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 19-20 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 19 states “projecting the captured fiducial markers on an image of the endoscope” and “displaying an image of an internal organ with the fiducial markers together with an image of the endoscope with the fiducial markers”. This raises several questions as to the scope of the claim. What, if any, is the difference between “projecting” and “displaying”? Is “projecting” an internal processing step? How many images are shown, a projected image and a displayed image, or is this just one image? What does this image look like? The Examiner notes that the Specification and Drawings have literal support for the terminology (Steps 308/310/312), but what does this mean practically? Figs. 4A-4C are, as far as the Examiner can tell, three drawings of the same basic thing. These figures do not show the organ, so it is not entirely clear how these would be relevant to the claim.
Because the terminology is ambiguous and the disclosure fails to provide clarification, the Examiner holds that a person having ordinary skill in the art would not be able to determine the scope of the claim. For examination purposes, the Examiner is treating these limitations as requiring some means for displaying images with the scope, the markers, and the organ. This need not be a composite image. Appropriate clarification and/or correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 19-20 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Cosman (US 2004/0138556).
Regarding Claim 19, Cosman discloses:
A method of tracking a position of an endoscope, wherein the endoscope includes an endoscope handle (proximal portion of scope 60 (see Paragraph 0035 indicating that 60 can be an endoscope)) and an endoscope body adapted to be inserted into a patient (portion of 60 inserted into the patient; see Fig. 5 for example), the method comprising:
determining a reference position of the endoscope body within the patient (Paragraphs 0008, 0043, 0075);
capturing at least one of a plurality of fiducial markers via an optical tracker (Paragraph 0075);
transforming data from the captured fiducial markers from the endoscope's co-ordinates of the endoscope to co-ordinates of a camera (Paragraph 0076);
projecting the captured fiducial markers on an image of the endoscope (seen in Fig. 5 where the image includes the scope and the markers); and
displaying an image of an internal organ with the fiducial markers together with an image of the endoscope with the fiducial markers (see Fig. 5 showing an image with the scope, the markers, and the internal organ).
Regarding Claim 46, Cosman further discloses wherein displaying an image of an internal organ with the fiducial markers together with an image of the endoscope with the fiducial markers includes displaying a determined position of the endoscope within the internal organ (Paragraph 0063, position within the organ is determined as explained).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-18 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-18 of prior U.S. Patent No. 12,349,985. This is a statutory double patenting rejection.
The only difference between claim 1 in the patent and claim 1 in the application is that the application uses “configured to” and the patent uses “adapted to”. The Examiner considers the scope of these terms to be the same such that the scope of the claims is the same. Claims 2-18 are identical in the patent and the application. Because the claims have the same scope, this is a statutory double patenting rejection.
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 1-6 and 8-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-6, 8, 14, and 19 of U.S. Patent No. 11,529,197. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims the device for performing the application’s claimed method. The Examiner considers it obvious to use the device in the manner as claimed.
Claims 1, 8, and 13 of Patent ‘197 claim an endoscope system having an endoscope with a plurality of markers on its handle, a plurality of sensors along the body to generate first orientation data, one or more cameras detecting the markers and generating second orientation data, a controller that receives the first and second data and generates a virtual model, and a projector to project the model onto the patient. Claim 27 is directed to the method steps of receiving the data, detecting the markers, generating the model, and projecting the model. Claim 36 is directed to a medical device and not specifically an endoscope. The patent’s claims to an endoscope read on a medical device in that an endoscope is a medical device. Again, using the patent’s device as claimed in a functional manner within the patent claims is considered obvious.
The application’s dependent claims map to the patent’s claims as follows:
Claims 2 and 11 to claim 2;
Claims 3 and 12 to claim 3;
Claims 4 and 13 to claim 5;
Claims 5 and 14 to claim 6;
Claims 6 and 15 to claim 14;
Claims 8 and 17 to claim 19;
Claims 9 and 18 to claim 1.
Claims 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-20 of U.S. Patent No. 12,349,985. Although the claims at issue are not identical, they are not patentably distinct from each other because the language of the claims is slightly different where the patent has been amended to address the same 112b rejection presented above.
Claims 7 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 13 of U.S. Patent No. 11,529,197 in view of Gildenberg (US 2008/0243142).
Claims 7 and 16 are directed to the size of the marker spheres, not claimed in the patent. Gildenberg teaches such fiducials having a diameter of 1 cm (Paragraph 0016). Such a modification incorporates a well-known size in the art for the claimed element, and therefore would have been obvious to a person having ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY JAY NEAL whose telephone number is (313)446-4878. The examiner can normally be reached Mon-Fri 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at (571)272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY J NEAL/ Primary Examiner, Art Unit 3795
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