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 .
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3 line 3, limitation “an optical navigation system” should read “the optical navigation system”.
Appropriate correction is required.
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.
Claim 3 is 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 3 recites limitation “a position” in line 4. It is unclear the above position is a newly introduced different position of the array, or the same “first position” and/or “second position” as recited in claim 1 line 6.
Thus, the above limitation renders claim indefinite. For the purpose of examination, the above limitation is interpreted as reasonable position, such as the location of the array.
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.
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Claim 1 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 5 of U.S. Patent No. 12,303,210 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each and every limitation recited in the above claims of instant application 19/187,415 are being unpatentable over US 12,303,210 B2, which is detailed as following:
Instant application 19/187,415
Reference patent US 12,303,210 B2
[claim 1]
A navigational array for attaching to a surgical tool, comprising:
a frame comprising fiducials for detection by an optical navigation system; and
a body having a first end for supporting the frame and a second end defining an opening
aligned with a first axis of the surgical tool,
wherein the opening engages features disposed at predetermined even intervals on a stationary surface adjacent to the surgical tool to allow repositioning of the array from a first position to a second position, wherein the second position is at least one of a rotational offset or an axial offset from the first position.
[claim 1]
A navigational array for attaching to a surgical tool, comprising:
a frame comprising fiducials for detection by an optical navigation system; and
a body having a first end for supporting the frame and a second end defining an opening,
wherein the opening is aligned with a first axis of the surgical tool,
wherein the opening engages a stationary surface adjacent to the surgical tool,
(this limitation is about the stationary surface, which is also required by the instant application as recited below, the instant application does not change the scope) and
wherein the opening engages features disposed at predetermined even intervals on the stationary surface adapted to allow repositioning of the array from a first position to a second position, wherein the second position is at least one of a rotational offset or an axial offset from the first position.
[claim 3]
A surgical system comprising:
the array of claim 1;
an optical navigation system; and
a controller adapted to use the navigation system to track at least one of a position or an orientation of the array.
[claim 5]
A surgical system comprising:
the array of claim 1;
an optical navigation system; and
a controller adapted to use the navigation system to track of the position and/or orientation of the array.
(the phrase “and/or” is equivalent to “at least one of A or B” as recited by instant application)
Therefore, claim 1 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 5 of U.S. Patent No. 12,303,210 B2.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Wehrili et al. (US 2018/0344301 A1; published on 12/06/2018) (hereinafter " Wehrili "), Troxell et al. (US 2021/0007811 A1; published on 01/14/2021) and Richter (US 2021/0244478 A1; published on 08/12/2021) (hereinafter “Richter”) are cited as most relevant prior arts to the claimed invention.
Regarding independent claim 1, Wehrili, Troxell, Richter and other search results collectively neither teach nor fairly well suggest a navigational array for attaching to a surgical tool, “wherein the opening engages features disposed at predetermined even intervals on a stationary surface adjacent to the surgical tool to allow repositioning of the array from a first position to a second position, wherein the second position is at least one of a rotational offset or an axial offset from the first position”, in combination with other limitations as recited in claim 1.
The claimed invention requires the fiducial frame to be repositioned according to even interval engagement features. Although Wehrili and Troxell teach frame adapter with even spaced grooves, such grooves are configured for tool mounting/fixing, which are not designed for repositioning of the array. Richter teaches a mounting feature of markers array which is adjustable along axial direction. However, the axial offset is adjusted at any distance with a spring or coil, which does not teach features at “predetermined even intervals” for adjustment.
Thus, neither cited prior arts nor does other search result collectively teach or suggest all the subject matter as recited in independent claim 1.
Claim 2 and 3 are dependent on claim 1, and therefore inherently include the allowable features as discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Karsak et al. (US 2012/0168587 A1; published on 07/05/2012) teach a mount for markers array. A roller bearing is provided to accommodate the array. However, the arrays is fixed on the roller bearing without any movement.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAO SHENG whose telephone number is (571)272-8059. The examiner can normally be reached Monday to Friday, 8:30 am to 5:00 pm.
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/CHAO SHENG/ Primary Examiner, Art Unit 3797