the surgical session is likely to occur; (eg. Col. 35, Ln. 50 – Col. 38, Ln. 25); determining a location associated with the event; (eg. Col. 37, Ln. 10-35 determine a change of view or magnification according to features at the surgical site); and directing, in response to determining the location associated with the event, an automatic adjustment of a view of a camera to capture a view of the location associated with the event before the event occurs. (eg. Col. 37, Ln. 10-35, proactively and automatically controlling paired modular devices, proactively change the displayed view). Shelton does not explicitly disclose a tele-operated computer assisted surgical system.
Niemeyer teaches a camera referenced computer assisted surgical system (Eg. Fig. 1A-B, Col. 14, Ln. 35-55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the situational awareness/predictive display control of Shelton with Niemeyer’s teleoperated surgical platform since Shelton’s hub is intended to be connected to modular surgical devices/imaging systems and would provide predictable results of automatically presenting the surgeon with needed views while reducing manual interactions with the camera.
Regarding claim 2 and 14, the combined invention of Shelton and Niemeyer discloses the determining that the event associated with the surgical session is likely to occur is further based on user profile data representative of a user profile of a team member associated with the surgical session (eg. Col. 35, Ln. 20-51, Col. 40, Ln. 5-50, Col. 48, Ln. 44-63).
Regarding claim 3, the combined invention of Shelton and Niemeyer discloses the user profile data indicates a pattern of operations of the computer-assisted surgical system that are unique to the team member (eg. Col. 35, Ln. 20-51, Col. 40, Ln. 5-50, Col. 48, Ln. 44-63).
Regarding claims 4 and 15, the combined invention of Shelton and Niemeyer discloses the process further comprises providing imagery of the view of the location as captured by the camera to a display device for display by the display device; and the determining that the event associated with the surgical session is likely to occur is further based on user profile data representative of a user profile of a user of the display device (eg. Col. 15, Ln. 45 – Col. 16, Ln. 15, Col. 35, Ln. 20-51, Col. 40, Ln. 5-50, Col. 48, Ln. 44-63).
Regarding claims 5 and 16, the combined invention of Shelton and Niemeyer discloses the computer-assisted surgical system includes a manipulating system and a user control system; the manipulating system includes a manipulator arm configured to couple with a surgical instrument; the user control system is configured to control at least one of the manipulator arm or the surgical instrument based on user input; and the location associated with the event comprises a location associated with the user control system (eg. Fig. 12, Col. 21, Ln. 60 – Col. 23, Ln. 35).
Regarding claim 6, the combined invention of Shelton and Niemeyer discloses the process further comprises providing imagery of the view of the location as captured by the camera to a display device for display of the imagery by the display device; and the display device is remote from the user control system (eg. Col. 19, Ln. 27- 37, Col. 26, Ln. 48 – Col. 27, Ln. 48, remote and wireless communications between modules).
Regarding claims 7 and 17, the combined invention of Shelton and Niemeyer discloses the computer-assisted surgical system further includes an additional user control system configured to remotely control at least one of the manipulator arm or the surgical instrument based on user input; and the display device is included in the additional user control system (eg. Fig. 1B, Col. 2, Ln. 15-31, Col. 10, Ln. 7-45).
Regarding claims 8 and 18, the combined invention of Shelton and Niemeyer discloses the process further comprises: determining, based on the surgical session data, that an additional event associated with the surgical session is likely to occur; determining a location associated with the additional event; and directing, in response to determining the location associated with the additional event, an automatic adjustment of a view of an additional camera to capture a view of the location associated with the additional event before the additional event occurs (eg. Shelton, Col. 40, Ln. 6-50, one of ordinary skill would have duplicated the camera to add additional views since they would have the same function, see MPEP 2144.04).
Regarding claim 9, the combined invention of Shelton and Niemeyer discloses the location associated with the additional event comprises a location associated with the manipulating system (eg. Shelton, Col. 40, Ln. 6-50, one of ordinary skill would have duplicated the camera to add additional views since they would have the same function, see MPEP 2144.04).
Regarding claims 10 and 19, the combined invention of Shelton and Niemeyer discloses the process further comprises: determining an additional location associated with the event; and directing an adjustment of the view of the camera to capture a view of the additional location associated with the event (eg. Shelton, Col. 35 Ln. 3 –Col. 37, Ln. 35, Col. 28, Ln. 55 – Col. 29, Ln. 23, can identify different operations).
Regarding claim 11, the combined invention of Shelton and Niemeyer discloses the process further comprises: determining an additional location associated with the event; and directing, in response to determining the additional location associated with the event, an automatic adjustment of a view of an additional camera to capture a view of the additional location associated with the event before the event occurs (eg. Shelton, Col. 40, Ln. 6-50, one of ordinary skill would have duplicated the camera to add additional views since they would have the same function, see MPEP 2144.04).
Regarding claim 12, the combined invention of Shelton and Niemeyer discloses the process further comprises: identifying contextual content associated with the event; and providing the contextual content and imagery of the view of the location as captured by the camera to a display device for display of the contextual content and the imagery by the display device (eg. Col. 35, Ln. 3 - Col. 36, Ln. 10, Col. 38, Ln. 25 – 67).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J LAU whose telephone number is (571)272-2317. The examiner can normally be reached 8-5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carl Layno can be reached at 571-272-4949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J LAU/ Examiner, Art Unit 3796
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