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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 10307210. Although the claims at issue are not identical, they are not patentably distinct from each other because for example in claim 1, the instant invention is broader in that it omits the positive recitation of the light source as compared to claim 1 of the patent. However, it would be an obvious modification to omit the light source, as omission of an element has been held to be an obvious modification to one of ordinary skill in the art (Ex Parte Wu, 10 USPQ 2031, Bd. Pat. App. & Inter. 1989). Furthermore, claim 1 of the instant invention includes additional details in regards to the processor configured to measure a position of patterns, compare the patterns with a pre-stored reference, and calculate the direction of a marker, however, it is noted that this limitation is found in claims 2-3 of the patent.
Specification
The disclosure is objected to because of the following informalities:
On page 1, the status of co-pending applications should be updated.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaerer et al. (US 2011/0254922; hereinafter Schaerer) in view of McCloy et al. (US 2007/0183041; hereinafter McCloy), Burdette et al. (US 2003/0135115; hereinafter Burdette), and Garbey et al. (US 2014/0171787; hereinafter Garbey).
Schaerer shows an optical tracking system and method (abstract) comprising: at least one marker configured to be attached to a target ([0068]), the at least one marker including therein: at least one pattern portion formed by a plurality of patterns and arranged to receive light irradiated by at least one external light source, the received light passing the at least one pattern portion or being reflected by the at least one pattern portion ([0072]); at least one camera including: a second lens configured to receive and focus the light released from the first lens ([0068]); and an image sensor configured to form an image of the at least one pattern portion based on the focused light ([0069]); and a processor configured to: measure a position of patterns for each area of the image of the at least one pattern portion ([0070]); compare the position of the patterns for each area of the image of the at least one pattern portion with a pre-stored reference position of the patterns for each area of the at least one pattern portion ([0070]); and calculate a direction of the at least one marker based on the rotated angle of the at least one marker, wherein the patterns in each area of the at least one pattern portion have different characteristics from patterns in other areas ([0068]-[0078]; Figs. 1-4).
Schaerer fails to show a first lens arranged to receive the light, which has passed the at least one pattern portion or has been reflected by the at least one pattern portion, and configured to release a plurality of portions of the light, each released portion of the light having passed a specific point of the at least one pattern portion.
Schaerer fails to explicitly show a lens on the camera. Schaerer also fails to show a fish eye lens.
Schaerer fails to explicitly show calculate a rotated angle of the at least one marker based on a result of the comparison.
McCloy discloses retroreflective marker tracking systems. McCloy teaches a first lens arranged to receive the light, which has passed the at least one pattern portion or has been reflected by the at least one pattern portion, and configured to release a plurality of portions of the light, each released portion of the light having passed a specific point of the at least one pattern portion ([0042]-[0056]; Figs. 1-3 and 6-7).
Burdette discloses an optical medical tracking system. Burdette teaches a lens on the camera ([0033]). Burdette also teaches a fish-eye lens ([0033]).
Garbey discloses surgical procedure management systems. Garbey teaches calculate a rotated angle of the at least one marker based on a result of the comparison ([0044]-[0057]; Figs. 2, 4, and 7).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Schaerer to utilize the lens system as taught by McCloy because doing so would predictably provide the marker function of Schaerer with a limited filed of view range as taught by McCloy so that markers could be more accurately viewed only at certain angles, thus reducing interference from multiple markers in a given scene. Furthermore, a variety of known types of lenses may be selected as desired by one of ordinary skill in the art, such as a fish eye type lens, to obtain the benefits of the specific shape of the lens, where a fish eye lens is known to provide a wider field of view.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the combined invention of Schaerer and McCloy to utilize a lens on the camera as taught by Burdette, in order to predictably focus and adjust the field of view as desired by Schaerer, thus providing an imageable field of view for finding the markers of Schaerer.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the combined invention of Schaerer, McCloy, and Burdette to calculate a rotated angle of the marker as taught by Garbey because doing so would predictably allow a medical device to be identified, tracked in position, and tracked in orientation, thereby increasing the accuracy of the measurements.
Claim(s) 3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaerer et al. (US 2011/0254922; hereinafter Schaerer) in view of McCloy et al. (US 2007/0183041; hereinafter McCloy), Burdette et al. (US 2003/0135115; hereinafter Burdette), and Garbey et al. (US 2014/0171787; hereinafter Garbey) as applied to claims 1 and 4 above, and further in view of Unsworth (US 2010/0036393).
Schaerer fails to show wherein the at least one marker further comprises a prism arranged to receive the light released from the first lens and configured to release the light to have a different angle of view.
Unsworth discloses methods and systems for a robotic control system. Unsworth teaches wherein the at least one marker further comprises a prism arranged to receive the light released from the first lens and configured to release the light to have a different angle of view ([0168], [0191]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the combined invention of Schaerer, McCloy, Burdette, and Garbey to utilize a prism as taught by Unsworth because doing so would predictably redirect the image of the Schaerer marker to the imaging camera so that the marker can be seen from a desirable angle.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN CWERN whose telephone number is (571)270-1560. The examiner can normally be reached Monday - Friday, 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Koharski can be reached at (571) 272-7230. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN CWERN/Primary Examiner, Art Unit 3797
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