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 .
Response to Arguments
In view of the amendments, the previous 112(b) Rejection is withdrawn. However, a new 112(b) rejection is set forth below in view of lack of clarity issues in view of the amendments.
In view of the amendments, the 101 Rejection is withdrawn.
The Double Patenting Rejection is maintained and repeated below as the amendments made to the claims are not distinct from the claims of ‘768.
In view of the amendments, the 103 Rejection is withdrawn.
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.
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Claims 1-5, 8-12, 15-18, and 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9, and 16 of U.S. Patent No. 12,193,768. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims 1, 9, and 16, include elements that correspond to the limitations in claims 1, 15, and 20 of current application. Claim 1 of ‘768 is directed to a “a system for aligning a reference target and an imaging device for robotic surgery, comprising: a processor; and a memory storing instructions for execution by the processor that, when executed, cause the processor to: transmit first instructions configured to cause a robot to position a reference target proximate a body of a patient, receive image data from the imaging device, determine, using an image processing algorithm, an amount of an anatomical element that is represented in the image data, to yield a first determination, determine, using a target detection algorithm, an amount of the reference target that is represented in the image data, to yield a second determination, obtain a comparison of a position of the imaging device, a position of the anatomical element, and a position of the reference target, generate, based on the first determination, the second determination, and the comparison, a repositioning requirement for the imaging device, the reference target, or both, transmit second instructions for repositioning at least one of the imaging device and the reference target based on the repositioning requirement, receive second image data, determine, using the image processing algorithm, that the amount of the anatomical element that is represented in the second image data comprises less than all of the anatomical element to yield a third determination, generate, based on the third determination, a second repositioning requirement, transmit third instructions for repositioning the imaging device based on the second repositioning requirement, compare the image data to one or more known shapes, determine, based on the comparison of the image data to the one or more known shapes, that an object in the image data correlates to a known shape of the anatomical element, and identify the object as the anatomical element in response to determining that the object in the image data correlates to the known shape of the anatomical element, wherein the third instructions are configured to cause automatic repositioning of the imaging device” (similar to claim 1 of current application). Claim 1 of ‘768 includes more specific elements with respect to yielding a third determination where “the amount of anatomical element that is represented in the second image data comprises less than all of the anatomical element to yield a third determination…generate…a second repositioning requirement…transmit third instructions for repositioning the imaging device based on the second repositioning requirement”. Therefore, claim 1 of ‘768 anticipates claim 1 of present application.
Claim 9 of ‘768 includes elements similar to method claim 20 of present application. Claim 9 additionally includes the method steps of “receiving second image data; determining, using the image processing algorithm, that the amount of the anatomical element that is represented in the second image data comprises less than all of the anatomical element to yield a third determination; generating, based on the third determination, a second repositioning requirement; transmitting third instructions for repositioning the imaging device based on the second repositioning requirement; comparing the image data to one or more known shapes; determining, based on the comparison of the image data to the one or more known shapes, that an object in the image data correlates to a known shape of the anatomical element; and identifying the object as the anatomical element in response to determining that the object in the image data correlates to the known shape of the anatomical element, wherein the third instructions are configured to automatically cause repositioning of the imaging device”. Therefore, claim 9 is more specific and anticipates claim 20 of present application.
Claim 16 of ‘768 includes elements similar to claim 15 of present application. Claim 16 includes “a system for aligning an imaging device and a reference target for surgery, comprising :at least one communication interface for communicating with the imaging device and a robot supporting [[a]]the reference target with a robotic arm; a processor; and a memory storing instructions for execution by the processor that, when executed, cause the processor to: receive image data, via the communication interface, from the imaging device, determine, using an image processing algorithm, an amount of an anatomical element that is represented in the image data, to yield a first determination, determine, using a target detection algorithm, an amount of the reference target that is represented in the image data, to yield a second determination, obtain a comparison of a position of the imaging device, a position of the anatomical element, and a position of the reference target, generate, based on the first determination, the second determination, and the comparison, a repositioning requirement for the imaging device, the reference target, or both, transmit second instructions for repositioning at least one of the imaging device and the reference target based on the repositioning requirement, compare the image data to one or more known shapes, determine, based on the comparison of the image data to the one or more known shapes, that an object in the image data correlates to a known shape of the anatomical element, and identify the object as the anatomical element in response to determining that the object in the image data correlates to the known shape of the anatomical element”. The claim includes additional specific elements with respect to the “target detection algorithm” and the “image processing algorithm” and therefore anticipates claim 15 of present application.
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 1-20 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.
Claim 1, line 14 recites “a field of view of the imaging device” and line 19 recites “a field of view of the imaging device”. Claims 8-10, dependent on claim 1 also recite “a field of view of the imaging device”. It is suggested that all dependent claims’ references to “field of view” have proper antecedent basis (“the field of view”) in view of the initial recitation of “a field of view” in claim 1 to ensure that the claims are referring to the same field of view of the imaging device.
Claims 15 and 20 also make references to “a field of view” initially in the claim and then refer to “a field of view” later in the claim. It is suggested all claims have proper antecedent basis with respect to “the field of view of the imaging device”.
Claim 15, lines 17-18 recite “image data correlates to a known shape and that at least one of the imaging device and the reference target requires repositioning to include more of the known shape in a field of view of the imaging device” and lines 21-24 recite “to cause a robot to reposition the reference target…and that the reference target requires repositioning…”. It is not clear if the repositioning is just tied to both the “reference target” and “imaging device” (as per the language in lines 17 and 18, “one of the imaging device and the reference target requires repositioning”). Or is the repositioning just specific to the “reference target” (as per the language in lines 21-22, “cause a robot to reposition the reference target”). It is suggested claim 15 clarify the language with respect to “repositioning of one or both the reference target and the imaging device”.
Claims 15 and 20 recite “repositioning to include more of the known shape in a field of view of the imaging device”. The term “more” of the known shape is considered indefinite and not clear to what extent of the known shape has to be represented in the field of view of the imaging device. Claim 12 recites the language “reposition the reference target toward a center of the field of view of the imaging device until a full amount of the reference target is included in the image data in response to determining that a full amount of the anatomical element is represented in the image data”. It is suggested claims 15 and 20 include similar supporting subject matter as claim 12 to clarify the term “more of the known shape in a field of view of the imaging device”.
Other Related Prior Art:
12092771 (Couture et al.):
Directed to a robot with a sensor configured to capture data such as visual target within the field of view of the sensor, “determine, for each sensor of the at least one sensor, a difference between representation of the at least one visual target in the data and a reference target, the reference target corresponds to sensor data of the at least one sensor target from a calibrated sensor, the visual target is different from a reference target, the reference target corresponds to sensor data of the at least one sensor target from the calibrated sensor, and the visual target comprises a plurality of two-dimensional, black and white shapes arranged in an asymmetrical pattern; and determine at least one transformation for each one of the at least one sensor based on the difference, the at least one transformation causes data from the at least one sensor to match the reference target, adjust location of the at least one sensor of the robot based on rotational alignment and translational alignment of the at least one sensor unit; wherein the adjustment of location of the at least one sensor is based on transforming the visual target onto the reference target such that a center of the visual target is aligned to a center of the reference target”(claim 4).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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BR
/BAISAKHI ROY/Primary Examiner, Art Unit 3797
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