DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. Claims 1-20 are presented for examination.
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 8 and 17 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.
In claims 8 and 17, the limitation reciting: “viewing directions spanning one period of the periodic continuous mathematical function” renders the claims indefinite because it is unclear as to what is being encompassed by spanning one period of … mathematical function. It is unclear as to what is included or excluded by the claim language.
Double Patenting
4. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
5. Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 respectively, of U.S. Patent No. 11666298, hereinafter the ‘98 patent, in view of US Patent No. 12369874, hereinafter the ‘74 patent.
Although the two claims at issue are not verbatim identical, they are not patentably distinct from each other because the limitations of the application’s claim and the patent’s claim appear to be an obvious variation of one another as they have somewhat similar structural and functional features.
For examples, claim 1 of the application and claim 1 of the ’98 recites substantially the same claimed features, such as: a method to display a video comprising: providing a server computer in communication with a remote computer, where the server computer:
a) receives a patient ID from the remote computer, where the patient ID corresponds with one or more medical diagnostic reports of a patient selected from a plurality of medical diagnostic reports;
b) executes a render server program comprising:
i) a step for applying one or more Study Selection Rules based on the patient ID to select a Study from the plurality of medical diagnostic reports;
ii) a step for constructing from the Study a volumetric image of an anatomical region of the patient;
iii) a step for defining at least three viewing directions;
iv) a step for generating at least three projection images at the at least three viewing directions from the volumetric image; and
c) sends the video to the remote computer. See steps a) to c) of the ’98 patent.
The only distinction between the between the instant application claim and claim 1 of the ’98 patent is that the ’98 patent lacks the detail for “a step for selecting a display protocol adapted to define at least one viewport adapted to display the video comprising the at least three projection images”
However, claim 3 of the ‘74 patent teaches selecting a display protocol adapted to define at least one viewport adapted to display the video comprising the at least three projection images.
Thus, the artisan skilled in the art at the time the invention was made would have found it obvious to combine the teachings of claim 1 of the ’98 patent with that of claim 3 of the ‘74 patent to result in the display of video images derived from three projection images. Such a combination would yield the same end results without departing from the scope of the invention as claimed in the instant application. Furthermore, combining the teachings of the ’98 patent with those of the ’74 patent would be beneficial in that it would allow for novel ways of viewing such images to detect microcalcifications and obstructions when reviewing Digital Breast Tomosynthesis and other volumetric mammography images. See abstract of the ’74 patent.
While the features of an apparatus claim(s) may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. A claim containing a "recitation with respect to the manner in which a claimed method or apparatus is intended to be employed does not differentiate the claimed method or apparatus from a prior art if the prior art method or apparatus teaches all the steps or structural and functional limitations of the claim. In the present case, the instant application’s claim 1 is not structurally and functionally distinguishable from the combination of claim 1 of the ’98 patent with claim 3 of the ’74 patent.
Claims 2-9 of the present application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 2-9, respectively, of the ’98 patent. Thus, the granting of claims 2-9 of the current application would infringe with the claimed invention found in claims 2-9 of the ’98 patent.
Claim 10 of the present application is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 10 of the ’98 patent in view of claim 3 of the ’74 patent. It is further noted that the client computer of claim 10 is operable as a remote computer, because it is able to request and receive data from a server computer. See instant application’s claim 1 rejections above for reasons of obviousness. Thus, the granting of the current application claim 10 would infringe with the claimed invention of claim 10 of the ’98 patent.
Claims 11-18 of the present application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 11-18, respectively, of the ’98 patent. Thus, the granting of claims 11-18 of the current application would infringe with the claimed invention found in claims 11-18 of the ’98 patent.
Claim 19 of the present application is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 19 of the ’98 patent in view of claim 3 of the ’74 patent. See instant application’s claim 1 rejections above for reasons of obviousness. Thus, the granting of the current application claim 19 would infringe with the claimed invention of claim 19 of the ’98 patent.
Claim 20 of the present application is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 20 of the ’98 patent. Thus, the granting of the current application claim 20 would infringe with the claimed invention of claim 20 of the ’98 patent.
6. Claims 1-9 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 4, 2, 3, 6, 3, and 7-9 respectively, of U.S. Patent No. 10070839, hereinafter the ‘39 patent.
Although the two claims at issue are not verbatim identical, they are not patentably distinct from each other because the limitations of the application’s claim and the patent’s claim appear to be an obvious variation of one another as they have somewhat similar structural and functional features.
For examples, each claim set recites similar claimed features such as executing a render server program to generate and select study images from projection images for display on a remote computer. In addition, each claim recites accessing a plurality of medical diagnostic reports by one or more processors based on a plurality of patient IDs.
The only distinction between the present application’s claim 1 and claim 1 of the ’39 patent is that claim 1 of the ‘39 patent is not specific as to display a video.
However, since in claim 1 of the ‘39 patent, the images sent to the remote computer from the server are projection images selected according to one or more display protocols, it is obvious that the images when displayed in sequence may represent a video. Specifically, claim 4 of the ’39 patent, which is continuation of claim 1 of said patent, clearly recites the images are displayed as a video.
Thus, claim 1 of the instant application is a clear obvious variant thereof claim 1 of the ’39 patent, and the granting of the application’s claim would infringe with the claimed invention of claim 1 of the ’39 patent.
Claim 2 of the present application is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 4 of the ‘39 patent.
Claim 3 of the present application is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of the ‘39 patent.
Claim 4 of the present application is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 3 of the ‘39 patent.
Claim 5 of the present application is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 6 of the ‘39 patent.
Claim 6 of the present application is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 3 of the ‘39 patent.
Claims 7-9 of the present application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 7-9, respectively, of the ‘39 patent.
Allowable Subject Matter
7. Claims 1-20 would be allowed upon the filing of a Terminal Disclaimer to obviate the obviousness-type double patenting rejections, because the prior art of record do not appear to teach a method to display a video by sending from a server to a remote computer instructions to perform the steps of: a) receives a patient ID from the remote computer, where the patient ID corresponds with one or more medical diagnostic reports of a patient selected from a plurality of medical diagnostic reports; b) executes a render server program comprising: i) a step for applying one or more Study Selection Rules based on the patient ID to select a Study from the plurality of medical diagnostic reports; ii) a step for constructing from the Study a volumetric image of an anatomical region of the patient; iii) a step for defining at least three viewing directions; iv) a step for generating at least three projection images at the at least three viewing directions from the volumetric image; v) a step for selecting a display protocol adapted to define at least one viewport adapted to display the video comprising the at least three projection images; and c) sends the video to the remote computer.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kariathungal et al. (US 20080166070) discloses a method for adapting a hanging protocol employed to present a plurality of images for a diagnostic examination of a patient anatomy featured in the images. A change in hanging protocol can include an alteration of one or more display rules or order of display rules in the hanging protocol. See paragraphs 10-11, 25-28 and 34.
Magsig et al. (US 20080123917) discloses a means that enables a user to signify the completion of an imaging study based upon rules configured by said user. See paragraphs 5, and 18-20.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to WESNER SAJOUS whose telephone number is (571)272-7791. The examiner can normally be reached on M-F 9:30 TO 6:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Said Broome can be reached on 571-272-2931. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WESNER SAJOUS/Primary Examiner, Art Unit 2612
WS
07/20/2026
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