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 .
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 20-25, 27-28, 30-35, and 37-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 8, and 19 of U.S. Patent No. 12,376,913. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter in the instant claims are rendered obvious by patent ‘913. With respect to claims 20 and 30, patent ‘913 recites a trackable fluoroscopic element including a first end including a first radio-opaque disk, a second end including a second radio-opaque disk, and a radio-opaque wire disposed along a surface of the trackable fluoroscopic element (claim 1 of ‘913); a fluoroscopic imaging device configured to capture a fluoroscopic image of a patient anatomy and the trackable fluoroscopic element positioned relative to the patient’s anatomy (claim 1 of ‘913); receiving the fluoroscopic image (claim 8); determining a dimensional position of the trackable fluoroscopic element in the fluoroscopic image (claim 8 of ‘913); and cause a display to display a graphical representation of the dimensional position of the trackable fluoroscopic element in the fluoroscopic image (claim 8 of ‘913). ‘913 does not claim a computing device, however, it would have been obvious to one of ordinary skill in the art to have provided a computing device as performing generic computer functions are well-understood, routine, and conventional activities known to the industry. Claim 21 is encompassed by claim 1 of ‘913. Claim 22 is encompassed by claim 8 of ‘913. Claim 23 is encompassed by claim 1 of ‘913. Claim 24 is encompassed by claim 1 of ‘913. Claim 25 is encompassed by claim 1 of ‘913. Claim 27 is encompassed by claim 5 of ‘913. Claim 28 is encompassed by claim 19 of ‘913. Claim 31 is encompassed by claim 1 of ‘913. Claim 32 is encompassed by claim 8 of ‘913. Claim 33 is encompassed by claim 1 of ‘913. Claim 34 is encompassed by claim 1 of ‘913. Claim 35 is encompassed by claim 5 of ‘913. Claim 37 is encompassed by claim 5 of ‘913. Claim 38 is encompassed by claim 19 of ‘913.
Claims 26 and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 12,376,913 in view of Steinberg et al. (US 2020/0405399). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter in the instant claims are rendered obvious by patent ‘913 in view of Steinberg et al. Patent ‘913 discloses the subject matter in the instant claims (see above) except for detecting displacement exceeding a threshold and capturing a new image. However, Steinberg et al. teaches in the same field of endeavor detecting displacement exceeding a threshold and capturing a new image ([0557]). Therefore, it would have been obvious to one of ordinary skill in the art to have provided patent ‘913 with detecting displacement exceeding a threshold and capturing a new image as taught by Steinberg et al. in order to update the position ([0557]).
Claims 29 and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 12,376,913 in view of Smith et al. (US 2008/0154389). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter in the instant claims are rendered obvious by patent ‘913 in view of Smith et al. Patent ‘913 discloses the subject matter in the instant claims (see above) except for user input and recalibrating. However, Smith et al. teaches in the same field of endeavor user input and recalibrating trajectory in response to a shift in location ([0089-0090]). Therefore, it would have been obvious to one of ordinary skill in the art to have provided patent ‘913 with user input and recalibration as taught by Smith et al. in response to a shift in location ([0089-0090]).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to disclose or render obvious the claimed combination of subject matter, particularly, a trackable fluoroscopic element including a first end including a first radio-opaque disk, a second end including a second radio-opaque disk, and a radio-opaque wire disposed along a surface of the trackable fluoroscopic element and method of determining position of the trackable element.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER LUONG whose telephone number is (571)270-1609. The examiner can normally be reached M-F 9-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan T Nguyen can be reached at (571)272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER LUONG/Primary Examiner, Art Unit 3797
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