NON-FINAL REJECTION
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 .
Despite benefit claims to prior-filed applications filed before March 16, 2013, the effective filing date of the claimed invention has been determined to be actual filing date of this application (2/18/2025) as discussed below (see Priority section below). Since 2/18/2025 is on or after 3/16/2013, this application is being examined under the first inventor to file provisions of the AIA .
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.
Information Disclosure Statement
It is noted that the Applicant has not submitted any Information Disclosure Statement (IDS) in this application.
MPEP 609.02 recites in part:
The examiner will consider information which has been considered by the Office in a parent application (other than an international application; see subsection I., above) when examining: (A) a continuation application filed under 37 CFR 1.53(b), (B) a divisional application filed under 37 CFR 1.53(b), or (C) a continuation-in-part application filed under 37 CFR 1.53(b). A listing of the information need not be resubmitted in the continuing application unless the applicant desires the information to be printed on the patent.
Although Applicant need not resubmit information considered in the parent applications, such information will not be printed on any patent granted on this application unless resubmitted in an IDS or listed by the examiner in a PTO-892 form.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) and 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 61/710,401, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 1 is presented below (with emphasis):
1. A system comprising:
an imaging catheter configured to obtain imaging data for a plurality of cross-sectional image frames of a vessel comprising a vessel wall, wherein each of the plurality of cross-sectional image frames is a two-dimensional image frame; and
a processing system operably coupled to the imaging catheter, wherein the processing system comprises a processor coupled to a memory, a display device in communication with the processor, and a navigational controller in communication with the processor,
wherein the memory is configured to store a plurality of outlines of a vessel wall border of the vessel wall for the plurality of cross-sectional image frames,
wherein, without a hand of a user being removed from the navigational controller, the processor is configured to:
receive, via the navigational controller, a plurality of navigational inputs from the user to navigate to a first cross-sectional image frame and to a second cross-sectional image frame; and
retrieve, from the memory, a first outline of the vessel wall border for the first cross-sectional image frame and a second outline of the vessel wall border for the second cross-sectional image frame,
wherein the processor is further configured to display, using the display device, the first cross-sectional image frame with the first outline of the vessel wall border overlaid thereon and the second cross-sectional image frame with the second outline of the vessel wall border overlaid thereon.
Prior-filed application 61/710,401 appears to be directed to the technical aspects of edge detection itself and not aspects related to user input of the navigational controller and retrieval of the outline of the vessel wall border in response thereto as is recited in claim 1.
The disclosure of the prior-filed application, Application No. 61/729,920, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 1 is presented below (with emphasis added):
1. A system comprising:
an imaging catheter configured to obtain imaging data for a plurality of cross-sectional image frames of a vessel comprising a vessel wall, wherein each of the plurality of cross-sectional image frames is a two-dimensional image frame; and
a processing system operably coupled to the imaging catheter, wherein the processing system comprises a processor coupled to a memory, a display device in communication with the processor, and a navigational controller in communication with the processor,
wherein the memory is configured to store a plurality of outlines of a vessel wall border of the vessel wall for the plurality of cross-sectional image frames,
wherein, without a hand of a user being removed from the navigational controller, the processor is configured to:
receive, via the navigational controller, a plurality of navigational inputs from the user to navigate to a first cross-sectional image frame and to a second cross-sectional image frame; and
retrieve, from the memory, a first outline of the vessel wall border for the first cross-sectional image frame and a second outline of the vessel wall border for the second cross-sectional image frame,
wherein the processor is further configured to display, using the display device, the first cross-sectional image frame with the first outline of the vessel wall border overlaid thereon and the second cross-sectional image frame with the second outline of the vessel wall border overlaid thereon.
The prior-filed application 61/739,920 does not disclose claim 1, particularly the claim limitations emphasized above.
Specification page 2 recites in part: “Without removing his hand from the navigational controller, a doctor may move from location to location, detecting borders automatically at each location.” However, this does not support the claim limitations in question because this is directed to automated border detection while the claim limitations in question are directed to border retrieval.
Specification page 7 recites in part: “FIG. 3 shows an alternative embodiment of the invention, particularly suited for imaging systems with good processing power. As depicted here, the incoming IVUS data is processed in its entirety and all candidate borders are detected. The information of the detected borders may be stored in non-transitory memory (e.g., even if it is not used or called). While a processor of the system has detected all of the borders the system has operated to display a portion of the imaged tissue. Navigational input from the user operates to change the display (e.g., as to mimic motion through the tissue until a point is reached at which a user expresses interest by ceasing to navigate). Upon cessation of navigation, the system provides the detected border that was already detected previously. It will be appreciated that the methodology as described in reference to FIG. 3 may be desirable to employ for systems with good processing power available such as, for example, systems that use one or more of a graphics-processing-unit (GPU) such as a video card sold by NVIDIA to detect the border.” While this portion of the Specification is directed to border retrieval similar to the claim, this does not support the claim limitations in question: While this portion of the Specification recites (1) receiving navigational input and (2) retrieval of the border from memory, it does not recite that the processor is configured to do both (1) and (2) “without a hand of a user being removed from the navigational controller” as recited in the claim.
Specification pages 6-7 recite in part: “FIG, 4 illustrates with particularity the coupled interactions between a user and a computing device 120 at step 131 from FIG. 2. An operator/user, such as a physician, views the display 103 to see images from a 3D data set. The user uses joystick 125 to navigate through the view to a position of interest. The invention employs the insight that an easy and intuitive human action is to navigate to (e.g., to “go to”) something of interest and then to stop going. While prior art systems required additional steps, such as queuing up and operating a separate border detection module, systems of the invention respond to the user’s simple cessation of navigation to detect a border in the area where the user stopped—the target area. In some embodiments, the system detects or provides a border responsive to a cessation of navigational input. For example, the prompt can be a release of a mouse button, cessation of scrolling of a mouse wheel, lifting a finger off of a touchscreen after tracing a path, or release of a joystick. The system provides the detected border, which the user can view.” However, this portion of the Specification suffers the same deficiencies discussed above; i.e., this is directed to automated border detection while the claim limitations in question are directed to border retrieval, and even if it did, it does not recite that that the navigation input is received and the border is retrieved “without a hand of a user being removed from the navigational controller” as recited in the claim.
The disclosures of the prior-filed applications, Application Nos. 14/047,119, 17/668,693, and 18/407,513, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 1 is presented below (with emphasis added):
1. A system comprising:
an imaging catheter configured to obtain imaging data for a plurality of cross-sectional image frames of a vessel comprising a vessel wall, wherein each of the plurality of cross-sectional image frames is a two-dimensional image frame; and
a processing system operably coupled to the imaging catheter, wherein the processing system comprises a processor coupled to a memory, a display device in communication with the processor, and a navigational controller in communication with the processor,
wherein the memory is configured to store a plurality of outlines of a vessel wall border of the vessel wall for the plurality of cross-sectional image frames,
wherein, without a hand of a user being removed from the navigational controller, the processor is configured to:
receive, via the navigational controller, a plurality of navigational inputs from the user to navigate to a first cross-sectional image frame and to a second cross-sectional image frame; and
retrieve, from the memory, a first outline of the vessel wall border for the first cross-sectional image frame and a second outline of the vessel wall border for the second cross-sectional image frame,
wherein the processor is further configured to display, using the display device, the first cross-sectional image frame with the first outline of the vessel wall border overlaid thereon and the second cross-sectional image frame with the second outline of the vessel wall border overlaid thereon.
The prior-filed application 14/047,119 does not disclose claim 1, particularly the claim limitations emphasized above, and therefore do not provide adequate written description support for claim 1 and dependent claims thereof.
Specification (as originally filed) page 2 recites in part: “Without removing his hands from the navigational controller, a doctor may move from location to location, detecting borders automatically at each location.” However, this does not support the claim limitations in question because this is directed to automated border detection while the claim limitations in question are directed to border retrieval.
Specification (as originally filed) page 11 recites in part: “FIG. 3 shows an alternative embodiment of the invention, particularly suited for imaging systems with good processing power. As depicted here, the incoming IVUS data is processed in its entirety and all candidate borders are detected. The information of the detected borders may be stored in non-transitory memory (e.g., even if it is not used or called). While a processor of the system has detected all of the borders the system has operated to display a portion of the imaged tissue. Navigational input from the user operates to change the display (e.g., as to mimic motion through the tissue until a point is reached at which a user expresses interest by ceasing to navigate). Upon cessation of navigation, the system provides the detected border that was already detected previously. It will be appreciated that the methodology as descnbed in reference to FIG. 3 may be desirable to employ for systems with good processing power available such as, for example, systems that use one or more of a graphics-processing-unit (GPU) such as a video card sold by NVIDIA to detect the border.” While this portion of the Specification is directed to border retrieval similar to the claim, this does not support the claim limitations in question: While this portion of the Specification recites (1) receiving navigational input and (2) retrieval of the border from memory, it does not recite that the processor is configured to do both (1) and (2) “without a hand of a user being removed from the navigational controller” as recited in the claim.
Specification pages 11-12 recite in part: “FIG. 4 illustrates with particularly the coupled interactions between a user and a computing device120at step131 from FIG. 2. An operator/user, such as a physician, views the display103 to see images from a 3D data set. The user uses joystick125 to navigate through the view to a position of interest. The invention employs the insight that an easy and intuitive human action is to navigate to (e.g., to "go to") something of interest and then to stop going. While prior art systems required additional steps, such as queuing up and operating a separate border detection module, systems of the invention respond to the user's simple cessation of navigation to detect a border in the area where the user stopped-the target area. In some embodiments, the system detects or provides a border responsive to a cessation of navigational input. For example, the prompt can be a release of a mouse button, cessation of scrolling of a mouse wheel, lifting a finger off of a touchscreen after tracing a path, or release of a joystick. The system provides the detected border, which the user can view.” However, this portion of the Specification suffers the same deficiencies discussed above; i.e., this is directed to automated border detection while the claim limitations in question are directed to border retrieval, and even if it did, it does not recite that that the navigation input is received and the border is retrieved “without a hand of a user being removed from the navigational controller” as recited in the claim.
Applications 17/668,693 and 18/407,513 essentially have the same Specification as Application 14/047,119 and therefore also do not provide adequate written description support for claim 1 and dependent claims thereof.
Since the prior-filed applications do not provide written description support for claim 1 and dependent claims thereof, the benefit claims referencing the prior-filed applications are not effective; i.e., the prior-filed applications their respective filing dates cannot be relied upon. Therefore, the effective filing date of claim 1 and dependent claims thereof is the date that this application was filed (i.e., 2/18/2025).
Applicant states that this application (19/056,071) is a continuation application of the prior-filed application (18/407,513). A continuation application cannot include new matter. Applicant is required to do one of three options: (1) delete the benefit claim or (2) change the relationship (continuation application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:
Claim 1 as originally filed in this application recites in part:
wherein, without a hand of a user being removed from the navigational controller, the processor is configured to:
receive, via the navigational controller, a plurality of navigational inputs from the user to navigate to a first cross-sectional image frame and to a second cross-sectional image frame; and
retrieve, from the memory, a first outline of the vessel wall border for the first cross-sectional image frame and a second outline of the vessel wall border for the second cross-sectional image frame,
As discussed above, this limitation is considered new matter relative to the prior-filed application because it is not supported by the prior-filed application as discussed above.
Otherwise, (3) Applicant must delete the aforementioned new matter in order to preserve the Continuation relationship.
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:
Claim 1 is presented below (with emphasis added):
1. A system comprising:
an imaging catheter configured to obtain imaging data for a plurality of cross-sectional image frames of a vessel comprising a vessel wall, wherein each of the plurality of cross-sectional image frames is a two-dimensional image frame; and
a processing system operably coupled to the imaging catheter, wherein the processing system comprises a processor coupled to a memory, a display device in communication with the processor, and a navigational controller in communication with the processor,
wherein the memory is configured to store a plurality of outlines of a vessel wall border of the vessel wall for the plurality of cross-sectional image frames,
wherein, without a hand of a user being removed from the navigational controller, the processor is configured to:
receive, via the navigational controller, a plurality of navigational inputs from the user to navigate to a first cross-sectional image frame and to a second cross-sectional image frame; and
retrieve, from the memory, a first outline of the vessel wall border for the first cross-sectional image frame and a second outline of the vessel wall border for the second cross-sectional image frame,
wherein the processor is further configured to display, using the display device, the first cross-sectional image frame with the first outline of the vessel wall border overlaid thereon and the second cross-sectional image frame with the second outline of the vessel wall border overlaid thereon.
Specification as filed does not provide antecedent basis for claim 1, particularly the claim limitations emphasized above.
Specification (as originally filed) page 2 recites in part: “Without removing his hands from the navigational controller, a doctor may move from location to location, detecting borders automatically at each location.” However, this does not provide antecedent basis for the claim limitations in question because this is directed to automated border detection while the claim limitations in question are directed to border retrieval.
Specification (as originally filed) pages 11-12 recite in part: “FIG. 3 shows an alternative embodiment of the invention, particularly suited for imaging systems with good processing power. As depicted here, the incoming IVUS data is processed in its entirety and all candidate borders are detected. The information of the detected borders may be stored in non-transitory memory (e.g., even if it is not used or called). While a processor of the system has detected all of the borders the system has operated to display a portion of the imaged tissue. Navigational input from the user operates to change the display (e.g., as to mimic motion through the tissue until a point is reached at which a user expresses interest by ceasing to navigate). Upon cessation of navigation, the system provides the detected border that was already detected previously. It will be appreciated that the methodology as described in reference to FIG. 3 may be desirable to employ for systems with good processing power available such as, for example, systems that use one or more of a graphics-processing-unit (GPU) such as a video card sold by NVIDIA to detect the border.” While this portion of the Specification is directed to border retrieval similar to the claim, this does not provide antecedent basis for the claim limitations in question: While this portion of the Specification recites (1) receiving navigational input and (2) retrieval of the border from memory, it does not recite that the processor is configured to do both (1) and (2) “without a hand of a user being removed from the navigational controller” as recited in the claim.
Specification page 12 recites in part: “FIG. 4 illustrates with particularity the coupled interactions between a user and a computing device 120 at step 131 from FIG. 2. An operator/user, such as a physician, views the display 103 to see images from a 3D data set. The user uses joystick 125 to navigate through the view to a position of interest. The invention employs the insight that an easy and intuitive human action is to navigate to (e.g., to "go to") something of interest and then to stop going. While prior art systems required additional steps, such as queuing up and operating a separate border detection module, systems of the invention respond to the user's simple cessation of navigation to detect a border in the area where the user stopped-the target area. In some embodiments, the system detects or provides a border responsive to a cessation of navigational input. For example, the prompt can be a release of a mouse button, cessation of scrolling of a mouse wheel, lifting a finger off of a touchscreen after tracing a path, or release of a joystick. The system provides the detected border, which the user can view.” However, this portion of the Specification suffers the same deficiencies discussed above; i.e., this is directed to automated border detection while the claim limitations in question are directed to border retrieval, and even if it did, it does not recite that that the navigation input is received and the border is retrieved “without a hand of a user being removed from the navigational controller” as recited in the claim.
Applicant is required to either (1) delete the aforementioned subject matter from the claims, or (2) amend the Specification to provide antecedent basis.
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.
Claims 1-7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites in part (with emphasis added):
wherein, without a hand of a user being removed from the navigational controller, the processor is configured to:
receive, via the navigational controller, a plurality of navigational inputs from the user to navigate to a first cross-sectional image frame and to a second cross-sectional image frame; and
retrieve, from the memory, a first outline of the vessel wall border for the first cross-sectional image frame and a second outline of the vessel wall border for the second cross-sectional image frame,
It is unclear how to interpret this claim limitation.
MPEP 2173.03 Correspondence Between Specification and Claims recites:
The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims. If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1). See MPEP § 608.01(o) and MPEP § 2181, subsection IV. Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.
A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). For example, a claim with a limitation of "the clamp means including a clamp body and first and second clamping members, the clamping members being supported by the clamp body" was determined to be indefinite because the terms "first and second clamping members" and "clamp body" were found to be vague in light of the specification which showed no "clamp member" structure being "supported by the clamp body." In re Anderson, 1997 U.S. App. Lexis 167 (Fed. Cir. January 6, 1997) (unpublished). In Cohn, a claim was directed to a process of treating an aluminum surface with an alkali silicate solution and included a further limitation that the surface has an "opaque" appearance. Id. The specification, meanwhile, associated the use of an alkali silicate with a glazed or porcelain-like finish, which the specification distinguished from an opaque finish. Cohn, 438 F.2d at 993, 169 USPQ at 98. Noting that no claim may be read apart from and independent of the supporting disclosure on which it is based, the court found that the claim was internally inconsistent based on the description, definitions and examples set forth in the specification relating to the appearance of the surface after treatment, and therefore indefinite. Id. In addition, inconsistencies in the meaning of terms or phrases between claims may render the scope of the claims to be uncertain. Tvngo Ltd. (BVI) v. LG Elecs. Inc., 861 Fed. Appx. 453, 459-60, 2021 USPQ2d 697 (Fed. Cir. 2021) ("The issue is not breadth of the dependent claims but their use of the disputed phrase in a way that contradicts the independent claims. The dependent claims state that 'said overlay activation criterion includes . . . a user command information,' which conflicts with the independent claim's use of this same phrase."). "When faced with this unknown and undefined phrase, a skilled artisan would look for clarification not only in the specification but also in '[o]ther claims of the patent in question,' which 'can also be valuable sources of enlightenment as to the meaning of a claim term.'" Id. at 460 (quoting Philips v. AWH Corp., 415 F.3d 1303, 1314, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005)).
In this case, despite the language of the limitation being proper from a grammar/syntax point of view, the scope of the claim is nonetheless unclear due to a lack of correspondence with the Specification as discussed below:
The claim limitation as currently written literally reads as if the recitation of “without a hand of the user being removed from the navigational controller” places limitations on the manner in which the processor is/was configured (i.e., how the processor is/was configured with its configuration); e.g., the that the processor is/was programmed (in the case of software) or fabricated (in the case of hardware) without a hand of the user being removed from the navigational controller. However, this seems nonsensical, since use of the navigational controller seems somewhat irrelevant to how the processor is/was configured, whether or not the hand of the user is removed. Otherwise, the Specification as filed in this application does not provide antecedent basis for this limitation, let alone support for this interpretation of the limitation.
Perhaps the Applicant meant to limit the processor by limiting the “receive” and the “retrieve” steps that the processor is configured to do: i.e., that the processor is configured to:
receive the plurality of navigational input from the user without the hand of the user being removed from the navigational controller, and
retrieve the outlines of the vessels wall border without the hand of the user being removed from the navigational controller,
While this seemingly makes more sense than the claim as currently written, it is still unclear how this is meant to limit the claimed processor because it reads as if it is a recitation of intended use of the processor, while the ordinarily skilled artisan would understand that a processor’s abilities to receive inputs from a user and retrieve data from memory would seemingly be unaffected by whether a user’s hand is or isn’t removed from a navigational controller. Otherwise, the Specification as filed in this application does not provide antecedent basis for this limitation, let alone support for this interpretation of the limitation.
Was it Applicant’s intention to limit the logic of the “receive” and “retrieve” steps itself as part of the processor’s programming/configuration such that these functions only occur if the user’s hand isn’t removed from the navigation controller? In other words, that the processor is configured to:
continuously detect whether the user’s hand is removed from the navigational controller, and
if (and as long as) the user’s hand is not removed from the navigational controller, then:
receive, via the navigational controller, a plurality of navigational inputs from the user to navigate to a first cross-sectional image frame and to a second cross-sectional image frame; and
retrieve, from the memory, a first outline of the vessel wall border for the first cross-sectional image frame and a second outline of the vessel wall border for the second cross-sectional image frame,
otherwise, if the user’s hand is removed from the navigational controller, then don’t do or stop doing the “receive” and “retrieve” steps.
Again, while this seems to make more sense than a recitation of intended use of the processor, this does not seem to make sense from a user experience point of view because it would seemingly force the user to use the invention in a certain way in the sense that the outlines of the vessel wall borders can’t be retrieved if the hand the user is removed from the navigational controller (i.e., it forces the user to have to keep his or her hand on the navigational controller). Otherwise, the Specification as filed in this application does not provide antecedent basis for this limitation, let alone support for this interpretation of the limitation.
Otherwise, was it Applicant’s intention to capture the concept of the quickness and automated nature of the retrieval of the outlines of the vessel wall border from memory and display thereof (i.e., that it happens so fast that the user doesn’t even have a chance to remove his or her hand from the navigational input before the outlines are retrieved and displayed)? While this seems to make the most sense from a user experience point of view, the Specification as filed in this application does not provide antecedent basis for this limitation, let alone support for this interpretation of the limitation.
The examiner has considered many interpretations of the claim limitation in question as discussed above. In an effort to determine the correct interpretation, the examiner looked to the Specification for further clarification. Upon further examination, there appears to be conflicts or inconsistencies between the claim limitation in question and the Specification in the sense that the Specification as filed does not appear to provide antecedent basis for the claim limitation in question, let alone any detailed discussion thereof that supports any of the aforementioned interpretations of the limitation. In other words, the Specification as filed does not describe the claim limitation in any level of detail sufficient enough to disambiguate how the claim limitation should be interpreted. Therefore, the ordinarily skilled artisan would not be reasonably apprised of the metes and bounds of the claimed invention.
Claims 2-7 inherit the aforementioned indefiniteness by virtue of their respective dependencies on claim 1 and therefore rejected for the same reason(s).
Examiner Remarks Regarding Prior Art
MPEP 2173.06 recites in part:
II. PRIOR ART REJECTION OF CLAIM REJECTED AS INDEFINITE
All words in a claim must be considered in judging the patentability of a claim against the prior art. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). The fact that terms may be indefinite does not make the claim obvious over the prior art. When the terms of a claim are considered to be indefinite, at least two approaches to the examination of an indefinite claim relative to the prior art are possible.
First, where the degree of uncertainty is not great, and where the claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, an appropriate course of action would be for the examiner to enter two rejections: (A) a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; and (B) a rejection over the prior art based on the interpretation of the claims which renders the prior art applicable. See, e.g., Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984). When making a rejection over prior art in these circumstances, it is important for the examiner to point out how the claim is being interpreted. Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
The first approach is recommended from an examination standpoint because it avoids piecemeal examination in the event that the examiner’s 35 U.S.C. 112, second paragraph rejection is not affirmed, and may give applicant a better appreciation for relevant prior art if the claims are redrafted to avoid the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph rejection.
As discussed above the claims are indefinite (see §112(b) rejection above). Ordinarily, the Specification can provide enough insight into how the claim should be interpreted with only minimal amount of speculation on the part of the examiner because the Specification typically provides more detail than what is claimed. However, in this case, the Specification does not provide such level of detail for the offending claim limitation; in fact, the Specification doesn’t even provide antecedent basis for the offending claim limitation as discussed above. In this sense, any attempt to reject the claims over prior art would necessarily involve considerable speculation about the meaning of terms employed in the claims or assumptions that must be made as to the scope of the claims. Therefore, rejection of the claims over prior art would be improper at this time.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Burgess et al., US 2012/0130242 A1 (hereinafter “Burgess”) is cited as prior art relevant to the invention as disclosed.
Burgess discloses an imaging catheter (see Fig. 1). Burgess illustrates a display (400, Fig. 4) which includes display of cross-sectional images.
Burgess further discloses at ¶ [0047]: (with emphasis added): “The display 400 can, optionally, include one or more border detection estimations (e.g., lumen borders 410, 412, or blood vessel border 410', or both) for one or more of the cross-sectional images 404 and 406.”
Burgess further discloses at ¶ [0060] (with emphasis added): “In at least some embodiments, when the display 400 includes a plurality of cross-sectional images and a longitudinal view all formed from the same imaging run, a user of the IVUS imaging system 100 can navigate along the longitudinal view (e.g., scroll through different cross-sectional images) and perform one or more recordable actions (e.g., take distance or length measurements, make annotations, or the like).”
Combining the two teachings, the ordinarily skilled artisan would understand this to mean that when navigating to a new cross-sectional image to be display, the corresponding lumen border is displayed along with the cross-sectional image. In other words, when scrolling through a plurality of cross-sectional images, the corresponding lumen border is displayed along with each cross-sectional image of the plurality of cross-sectional images.
Shneiderman, US 7,010,751 B2 teaches storing annotations with images in memory for later retrieval when needed (i.e., when displaying an image, its associated annotations are retrieved from memory and displayed therewith) which, in combination with Burgess, is relevant to the subject matter disclosed in Applicant’s Fig. 3.
For example, applying such teachings to the lumen borders of Burgess would result in storing the lumen borders with the cross-sectional images in memory for later retrieval when needed; i.e., when navigating to a new cross-sectional image to be displayed, the corresponding lumen border is retrieved from memory and displayed along with the cross-sectional image. In other words, when scrolling through a plurality of cross-sectional images, the corresponding lumen border is retrieved from memory and displayed along with each cross-sectional image of the plurality of cross-sectional images.
It is further noted that since the effective filing date of the claimed invention has been determined to be 2/18/2025 (see Priority section above), Applicant’s prior patents in the same patent family (US 11,272,845 B2 and US 11,864,870 B2) are also considered prior art.
Conclusion
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COLIN T. SAKAMOTO
Primary Examiner
Art Unit 3798
/COLIN T. SAKAMOTO/Primary Examiner, Art Unit 3798