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 .
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) 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. 17/085,653, 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. The specification as originally filed fails to disclose the subject matter of reducing at least some visual aberration in the imaging-datastream comprising: determining a view of the imaging-datastream; reducing, using a first machine-learning model and based on the determined view, visual aberrations in the imaging-datastream. Accordingly, claims 1-4 and 21-35 are not entitled to the benefit of the prior application.
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 1-4 and 21-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 12-15, and 20 of U.S. Patent No. 12,376,905 in view of Pinkovich et al. (US 2021/0034921). Claim 1 recites a system comprising at least one processor and memory (encompassed by processor and memory in claim 1 of ‘905), storing instructions, that when executed by the at least one processor, cause the at least one processor to perform operations comprising: receiving an image-datastream generated from sensing of a phenomena in a patient’s body, the imaging-datastream formatted to contain gradient data having at least one range of values based on the sensed phenomena (encompassed by receive the imaging-datastream in claim 1 of ‘905); generating, from the imaging-datastream, a high-contrast videostream comprising monochromatic data having a selected value from a plurality of specified values by automatically converting the gradient data to the monochromatic data, wherein surgical tools and vascular tissue are represented with a dark monochromatic color corresponding to a first value of the plurality of specified values and surrounding non-vasculature tissue is represented with a light monochromatic color corresponding to a second value of the plurality of specified values, the dark monochromatic color being darker than the light monochromatic color (encompassed by automatically generate a high-contrast videostream in claim 1 of ‘905); and transmitting for display on a head-worn display, the high-contrast videostream, such that the light monochromatic color is renderable as transparent by the head-worn display such that images of environments beyond the head-worn display transmit through the light monochromatic color to be visible by a wearer of the head-worn display (encompassed by transmit in claim 1 of ‘905). Patent ‘905 does not claim reducing at least some visual aberration in the imaging-datastream comprising reducing, using a first machine-learning model visual aberrations in the imaging-datastream. However, Pinkovich et al. teaches in the same field of endeavor machine learning models may be used to reduce blur medical imaging ([0002]). Therefore, it would have been obvious to one of ordinary skill in the art to have provided ‘905 with machine learning to reduce blur as taught by Pinkovich et al. in order to produce super resolution medical images, diagnose a pathology, segment a medical image, or perform other types of image processing or analysis ([0002]). Claim 2 is encompassed by claim 2 of ‘905. Claim 3 is encompassed by claim 3 of ‘905. Claim 4 is encompassed by claim 4 of ‘905. Claim 21 is encompassed by machine learning in Pinkovich et al. ([0002]; [0026]). Claim 22 is encompassed by Pinkovich et al. ([0088]). Claim 23 is encompassed by Pinkovich et al. ([0002]). Claim 24 is encompassed by Pinkovich et al. ([0030]). Claim 25 is encompassed by Pinkovich et al. ([0002]; [0004]). Claim 26 is encompassed by claim 1 of ‘905. Claim 27 is obvious in view of claim 12 of ‘905 in view of Pinkovich et al. (see above). Claim 28 is encompassed by claim 13 of ‘905. Claim 29 is encompassed by claim 14 of ‘905. Claim 30 is encompassed by claim 15 of ‘905. Claim 31 is encompassed by machine learning in Pinkovich et al. ([0002]; [0026]). Claim 22 is encompassed by Pinkovich et al. ([0088]). Claim 33 is encompassed by Pinkovich et al. ([0002]). Claim 34 is encompassed by Pinkovich et al. ([0002]; [0004]). Claim 35 is obvious in view of claim 20 of ‘905 in view of Pinkovich et al. (see above).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 and 21-35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification as originally filed fails to disclose the subject matter of reducing at least some visual aberration in the imaging-datastream comprising: determining a view of the imaging-datastream; reducing, using a first machine-learning model and based on the determined view, visual aberrations in the imaging-datastream.
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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