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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,397,131. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application is the method corresponding to the non-transitory computer-readable medium of the patent. The independent claims of the method and the non-transitory computer-readable medium both require the particulars of providing broadband incident light, receiving reflected light, processing the reflected light and generating a display using a plurality of reflective gratings along a length of a multi-core optical fiber being spatially distributed to experience different degrees of strain. Claims 2-4 correspond to claims 2-4 of the patent. Claims 5-17 correspond to claims 6-18 of the patent.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,883,609. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application is the method corresponding to the medical device system of the patent. The independent claims of the method and the medical device system require the particulars of a medical device including a plurality of core fibers for experiencing different types of strain, including a plurality of reflective gratings distributed along a longitudinal length as well as providing a broadband incident light, receiving reflected light, processing the reflected light, establishing the reference frame, correlating initial reflected light signals, and generating a display (claim 2 of the patent). The independent claim of the patent include additional features; however, the claim of the patent anticipates the independent claim of the present application. Claims 2-4 correspond to claims 3-5 of the patent. Claim 5 includes the additional recitation of a superior vena cava; however, claim 6 of the patent discloses vasculature of the body and therefore is an obvious variant. Claim 6 corresponds to claim 8 of the patent. Claim 7 corresponds to claim 9 of the patent. Claims 11 and 13-17 correspond to claim 1 of the patent. Claims 9-10 and 12 include additional features further defining the coordinate system of claim 1. These are obvious variants which are consistent with localization of instruments as conventional in the art (Cartesian coordinate system, 2D and 3D coordinate systems).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the vasculature" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 states “a patient” in line 16. It is unclear as to whether this is attempting to further define “a patient” in line 2 or an additional patient.
Claim 8 discloses “each coordinate system of the reference frame of the body of the patient”; however, claim 1 discloses only “a coordinate system” not one or more coordinate systems.
Claims 9-11 state “the coordinate system of the reference frame of the body” while claim 8, from which they depend, discloses “each coordinate system”. It is unclear as to which coordinate system claims 9 and 10 are attempting to further define.
Claim 11 recites the limitation "the reference frame of the patient" in lines 8-9. There is insufficient antecedent basis for this limitation in the claim. Examiner notes prior limitations disclose “the reference frame of the body of the patient”. See line 6 of claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROCHELLE DEANNA TURCHEN whose telephone number is (571)270-7104. The examiner can normally be reached Mon - Fri 6:30-2:30.
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, 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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/ROCHELLE D TURCHEN/Primary Examiner, Art Unit 3797
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