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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification makes no mention of a “second updated image” (or an “updated image” of any kind), as recited in claims 1, 12, and 19.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 - 16 of U.S. Patent No. 12,213,748. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to systems for registering one or more anatomical elements, involving blocking image data in an image that corresponds to an identified object to yield an updated image; and registering the anatomical element in the updated image to the anatomical element in a first image. Specifically:
Instant claim 1, 12, and 19 are each suggested by reference claim 1, 10, and/or 16.
Instant claims 2 and 15 are each suggested by reference claim 1, 10, and/or 16.
Instant claims 3 and 17 are each suggested by reference claim 1, 10, and/or 16.
Instant claims 4 and 16 are each suggested by reference claim 7, 12, and/or 16.
Instant claims 5, 14, and 20 are each suggested by reference claim 1, 10, and/or 16.
Instant claims 6, 7, and 18 are each suggested by reference claim 5 and/or 14.
Instant claim 8 is suggested by reference claim 6 and/or 15.
Instant claim 9 is suggested by reference claim 7, 12, and/or 16.
Instant claim 10 is suggested by reference claim 8.
Instant claim 11 is suggested by reference claim 9.
Instant claim 13 is suggested by reference claim 1, 10, and/or 16.
Instant claim 20 is suggested by reference claim 9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Steinberg et al. (US 2020/0405399) disclose image guided surgery. Steinberg is deemed pertinent because Steinberg teaches restricting registration to portions of an intra-operative image that do not include a surgical tool (“a tool is present in the 2D images but not present in the 3D images … regions in the 2D image comprising a tool … are excluded when registering the 2D images with the 3D data … facilitate registration of the 2D images with the 3D data set because all include at the time of their registration to one another only (or mostly) the subject's anatomy, which is typically the same, and thus their matches to one another need not (or to a lesser extent) account for elements that are included in the 2D images but are absent from the 3D data set”, [0389]). It is noted that Steinberg emphasizes that the techniques “are typically practiced without requiring the fitting of any radiopaque marker to the tool, rather they rely on the existing radio-opacity of the tool for its identification in the x-ray images … without requiring knowledge of the precise geometry and/or the dimensions of the tool for its identification in the x-ray images”, thus generally discouraging the use of objects (i.e., instruments) that are tracked via markers attached thereto, contrary to the requirements of the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMELIE R DAVIS whose telephone number is (571)270-7240. The examiner can normally be reached Monday-Friday, 9:30 - 6:00 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pascal Bui-Pho can be reached at (571)272-2714. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMELIE R DAVIS/Primary Examiner, Art Unit 3798
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