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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
`
`
`
`
`
`14/3 87,160
`
`09/22/2014
`
`Tomoaki Takemura
`
`2014— 1274A
`
`6645
`
`52349
`7590
`03’0””
`WENDEROTH,LIND&PONACK L.L.P. —
`1030 15th Street, NW.
`BAYAT, ALI
`Suite 400 East
`
`Washington, DC 20005 - 1503
`
`ART UNIT
`2666
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/03/2015
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`ddalecki @wenderoth.c0m
`e0a@ wenderoth.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/387,160 TAKEMURA ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`ALI BAYAT its“ 2666
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 9/22/2014.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)|:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) fl) is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)IXI Claim(s) 1-8 and 10 is/are allowed.
`7)|Z| Claim(s)_9 is/are rejected.
`
`8)|:I Claim(s)_ is/are objected to.
`* If any)claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`()
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`are subject to restriction and/or election requirement.
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`participating intellectual property office for the corresponding application. For more information, please see
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`I/AWIIV‘LUSDIO. ovI’ atentS/init events/
`iindex.‘s orsend an inquiry to PPI-iieedback{®usgtc.00v.
`
`hit
`
`Application Papers
`
`10)IZI The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 9/22/2014 is/are: a)lX| accepted or b)|:l objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 9/22/2014.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20150221
`
`

`

`Application/Control Number: 14/387,160
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`Page 2
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`Art Unit: 2666
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`The present application is being examined under the pre—AIA first to invent provisions.
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`DETAILED ACTION
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`Specification
`
`Applicant is reminded of the proper language and format for an abstract of the
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`disclosure.
`
`The abstract should be in narrative form and generally limited to a single paragraph on a
`separate sheet within the range of 50 to 150 words. The form and legal phraseology often
`used in patent claims, such as "means" and "said," should be avoided. The abstract
`should describe the disclosure sufficiently to assist readers in deciding whether there is a
`need for consulting the full patent text for details.
`The language should be clear and concise and should not repeat information given in the
`title. It should avoid using phrases which can be implied, such as, "The disclosure
`concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
`
`The abstract of the disclosure is objected to because of numerical numbering, which
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`refers to Figures. Correction is required. See MPEP § 608.0l(b).
`
`Claim Rejections - 35 USC § 101
`
`35 USC. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
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`Claim 9 is rejected under 35 USC. 101 because the claimed invention is directed
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`to non—statutory subject matter. Claim 9 defines a surgery assistance program or
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`(computer software). However computer software is not statutory by itself,
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`because it is not (processes machines, manufactures, and compositions of matter),
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`a surgery assistance program becomes statutory, when software code is encoded
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`(stored) on a non—transitory computer readable storage medium or (a computer
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`storage device).
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`

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`Application/Control Number: 14/387,160
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`Page 3
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`Art Unit: 2666
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`Examiner suggestion “A surgery assistance program stored in a memory to
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`perform navigation while displaying a three—dimensional simulation image
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`produced from tomographic image information...”
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`Allowed Claims
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`Claims 1—8 and 10 are allowed.
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`Reasons for Allowance
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`The following is an examiner’s statement of reasons for allowance: the
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`closest prior art of Imanaka et al. (Pub.No: US 20120032959 A1), relates to
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`surgical simulation can be performed merely by moving an input section in a
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`planar fashion, without issuing resection instructions while looking at a 3D
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`display, so a benefit is that good surgical simulation can be carried out .see
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`[0068].
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`Imanaka failed to teach or suggest for a tomographic image information
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`acguisition section configured to acguire tomographic image information about a
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`patient; a memog that is connected to the tomographic image information
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`acguisition section and configured to store voxel information for the tomographic
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`image information; a volume rendering computer that is connected to the memory
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`and configured to sample voxel information in a direction perpendicular to the
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`sight line on the basis of the voxel information; an endoscope/surgical instrument
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`position sensor configured to seguentially sense the three—dimensional positions
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`of the endoscope and the surgical instrument; a registration computer configure to
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`integrate the coordinates of a three—dimensional image produced by the volume
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`

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`Application/Control Number: 14/387,160
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`Page 4
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`Art Unit: 2666
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`rendering computer and the coordinates of the endoscope and the surgical
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`instrument sensed by the endoscope/surgical instrument position sensor; a
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`simulator configured to store the resection portion scheduled for surgery and
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`Virtually resected on the three—dimensional image produced by the volume
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`rendering computer; in the memory after associating it with the voxel information;
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`a distance calculator configured to calculate a distance between the working end
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`of the surgical instrument on the three—dimensional image and the voxel
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`information indicating the resection portion and stored in the memory; and
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`a navigator configured to display the working end of the surgical
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`instrument on the three— dimensional image by using the coordinates of the
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`surgical instrument during surgery; and display the distance between the working
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`end and the voxel information indicating the resection portion stored in the
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`memory; along with the endoscopic image displayed during surgery. As cited in
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`claims 1 and 10.
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`Any comments considered necessary by applicant must be submitted no
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`later than the payment of the issue fee and, to avoid processing delays, should
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`preferably accompany the issue fee. Such submissions should be clearly labeled
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`“Comments on Statement of Reasons for Allowance.”
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`Contact Information
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`Any inquiry concerning this communication or earlier communications
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`from the examiner should be directed to ALI BAYAT whose telephone number is
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`

`

`Application/Control Number: 14/387,160
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`Page 5
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`Art Unit: 2666
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`(571)272—7444. The examiner can normally be reached on M—F 9:00 AM—5:00
`
`PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the
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`examiner’s supervisor, Kim Vu can be reached on 571—272—3859. The fax phone
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`number for the organization Where this application or proceeding is assigned is
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`571-273—8300.
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`
`/ALI BAYAT/
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`Primary Examiner, Art Unit 2666
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`

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`Application/Control Number: 14/387,160
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`Page 6
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`Art Unit: 2666
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