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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Status
This action is in response to applicant’s filing on 8/13/2025. Claims 1-20 are pending and considered below.
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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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent Number 12,408,990. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Comparing claims 1-15 of the instant application with claims 1-9 of U.S. Patent Number 12,408,990:
“A surgical system comprising: a protective packaging configured to retain a tool, the protective packaging comprising a trackable feature having a predetermined state defined relative to an actual state of the tool retained by the protective packaging” (claim 1) of the instant application would have been obvious over “A navigation system comprising: a trackable protective packaging configured to retain a tool, the trackable protective packaging comprising at least one trackable feature configured to have a predetermined state defined relative to an actual state of the tool when the tool is retained by the trackable protective packaging” (claim 1) of U.S. Patent Number 12,408,990;
“a machine vision system comprising a camera configured to detect an actual state of the trackable feature of the protective packaging” (claim 1) of the instant application would have been obvious over “a localizer configured to detect an actual state of the at least one trackable feature” (claim 1) of U.S. Patent Number 12,408,990;
“one or more controllers coupled to the machine vision system and configured to:” (claim 1) of the instant application would have been obvious over “one or more controllers coupled to the localizer and configured to:” (claim 1) of U.S. Patent Number 12,408,990;
“obtain the predetermined state of the trackable feature” (claim 1) of the instant application would have been obvious over “obtain the predetermined state of the at least one trackable feature” (claim 1) of U.S. Patent Number 12,408,990;
“obtain an expected state of the tool based on an expected condition in which the tool is properly mounted to a surgical device” (claim 1) of the instant application is the same as “obtain an expected state of the tool based on an expected condition in which the tool is properly mounted to a surgical device” (claim 1) of U.S. Patent Number 12,408,990;
“determine the actual state of the tool based on the actual state of the trackable feature detected by the machine vision system and the predetermined state of the trackable feature defined relative to the actual state of the tool” (claim 1) of the instant application would have been obvious over “determine the actual state of the tool based on the actual state of the at least one trackable feature detected by the localizer and the predetermined state of the at least one trackable feature defined relative to the actual state of the tool” (claim 1) of U.S. Patent Number 12,408,990;
“compare the actual state and the expected state of the tool” (claim 1) of the instant application is the same as “compare the actual state and the expected state of the tool” (claim 1) of U.S. Patent Number 12,408,990;
“evaluate whether the tool is properly mounted to the surgical device based on comparison of the actual state and expected state of the tool” (claim 1) of the instant application is the same as “evaluate whether the tool is properly mounted to the surgical device based on comparison of the actual state and expected state of the tool” (claim 1) of U.S. Patent Number 12,408,990; and
“generate an alert in response to evaluation of whether the tool is properly mounted to the surgical device” (claim 1) of the instant application would have been obvious over “wherein the one or more controllers are further configured to generate at least one of a haptic, audible, and visual alert in response to evaluation of whether the tool is properly mounted to the surgical device” (claim 1) of U.S. Patent Number 12,408,990.
Comparing claim 16 of the instant application with claims 1-9 of U.S. Patent Number 12,408,990:
“A surgical tracking system to evaluate whether a tool is properly mounted to a surgical device, the tool being retained by a protective packaging, the protective packaging including a trackable feature having a predetermined state defined relative to an actual state of the tool retained by the protective packaging, the surgical tracking system comprising:” (claim 16) of the instant application would have been obvious over “A navigation system comprising: a trackable protective packaging configured to retain a tool, the trackable protective packaging comprising at least one trackable feature configured to have a predetermined state defined relative to an actual state of the tool when the tool is retained by the trackable protective packaging” (claim 1) of U.S. Patent Number 12,408,990;
“a machine vision system comprising a camera configured to detect an actual state of the trackable feature of the protective packaging” (claim 16) of the instant application would have been obvious over “a localizer configured to detect an actual state of the at least one trackable feature” (claim 1) of U.S. Patent Number 12,408,990;
“one or more controllers coupled to the machine vision system and configured to:” (claim 16) of the instant application would have been obvious over “one or more controllers coupled to the localizer and configured to:” (claim 1) of U.S. Patent Number 12,408,990;
“obtain the predetermined state of the trackable feature” (claim 16) of the instant application would have been obvious over “obtain the predetermined state of the at least one trackable feature” (claim 1) of U.S. Patent Number 12,408,990;
“obtain an expected state of the tool based on an expected condition in which the tool is properly mounted to the surgical device” (claim 16) of the instant application would have been obvious over “obtain an expected state of the tool based on an expected condition in which the tool is properly mounted to a surgical device” (claim 1) of U.S. Patent Number 12,408,990;
“determine the actual state of the tool based on the actual state of the trackable feature detected by the machine vision system and the predetermined state of the trackable feature defined relative to the actual state of the tool” (claim 16) of the instant application would have been obvious over “determine the actual state of the tool based on the actual state of the at least one trackable feature detected by the localizer and the predetermined state of the at least one trackable feature defined relative to the actual state of the tool” (claim 1) of U.S. Patent Number 12,408,990;
“compare the actual state and the expected state of the tool” (claim 16) of the instant application is the same as “compare the actual state and the expected state of the tool” (claim 1) of U.S. Patent Number 12,408,990;
“evaluate whether the tool is properly mounted to the surgical device based on comparison of the actual state and expected state of the tool” (claim 16) of the instant application is the same as “evaluate whether the tool is properly mounted to the surgical device based on comparison of the actual state and expected state of the tool” (claim 1) of U.S. Patent Number 12,408,990; and
“generate an alert in response to evaluation of whether the tool is properly mounted to the surgical device” (claim 16) of the instant application would have been obvious over “wherein the one or more controllers are further configured to generate at least one of a haptic, audible, and visual alert in response to evaluation of whether the tool is properly mounted to the surgical device” (claim 1) of U.S. Patent Number 12,408,990.
Comparing claims 17-20 of the instant application with claims 1-9 of U.S. Patent Number 12,408,990:
“A surgical system comprising: a surgical device; a protective packaging configured to retain a tool that is adapted to mount to the surgical device, the protective packaging comprising a trackable feature having a predetermined state defined relative to an actual state of the tool retained by the protective packaging” (claim 17) of the instant application would have been obvious over “A navigation system comprising: a trackable protective packaging configured to retain a tool, the trackable protective packaging comprising at least one trackable feature configured to have a predetermined state defined relative to an actual state of the tool when the tool is retained by the trackable protective packaging” (claim 1) of U.S. Patent Number 12,408,990;
“a machine vision system comprising a camera configured to detect an actual state of the trackable feature of the protective packaging” (claim 17) of the instant application would have been obvious over “a localizer configured to detect an actual state of the at least one trackable feature” (claim 1) of U.S. Patent Number 12,408,990;
“one or more controllers coupled to the machine vision system and configured to:” (claim 17) of the instant application would have been obvious over “one or more controllers coupled to the localizer and configured to:” (claim 1) of U.S. Patent Number 12,408,990;
“obtain the predetermined state of the trackable feature” (claim 17) of the instant application would have been obvious over “obtain the predetermined state of the at least one trackable feature” (claim 1) of U.S. Patent Number 12,408,990;
“obtain an expected state of the tool based on an expected condition in which the tool is properly mounted to the surgical device” (claim 17) of the instant application would have been obvious over “obtain an expected state of the tool based on an expected condition in which the tool is properly mounted to a surgical device (claim 1) of U.S. Patent Number 12,408,990;
“determine the actual state of the tool based on the actual state of the trackable feature detected by the machine vision system and the predetermined state of the trackable feature defined relative to the actual state of the tool” (claim 17) of the instant application would have been obvious over “determine the actual state of the tool based on the actual state of the at least one trackable feature detected by the localizer and the predetermined state of the at least one trackable feature defined relative to the actual state of the tool” (claim 1) of U.S. Patent Number 12,408,990;
“compare the actual state and the expected state of the tool” (claim 17) of the instant application is the same as “compare the actual state and the expected state of the tool” (claim 1) of U.S. Patent Number 12,408,990;
“evaluate whether the tool is properly mounted to the surgical device based on comparison of the actual state and expected state of the tool” (claim 17) of the instant application is the same as “evaluate whether the tool is properly mounted to the surgical device based on comparison of the actual state and expected state of the tool” (claim 1) of U.S. Patent Number 12,408,990; and
“generate an alert in response to evaluation of whether the tool is properly mounted to the surgical device” (claim 17) of the instant application would have been obvious over “wherein the one or more controllers are further configured to generate at least one of a haptic, audible, and visual alert in response to evaluation of whether the tool is properly mounted to the surgical device (claim 1) of U.S. Patent Number 12,408,990.
Conclusion
Nikou et al. (US-2011/0264107-A1) is the closest prior art to the applicant’s invention. Nikou discloses a surgical navigation system which uses an infrared camera to locate tracker markers attached to a handpiece (paragraphs [0034-0037]). The handpiece connects to a drill, end effector, and modular guard. The modular guard and drill are concentric such that the drill and end effector move along the central X-X axis of the drill. Thus, the modular guard has a predetermined state relative to the central axis of the drill and end effector (paragraphs [0036-0038]). Tracking the handpiece allows the navigation system to know the position of the end effector of the drill when the drill is inserted into the handpiece (paragraph [0043]). In response to tracking data, an electronic control unit (ECU) provides feedback signals to the drill and a computer (paragraph [0055]).
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TAMARA L. WEBER
Examiner
Art Unit 3667
/TAMARA L WEBER/Examiner, Art Unit 3667
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