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 .
Election/Restrictions
Applicant’s election without traverse of Claims 11-18 in the reply filed on August 10, 2026 is acknowledged.
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 11-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-17 of U.S. Patent No. 12,303,213. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘213 anticipates:
Claim 11. A method, comprising: registering a first digitized 3D dataset of an anatomical site with a preoperative image 3D dataset of the anatomical site to form a first composite image; positioning a surgical reference relative to the anatomical site; obtaining a second digitized 3D dataset of the anatomical site representative of at least the surgical reference; registering the second digitized 3D dataset with the first composite image of the anatomical site to form a second composite image; removing an existing implant or performing a surgical alteration to the anatomical site to form an altered portion of the anatomical site; obtaining a third digitized 3D dataset of the anatomical site representative of at least the altered portion thereof and the surgical reference; combining the third digitized 3D dataset with the second composite image of the anatomical site to form a third composite image, the third composite image including data representative of the altered portion after removal of the implant, data representative of the preoperative image 3D dataset before removal of the implant and data representative of the surgical reference; and performing, with a surgical instrument, one or more surgical procedures within the anatomical site using one of the second composite image or the third composite image to assist in navigation of the surgical instrument about the anatomical site (claim 10).
Claim 12. The method according to claim 11 wherein performing one or more surgical procedures includes utilizing a computer-controlled robot, the surgical instrument being coupled to the computer-controlled robot; wherein the computer-controlled robot utilizes the one of the second composite image or the third composite image to manipulate the surgical instrument (claim 16).
Claim 13. The method according to claim 11 wherein the surgical instrument includes an orthopedic screw, an orthopedic pin or an orthopedic implant (claim 13).
Claim 14. The method according to claim 11 including obtaining the preoperative image 3D dataset through one or more image scanning processes (claim 10, 11).
Claim 15. The method according to claim 11 wherein positioning the surgical reference relative to the anatomical site including mounting the surgical reference to tissue within the anatomical site (claim 12).
Claim 16. The method according to claim 15 wherein the surgical reference includes one of a mount, fixture, pin, or a rod configured to be secured relative to the tissue (claim 13).
Claim 17. The method according to claim 11 wherein the third composite image includes data representative of a portion of the anatomical site which is unaltered and not visible in a surgical field (claim 15).
Claim 18. The method according to claim 11 wherein one or more of the steps are performed at least in part by a processor coupled to memory (claim 17).
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
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