DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-13 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-13 of prior U.S. Patent No. 12,232,828. This is a statutory double patenting rejection.
‘828’s claim is identical to the current claim as below:
Claim 1. A handheld surgical tool, comprising: an active element comprising at least one of a saw blade, a burr, or a drill; a projector configured to provide an output at least partially within a surgical field of view, wherein the output from the projector is adapted for projection onto a portion of a patient's anatomy within the surgical field of view, and wherein the output from the projector comprises information to guide a user performing a computer assisted surgery procedure; and one or more sensors configured to provide movement and vibration information related to the handheld surgical tool, and wherein the information from the one or more sensors is used to compensate for movements and vibrations of the handheld surgical tool by adjusting the output of the projector to account for the movements and vibrations (claim 1).
Claim 2. The handheld surgical tool of claim 1, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate at least one navigation or guidance parameter related to a positioning of the active element of the handheld surgical tool within the surgical field of view (claim 2).
Claim 3. The handheld surgical tool of claim 1, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate a portion of tissue to be resected (claim 3).
Claim 4. The handheld surgical tool of claim 1, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate a resection boundary (claim 4).
Claim 5. The handheld surgical tool of claim 1, wherein the surgical field of view includes the active element of the handheld surgical tool (claim 5).
Claim 6. The handheld surgical tool of claim 1, wherein the portion of the anatomy is a bone (claim 6).
Claim 7. The handheld surgical tool of claim 1, wherein the projector is a pico projector (claim 7).
Claim 8. The handheld surgical tool of claim 1, wherein the one or more sensors comprise one or more of an inclinometer, a gyroscope, a two axis gyroscope, a three axis gyroscope or other multiple axis gyroscope, a one-two-three or multiple axis accelerometer, a potentiometer, or a MEMS instrument (claim 8).
Claim 9. The handheld surgical tool of claim 1, further comprising a communication element configured to wirelessly provide information related to an output from the one or more sensors (claim 9).
Claim 10. The handheld surgical tool of claim 9, wherein the communication element provides information wirelessly to and from the component separate from the handheld surgical tool (claim 10).
Claim 11. The handheld surgical tool of claim 9, wherein the communication element provides information via a wired connection to the component separate from the handheld surgical tool (claim 11).
Claim 12. The handheld surgical tool of claim 9, further comprising a first camera and a second camera in an arrangement where the first camera and the second camera are on opposite sides of the active element of the handheld surgical tool (claim 12).
Claim 13. The handheld surgical tool of claim 12, further comprising an electronic image processor configured to receive an output from each of the first and second cameras and perform an image processing operation using at least a portion of the output from each of the first and second cameras for use in the computer assisted surgery procedure (claim 13).
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 1-15 of U.S. Patent No. 11,911,117. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘117 anticipates:
Claim 1. A handheld surgical tool, comprising: an active element comprising at least one of a saw blade, a burr, or a drill; a projector configured to provide an output at least partially within a surgical field of view, wherein the output from the projector is adapted for projection onto a portion of a patient's anatomy within the surgical field of view, and wherein the output from the projector comprises information to guide a user performing a computer assisted surgery procedure; and one or more sensors configured to provide movement and vibration information related to the handheld surgical tool, and wherein the information from the one or more sensors is used to compensate for movements and vibrations of the handheld surgical tool by adjusting the output of the projector to account for the movements and vibrations (claims 1, 6 and 7).
Claim 2. The handheld surgical tool of claim 1, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate at least one navigation or guidance parameter related to a positioning of the active element of the handheld surgical tool within the surgical field of view (claim 2).
Claim 3. The handheld surgical tool of claim 1, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate a portion of tissue to be resected (claim 3).
Claim 4. The handheld surgical tool of claim 1, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate a resection boundary (claim 5).
Claim 5. The handheld surgical tool of claim 1, wherein the surgical field of view includes the active element of the handheld surgical tool (claim 6).
Claim 6. The handheld surgical tool of claim 1, wherein the portion of the anatomy is a bone (claim 8).
Claim 7. The handheld surgical tool of claim 1, wherein the projector is a pico projector (claim 9).
Claim 8. The handheld surgical tool of claim 1, wherein the one or more sensors comprise one or more of an inclinometer, a gyroscope, a two axis gyroscope, a three axis gyroscope or other multiple axis gyroscope, a one-two-three or multiple axis accelerometer, a potentiometer, or a MEMS instrument (claim 10).
Claim 9. The handheld surgical tool of claim 1, further comprising a communication element configured to wirelessly provide information related to an output from the one or more sensors (claim 11).
Claim 10. The handheld surgical tool of claim 9, wherein the communication element provides information wirelessly to and from the component separate from the handheld surgical tool (claim 12).
Claim 11. The handheld surgical tool of claim 9, wherein the communication element provides information via a wired connection to the component separate from the handheld surgical tool (claim 13).
Claim 12. The handheld surgical tool of claim 9, further comprising a first camera and a second camera in an arrangement where the first camera and the second camera are on opposite sides of the active element of the handheld surgical tool (claim 12).
Claim 13. The handheld surgical tool of claim 12, further comprising an electronic image processor configured to receive an output from each of the first and second cameras and perform an image processing operation using at least a portion of the output from each of the first and second cameras for use in the computer assisted surgery procedure (claims 14-15).
Claim 14. A handheld surgical tool, comprising: an active element comprising at least one of a saw blade, a burr, or a drill; and a projector configured to provide an output at least partially within a surgical field of view, wherein the output from the projector is adapted for projection onto a portion of a patient's anatomy within the surgical field of view, and wherein the output from the projector comprises information to guide a user performing a computer assisted surgery procedure (claim 1, 6 and 7).
Claim 15. The handheld surgical tool of claim 14, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate at least one navigation or guidance parameter related to a positioning of the active element of the handheld surgical tool within the surgical field of view (claim 2).
Claim 16. The handheld surgical tool of claim 14, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate a portion of tissue to be resected (claim 3).
Claim 17. The handheld surgical tool of claim 14, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate a resection boundary (claim 5).
Claim 18. The handheld surgical tool of claim 14, wherein the surgical field of view includes the active element of the handheld surgical tool (claim 6).
Claim 19. The handheld surgical tool of claim 14, wherein the portion of the anatomy is a bone (claim 8).
Claim 20. The handheld surgical tool of claim 14, wherein the projector is a pico projector (claim 9).
.
Claims 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,232,828. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘828 anticipates:
Claim 14. A handheld surgical tool, comprising: an active element comprising at least one of a saw blade, a burr, or a drill; and a projector configured to provide an output at least partially within a surgical field of view, wherein the output from the projector is adapted for projection onto a portion of a patient's anatomy within the surgical field of view, and wherein the output from the projector comprises information to guide a user performing a computer assisted surgery procedure (claim 1).
Claim 15. The handheld surgical tool of claim 14, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate at least one navigation or guidance parameter related to a positioning of the active element of the handheld surgical tool within the surgical field of view (claim 2).
Claim 16. The handheld surgical tool of claim 14, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate a portion of tissue to be resected (claim 3).
Claim 17. The handheld surgical tool of claim 14, wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate a resection boundary (claim 4).
Claim 18. The handheld surgical tool of claim 14, wherein the surgical field of view includes the active element of the handheld surgical tool (claim 5).
Claim 19. The handheld surgical tool of claim 14, wherein the portion of the anatomy is a bone (claim 6).
Claim 20. The handheld surgical tool of claim 14, wherein the projector is a pico projector (claim 7).
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 14-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Barrera ‘909 (US 2005/0020909, hereinafter Barrera ‘909) in view of Quaid et al. (US 2004/0106916, hereinafter Quaid ‘916), and/or further in view of McCombs (US 2005/0279368, hereinafter McCombs ‘368).
In re claim 14, Barrera ‘909 teaches a handheld surgical tool (0035), comprising:
an active element comprises at least one of a saw blade, a burr, or a drill (0035, 0049).
a projector configured to provide an output at least partially within a surgical field of view (fig. 2, 122, note that a display screen is a projector; fig. 22, 0054-0056), wherein the output from the projector is adapted for projection
Even if a display monitor of Barrera ‘909 is not considered as a projector, Quaid ‘916 teaches:
Display device 30 may be any display device now known or later developed for displaying two-dimensional and/or three-dimensional images, for example a monitor, a wearable display, a projection display, a head-mounted display, stereoscopic views, a display device capable of displaying image(s) projected from an image projecting device, for example a projector, and/or the like. If desired, display device 30 may be a display device capable of displaying a holographic image. If desired, display device 30 may be a touch screen and be used as an input device.
Para 0035.
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Barrera ‘909 to include the features of Quaid ‘916 in order to use known or later developed device for display images under user preference.
Furthermore, when considering wherein the output from the projector is adapted for projection on a portion of a patient's anatomy.
McCombs ‘368 teaches the output from the projector is adapted for projection on a portion of a patient's anatomy (0031).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Barrera ‘909 to include the features of Quaid ‘916 in order to use known or later developed device for display images under user preference, and/or include the features of McCombs ‘368 in order to project images on anywhere where a surgeon prefers during surgery.
In re claim 15, Barrera ’909 teaches wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate at least one navigation or guidance parameter related to a positioning of the active element of the handheld surgical tool within the surgical field of view (0037-0038, 0041-0050, 0052, 0053).
In re claim 16, Barrera ’909 teaches wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate a portion of tissue to be resected (0038, 0049-0051, fig. 21, 786).
In re claim 17, Barrera ‘909(0038, 0043, fig. 8 & 9, 0049-0050; fig. 12, fig. 21, 786)/Quaid ‘916 (0038, 0108, 0119) teaches wherein the output from the projector comprises information visible to the user of the handheld surgical tool to indicate a resection boundary.
In re claim 18, Barrera ‘909 teaches wherein the surgical field of view includes an active element of the handheld surgical tool (fig. 8-9, 0037, 0043).
In re claim 19, Barrera ‘909 teaches wherein the portion of the anatomy is a bone (0056).
Claim 20 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Barrera ‘909, Quaid ‘916, and/or McCombs ‘368 in view of De Vaan (US 2009/0096917, hereinafter De Vaan ‘917).
In re claim 20, Barrera ‘909, Quaid ‘916, and/or McCombs ‘368 fail to teach wherein the projector is a pico projector.
De Vaan ‘917 teaches the projector is a pico projector (0013-0014).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Barrera ‘909 to include the features of Quaid ‘916 in order to use known or later developed device for display images under user preference, and/or include the features of McCombs ‘368 in order to project images on anywhere where a surgeon prefers during surgery, and to include the features of De Vaan ‘917 in order to enable highly detailed images with sufficient brightness, sharpness, and depth of focus to be produced on the display surface, irrespective of an angle of incidence of the ambient displayed image portions with respect to the display surface(s).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Claim 1 would have been allowable if it were to overcome double patenting rejection above.
Barrera ‘909 teaches a handheld surgical tool (0035), comprising:
an active element comprises at least one of a saw blade, a burr, or a drill (0035, 0049).
a projector configured to provide an output at least partially within a surgical field of view (fig. 2, 122, note that a display screen is a projector; fig. 22, 0054-0056), wherein the output from the projector is adapted for projection
Quaid ‘916 teaches:
Display device 30 may be any display device now known or later developed for displaying two-dimensional and/or three-dimensional images, for example a monitor, a wearable display, a projection display, a head-mounted display, stereoscopic views, a display device capable of displaying image(s) projected from an image projecting device, for example a projector, and/or the like. If desired, display device 30 may be a display device capable of displaying a holographic image. If desired, display device 30 may be a touch screen and be used as an input device.
Para 0035.
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Barrera ‘909 to include the features of Quaid ‘916 in order to use known or later developed device for display images under user preference.
Furthermore, when considering wherein the output from the projector is adapted for projection on a portion of a patient's anatomy.
McCombs ‘368 teaches the output from the projector is adapted for projection on a portion of a patient's anatomy (0031).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Barrera ‘909 to include the features of Quaid ‘916 in order to use known or later developed device for display images under user preference, and/or include the features of McCombs ‘368 in order to project images on anywhere where a surgeon prefers during surgery.
However, Barrera ‘909, Quaid ‘916, and/or McCombs ‘368 and other reference fails to teach “wherein the information from the one or more sensors is used to compensate for movements and vibrations of the handheld surgical tool by adjusting the output of the projector to account for the movements and vibrations” in combination with the rest of the claim limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BO JOSEPH PENG whose telephone number is (571)270-1792. The examiner can normally be reached Monday thru Friday: 8:00 AM-5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANNE M KOZAK can be reached at (571) 270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BO JOSEPH PENG/Primary Examiner, Art Unit 3797