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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/25/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 6 is 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.
The term “certain distance” in claim 6 is a relative term which renders the claim indefinite. The term “certain distance” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the limitation “wherein the resonator is electrically connected to one or more contacts of the coil” has been rendered indefinite by the use of the term “certain distance.”
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4, 6, 9, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Govari et al. (Pub No.: US 2003/0023161).
Consider claim 1, Govari discloses a marker device (paragraph [0066], Fig. 7, tag 81) comprising:
a sensor comprising a resonator having piezoelectric properties, and a coil (paragraph [0066], Fig. 7, transducer, such as a piezoelectric crystal, and coils (i.e., coil 56, see Figs. 4, 5) in tag 81 defining a resonant circuit, see paragraph [0050]);
wherein the coil is configured to provide to the resonator an output voltage in response to an external excitation field (paragraph [0066], Fig. 7, acoustic energy generated by transmitter 82 excites piezoelectric crystal to generate electrical energy. The electrical energy causes a current to flow in one or more coils, such as coil 56, wherein voltage is produced by the sensor coil current flowing across a load, see paragraph [0060]),
wherein the resonator is configured to transduce the output voltage into mechanical oscillations in a resonant mode (paragraph [0051], oscillator circuit is excited by an externally-generated electromagnetic field at a first frequency (f1), which causes the oscillator circuit to radiate a response field at another frequency (f2)) and provides a piezoelectric voltage to the coil (paragraph [0060], voltage is produced by the sensor coil as current flows across a load), and
wherein the coil is configured to transduce the piezoelectric voltage into a magnetic field (paragraph [0066], currents in the coils in tag 81 generate electromagnetic fields).
Consider claim 2, Govari discloses wherein the sensor further comprises a capacitor (paragraph [0050], Fig. 1, tag comprises a capacitor 24).
Consider claim 4, Govari discloses wherein the resonator comprises a crystalline material (paragraph [0066], Fig. 7, piezoelectric crystal).
Consider claim 6, Govari discloses wherein the resonator is electrically connected to one or more contacts of the coil at a certain distance from the said coil (paragraph [0066], Fig. 7, acoustic energy generated by transmitter 82 excites piezoelectric crystal to generate electrical energy. The electrical energy causes a current to flow in one or more coils, such as coil 56).
Consider claims 9, 19, Govari discloses a tracking system for tracking a marker device according to claim 1 (paragraph [0076], Fig. 10, system 125 for guiding surgical tool 76 to the location of tag 120 in breast 30), the tracking system comprising:
an excitation field generator configured to generate one or more of: a magnetic or electromagnetic excitation field (paragraph [0077], Fig. 10, Energizing field generator coils 70 in unit 84 causes currents to flow in sensor coils 128);
a tracking array configured to detect a field from the marker device and configured to generate one or more response signals based on the said field (paragraph [0077], Unit 84 analyzes the currents flowing in sensor coils 128); and
a position determinator configured to determine a position of the marker device based on the one or more response signals (paragraph [0077], unit 84 is able to determine the exact location of the tag).
Consider claim 20, Govari discloses a non-transitory computer-readable medium having stored thereon a computer program for controlling a tracking system to track a marker device that, when the computer program is executed by a processor, causes the tracking system to perform the method according to claim 19 (paragraph [0063], processing unit 72 comprises a general-purpose computer, with suitable input circuits and software for processing the position signals).
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.
Claims 3, 10, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Govari in view of Herr et al. (Pub. No.: US 2020/0305765).
Consider claim 3, Govari discloses wherein the coil and the resonator are connected in series (paragraph [0066], piezoelectric crystal, in tag 81, to generates electrical energy causing a current to flow in one or more coils in tag 81).
Govari does not specifically disclose wherein the capacitor is connected in parallel with the coil.
Herr discloses wherein the capacitor is connected in parallel with the coil (paragraph [0124], placing the electromagnetic coils in parallel with capacitive elements).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to replace the capacitor and coil as disclosed by Govari with the capacitor and coil as taught by Herr to create circuits whose resonant frequency and impedance are altered by the movement of nearby ferromagnetic or electrically conductive materials, wherein the measured impedances and/or resonant frequencies can then be employed to determine the location of the implants (Herr, paragraph [0124]).
Consider claim 10, Govari does not specifically disclose wherein the tracking array comprises a plurality of oscillation response detectors configured to detect the one or more of: magnetic or electromagnetic excitation field.
Herr discloses wherein the tracking array comprises a plurality of oscillation response detectors configured to detect the one or more of: magnetic or electromagnetic excitation field (paragraph [0135], Fig. 4, oscillation and sensing circuitry 66 which is driven by computer 68. The oscillation and sensing circuitry then deliver the sensor readings to computer 68).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to replace the tracking array as disclose by Govari with the tracking array as taught by Herr to process sensor readings and/or to perform muscle state calculations (Herr, paragraph [0135]).
Consider claim 14, Govari does not specifically disclose the tracking system configured to track the assembly comprising two or more marker devices.
Herr discloses the tracking system configured to track the assembly comprising two or more marker devices (paragraph [0132], implanted materials 60 can be expanded to a large number of groups).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to replace the tracking system as disclosed by Govari with the tracking system as taught by Herr to increase the accuracy of muscle state estimation (Herr, paragraph [0032]).
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Govari in view of Wolf (Pub. No.: US 2013/0035577).
Consider claim 5, Govari discloses wherein the coil is made from any one of or combination of: copper, silver, aluminum, gold (Examiner notes that this is well known in the art); and
wherein the resonator is made from comprising any one of: crystal, quartz crystal, ceramics (paragraph [0066], Fig. 7, piezoelectric crystal).
Govari does not specifically disclose wherein the coil is made from any one of or combination of: copper, silver, aluminum, gold.
Wolf discloses wherein the coil is made from any one of or combination of: copper, silver, aluminum, gold (paragraph [0104], inductive coil 525 constructed with copper wire).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to replace the coil as disclosed by Govari with the coil as taught by Wolf to provide a coil suitable for conductivity as known in the art.
Consider claim 7, Govari discloses wherein the resonator is made of a piezoelectric material (paragraph [0066], Fig. 7, piezoelectric crystal).
Govari does not specifically disclose wherein the resonator is deformed in response to the output voltage received.
Wolf discloses wherein the resonator is deformed in response to the output voltage received (paragraph [0053], transducer crystal 50 is a quartz (silicon dioxide) crystal which exhibits a change in oscillation frequency as a predictably stable function of deformation, wherein mechanical deformations of a crystal are detected as piezoelectric charges, see paragraph [0060]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to replace the resonator as disclosed by Govari with the resonator as taught by Wolf to provide for sensitivity, electromechanical stability, absolute pressure accuracy, biocompatibility and electrical noise immunity (Wolf, paragraph [0053]).
Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Govari in view of Krag et al. (Pub. No.: US 2007/0265491, Applicant’s IDS filed 08/25/2025).
Consider claim 8, Govari does not specifically disclose an assembly comprising two or more marker devices of claim 1.
Krag discloses an assembly comprising two or more marker devices of claim 1 (paragraph [0102], Fig. 13, plurality of the markers 30).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to replace the marker as disclosed by Govari with the two or more markers as taught by Krag to define the boundaries of tissue volume in a tissue portion (Krag, paragraph [0102]).
Consider claim 18, Govari does not specifically disclose the tracking system further comprising a physical parameter determination unit for determining a physical or a chemical parameter based on the one or more response signals.
Krag discloses the tracking system further comprising a physical parameter determination unit for determining a physical or a chemical parameter based on the one or more response signals (paragraph [0139], each marker has a unique frequency, these markers can be uniquely identified by detector 34'' (FIG. 8)).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to replace tracking system as disclosed by Govari with the tracking system as taught by Krag to determine the depth of the cut in a tissue portion (Krag, paragraph [0139]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Govari in view of Fabian (Pat. No.: US 5,057,095, Applicant’s IDS filed 08/25/2026).
Consider claim 13, Govari disclose not specifically disclose wherein the position of the marker device consists essentially of three coordinates and two angle positions.
Fabian discloses wherein the position of the marker device consists essentially of three coordinates (col. 6, line 67 thru col. 7, line 15, Fig. 5, defined 3 marker orientations to include parallel orientation 50, perpendicular orientation 52, and vertical orientation 54) and two angle positions (col. 6, lines 3-26, transmit coil 40 to marker 18 coupling is a function of the distance X and the two angles A and C).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to replace the position determiner as disclose by Govari with position determiner as taught by Fabian to determine the magnetic field generated by the transmit coil (Fabian, col. 6, lines 3-26).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Govari in view of Herr and further in view of Krag.
Consider claim 15, the combination of Govari and Herr does not specifically disclose wherein the two or more marker devices are configured to have varying oscillation frequencies and are tracked separately, wherein the tracking measurements are combined together.
Krag discloses wherein the two or more marker devices are configured to have varying oscillation frequencies and are tracked separately, wherein the tracking measurements are combined together (paragraph [0075], when multiple markers 30c are used together in a given bracketing procedure, preferably each marker transmits RF signals at a second frequency which is unique to the marker).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to replace tracking system as disclosed by the combination of Govari and Herr with the tracking system as taught by Krag to support the bracketing procedure (Krag, paragraph [0075]).
Allowable Subject Matter
Claims 11, 12, 16, and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 11, Krag discloses comparing the location of markers 30 to tissue mass 26 during implantation of the markers into tissue portion 24, based on image information received from the imaging system, the markers may be positioned so as to define tissue volume 22 (paragraph [0107]). However, Krag fails to disclose modelling one or more response signals and comparing the modelled response signals with the response signal received.
Regarding claim 16, Govari discloses generating an acoustic energy (paragraph [0066]). However, Govari fails to include an additional saturating field generator for causing the coil to be saturated.
The remaining claims are objected for dependence on objected claims.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,419,535. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain each and every element of the patent.
Examined Application
U.S. Patent No. 12,419,535
1. A marker device comprising: a sensor comprising a resonator having piezoelectric properties, and a coil; wherein the coil is configured to provide to the resonator an output voltage in response to an external excitation field, wherein the resonator is configured to transduce the output voltage into mechanical oscillations in a resonant mode and provides a piezoelectric voltage to the coil, and wherein the coil is configured to transduce the piezoelectric voltage into a magnetic field.
1. A passive marker device that comprises: a sensor comprising a resonator having piezoelectric properties, and a coil; wherein the coil provides to the resonator an output voltage in response to an external excitation field, wherein the resonator transduces the output voltage into respective mechanical oscillations in a resonant mode and provides a piezoelectric voltage to the coil, and wherein the coil transduces the piezoelectric voltage into a magnetic field.
Conclusion
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/Gerald Johnson/
Primary Examiner, Art Unit 3797
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