www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/620,747
`
`12/20/2021
`
`Jun ARAI
`
`17359US01
`
`2647
`
`Xsensts
`
`/Sony
`
`eames
`
`Xsensus / Sony
`100 Daingerfield Road, Suite 402
`Alexandria, VA 22314
`
`IP, JASON M
`
`PAPER NUMBER
`
`ART UNIT
`
`3797
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/27/2024
`
`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):
`Xdocket @ XSensus.com
`
`Xsensuspat@ XSensus.com
`anaquadocketing @ Xsensus.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`171620,747
`Examiner
`JasonIp
`
`Applicant(s)
`ARAI, Jun
`Art Unit
`3797
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 12/20/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-20 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`CL] Claim(s)__is/are allowed.
`1-201
`Claim(s)
`is/are rejected.
`16-17
`Claim(s)
`/ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 12/20/2021 is/are: a)¥) accepted or b)() 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)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) All
`1.1.) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.{¥] Copies of the certified copies of the priority documents have been receivedin this National Stage
`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)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`Other: EP Translation PDF
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20241212
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 2
`
`DETAILED ACTION
`
`Notice of AIA Status
`
`The presentapplication, filed on or after March 16, 2013,
`
`is being examined underthe
`
`first inventor to file provisions of the AIA.
`
`Allowable Subject Matter
`
`Claim(s) 16 and 17 are objectedto as being dependent upona rejected baseclaim, but
`
`would be allowable if rewritten in independent form including all of the limitations of the base
`
`claim and any intervening claims.
`
`CLAIM INTERPRETATION
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f} Element in Claim fora Combination. — An elementina claim fora combination maybe expressed as
`a means or step for performing a specified function without the recital of structure, material, or acts
`in support thereof, and such claim shall be construed to cover the corresponding structure, material,
`or acts described in the specification and equivalents thereof.
`
`The claims in this application are given their broadest reasonable interpretation using
`
`the plain meaning of the claim languagein light of the specification as it would be understood
`
`by one of ordinary skill in the art. The broadest reasonable interpretation of aclaim element
`
`(also commonly referredto as aclaim limitation) is limited by the description in the
`
`specification when 35 U.S.C. 112(f) is invoked.
`
`As explained in MPEP § 2181, subsection |, claim limitations that meet the following
`
`three-prong test will be interpreted under 35 U.S.C. 112(f):
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 3
`
`(A)
`
`the claim limitation uses the term “means”or “step” or aterm used as a substitute for
`
`“means”that is a generic placeholder (also called a nonce term or a non-structural term
`
`having no specific structural meaning) for performing the claimed function;
`
`(B)
`
`the term “means”or “step” or the generic placeholder is modified by functional
`
`language, typically, but not alwayslinked by the transition word “for” (e.g., “means for”)
`
`or another linking word or phrase, such as “configured to” or “so that”; and
`
`(C)
`
`the term “means”or “step” or the generic placeholder is not modified by sufficient
`
`structure, material, or acts for performing the claimed function.
`
`Use of the word “means”(or “step”) in a claim with functional language creates a
`
`rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C.
`
`112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f), is
`
`rebutted when the claim limitation recites sufficient structure, material, or acts to entirely
`
`perform the recited function.
`
`Absenceof the word “means”(or “step”) in a claim creates a rebuttable presumption
`
`that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The
`
`presumption thatthe claim limitation is not interpreted under 35 U.S.C. 112(f), is rebutted
`
`when the claim limitation recites function without reciting sufficient structure, material or acts
`
`to entirely perform the recited function.
`
`Claim limitations in this application that use the word “means”(or “step”) are being
`
`interpreted under 35 U.S.C. 112(f), exceptas otherwise indicated in an Office action.
`
`Conversely, claim limitations in this application that do not use the word “means”(or “step”)
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 4
`
`are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office
`
`action.
`
`Claim element(s):
`
`1.
`
`acquisition unit
`
`comparison unit
`
`determination unit
`
`generation unit
`
`judgment unit
`
`recognition unit
`
`detection unit
`
`notification unit
`
`9.
`
`instruction unit
`
`is/are a means (or step) plus function limitation that invokes 35 U.S.C. 112(f). However,
`
`the written description fails to disclose the corresponding structure, material, or acts for the
`
`claimed function:
`
`1.
`
`acquires
`
`compares
`
`determines
`
`generates
`
`obtains/makes a judgment
`
`recognizes/obtains
`
`detects
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page5S
`
`8.
`
`9.
`
`notifies
`
`gives an instruction/causes
`
`Applicant is required to:
`
`(a) Amend the claim so that the claim limitation will no longer be a means (or step) plus
`
`function limitation under 35 U.S.C. 112(f); or
`
`(b) Amend the written description of the specification such that it expressly recites what
`
`structure, material, or acts perform the claimed function without introducing any new matter
`
`(35 U.S.C. 132(a)).
`
`If applicant is of the opinion that the written description of the specification already
`
`implicitly or inherently discloses the corresponding structure, material, or acts so that one of
`
`ordinaryskill in the art would recognize what structure, material, or acts perform the claimed
`
`function, applicant is required to clarify the record by either:
`
`(a) Amending the written description of the specification such that it expressly recites
`
`the corresponding structure, material, or acts for performing the claimed function and clearly
`
`links or associates the structure, material, or acts to the claimed function, without introducing
`
`any new matter (35 U.S.C. 132(a)); or
`
`(b) Stating on the record what the correspondingstructure, material, or acts, which are
`
`implicitly or inherently set forth in the written description of the specification, perform the
`
`claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(0) and 2181.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 6
`
`(a) INGENERAL.—The specification shall contain a written description of the invention, and of the
`manner and process of making and usingit, 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.
`
`Claim(s) 1-20 is/are rejected under 35 U.S.C. 112(a) 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 conveyto one skilledin the
`
`relevant art that the inventor or a joint inventor, or for pre-AlA the inventor(s), at the time
`
`the application wasfiled, had possession of the claimed invention.
`
`Regarding claims 1-20, the languageis indefinite as per the 112(f) interpretation.
`
`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.
`
`Claim(s) 1-20 is/are rejected under 35 U.S.C. 112(b) as being indefinite for failing to
`
`particularly point out and distinctly claim the subject matter which the inventor or a joint
`
`inventor regards as the invention.
`
`Regarding claims 1-20, the languageis indefinite as per the 112(f) interpretation.
`
`Regarding claims 4 and 14, the terms “high reliability” and “relatively high” are
`
`indefinite.
`
`Regarding claims 11-14, “the entire medical observation system”lacks proper
`
`antecedent basis.
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 7
`
`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 may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 ofthis title, if the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skillin the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`Claim(s) 1-5, 7, 8, 10-13, 19, and 20 is/are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Ito (US 20060009679).
`
`Regarding claims 1, 19, and 20, Ito discloses a medical observation system, control
`
`device and method, comprising: a plurality of types of sensor units that measure information
`
`regarding an internal environment ([0045]: “various types of sensors”); an acquisition unit that
`
`acquires individual sensor values ofthe plurality of types of sensor units ([0046]: “signals
`
`obtained from the sensors”); a comparison unit that compares the individual sensor values of
`
`the plurality of types of sensorunits acquired by the acquisition unit ([0107]: “comparing all the
`
`results aggregated from all the types of sensors”). Ito does not explicitly disclose a
`
`determination unit that determines a sensor unit to be used for observing the internal
`
`environment among the plurality of types of sensor units based on a comparison result
`
`obtained by the comparison unit. However, Ito doesteach that the comparison result of the
`
`different types of sensors lead to the determination of which sensor(s) may be
`
`functional/reliable ([0108]). Thus, it would have been obvious to one of ordinaryskill in the art
`
`before the effectivefiling date of the presentinvention to apply a determination of a sensor
`
`unit, as to determine the reliability of a sensor.
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 8
`
`Regarding claim 2, Ito discloses a generation unit that generates an environment map of
`
`the internal environment based on a measurementresult obtained by the sensor unit
`
`determined by the determination unit. ({0048], [0049]: the mapping of the length is an
`
`“environment map”).
`
`Regarding claim 3, Ito may not explicitly disclose a judgment unit that makes a judgment
`
`on reliability of each of the plurality of types of sensor units based on the comparison result
`
`obtained by the comparison unit, wherein the determination unit determines the sensor unit to
`
`be used for observing the internal environment among the plurality of types of sensor units
`
`based on ajudgmentresult obtained by the judgment unit. However,Ito teaches that a
`
`comparison between sensors would lead to a determination of whether or not sensors are
`
`working properly ([0108]). Thus, it would have been obvious to one ofordinary skill in the art
`
`before the effectivefiling date of the present invention to apply the detection ofIto, as to
`
`provide sensing of a sensor’s reliability.
`
`Regarding claim 4, Ito does not explicitly disclose that the determination unit
`
`determines at least two types of sensor units with high reliability as the sensor units to be used
`
`for observing the internal environment based on the judgment result obtained by the judgment
`
`unit. However, Ito teaches that sensors are chosen based upon their reliability under certain
`
`environmental situations ([0110], [0111]).
`
`If acomparison between sensorsreveals that certain
`
`sensors are in better condition or are more appropriate, then it is clear that this information is
`
`factored into the selection of which sensor(s) to use. Thus, it would have been obvious to one
`
`of ordinary skill in the art before the effective filing date of the present invention to apply the
`
`detection of Ito, as to provide sensing of a sensor’s reliability.
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 9
`
`Regarding claim 5, while Ito does not explicitly disclose that the judgment unit makes a
`
`judgmenton the reliability of each of the plurality of types of sensor units based on priority set
`
`in advance for each of the plurality of types of sensor units. However, it would have been
`
`obvious to consider some sensors before others, especially since Ito teaches that some sensors
`
`are considered before others ([0110], [0111]). Thus, it would have been obvious to one of
`
`ordinaryskill in the art before the effectivefiling date of the present invention to apply the
`
`prioritization as taught by Ito, as to provide an intentional ordering of steps.
`
`Regarding claims 7 and 8, Ito does not explicitly disclose that the judgment unit makes a
`
`judgmenton the reliability of each of the plurality of types of sensor units based on map
`
`information regarding the internal environment before surgery and based on the environment
`
`map. However, it would have been obvious to one of ordinary skill in the art before the
`
`effective filing date of the present invention to apply a simple test of whetherthe sensor is
`
`operational to determine the reliability of the sensor.
`
`If an environment map is not properly
`
`captured, then it would be obvious that a sensor’s reliability would be in question.
`
`Regarding claim 10, Ito does not explicitly disclose a detection unit that detects a failure
`
`or deterioration in reliability of at least part of the sensor units based on a judgment result
`
`obtained by the judgment unit. However, Ito teaches that a comparison between sensors
`
`would lead to a determination of whether or not sensors are working properly ([0108]). Thus,it
`
`would have been obvious to one of ordinaryskill in the art before the effectivefiling date of the
`
`present invention to apply the detection of Ito, as to provide sensing of a sensor’s reliability.
`
`Regarding claim 11, Ito does not explicitly disclose that the detection unit detects
`
`deterioration in the reliability of the entire medical observation system. However, Ito teaches
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 10
`
`that a comparison between sensors would lead to a determination of whetheror not sensors
`
`are working properly ([0108]). One sensor being compromised would lead to a deterioration of
`
`the reliability of the entire system. Thus, it would have been obvious to one of ordinary skill in
`
`the art before the effectivefiling date of the present invention to apply the detection ofIto, as
`
`to provide sensing of a sensor’s reliability.
`
`Regarding claim 12, Ito does not explicitly disclose that when the detection unit has
`
`detected the deterioration in the reliability of the entire medical observation system, the
`
`generation unit generates an environment map based on a measurementresult of the sensor
`
`unit having relatively high reliability among the plurality of types of sensor units. However, Ito
`
`teaches that certain sensors with ‘relative high reliability’ are selectively chosen for use in
`
`certain situations ([0109], [0110]). Thus, it would have been obvious to one of ordinary skill in
`
`the art before the effectivefiling date of the present invention to apply the selection ofIto, as
`
`to provide optimally performing sensors.
`
`Regarding claim 13, Ito does not explicitly disclose a notification unit that notifies
`
`deterioration in reliability of the environment map whenthe detection unit has detected the
`
`deterioration in the reliability of the entire medical observation system. However, Ito teaches
`
`that a comparison between sensors would lead to a determination of whether or not sensors
`
`are working properly ([0108]). This determination would also serve as a notification. Thus,it
`
`would have been obvious to one of ordinaryskill in the art before the effectivefiling date of the
`
`present invention to apply the detection ofIto, as to provide sensing of a sensor’s reliability.
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 11
`
`Claim(s) 6 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito (US
`
`20060009679), as applied to claim 3 above, in view of Sasaki (EP 3097841).
`
`Regarding claim 6, Ito does not explicitly disclose that one of the plurality of types of
`
`sensor units is an image sensorthat images the internal environment, the medical observation
`
`system further comprises a recognition unit that recognizes a status based on a video image
`
`acquired from the image sensor, and the judgmentunit makes a j udgmenton the reliability of
`
`each of the plurality of types of sensorunits based ona recognition result obtained by the
`
`recognition unit. However, Sasaki teaches an endoscopic system that detects a focus-disrupting
`
`mist using image data ([0046], [0047]...). Thus, it would have been obvious to one of ordinary
`
`skill in the art before the effectivefiling date of the present invention to apply the recognition
`
`of Sasaki to the endoscopic system of Ito, as to provide a sensing ofreliability based upon
`
`image data of an environment.
`
`Regarding claim 9, Ito does not explicitly disclose that one of the plurality of types of
`
`sensor unit is an image sensor that images the internal environment, the medical observation
`
`system further comprises a recognition unit that recognizes a status based on a video image
`
`acquired from the image sensor, and the judgmentunit makes a judgmenton the reliability of
`
`each of the plurality of types of sensorunits based ona priority set in advance for each of the
`
`plurality of types of sensor units, a recognition result obtained by the recognition unit, map
`
`information regarding the internal environment before surgery, and the environment map.
`
`However, Sasaki teaches an endoscopic system that detects a focus-disrupting mist using image
`
`data ([0002]: “video”; [0046], [0047]...). Thus, it would have been obvious to one of ordinary
`
`skill in the art before the effectivefiling date of the present invention to apply the recognition
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 12
`
`of Sasaki to the endoscopic system of Ito, as to provide a sensing ofreliability based upon
`
`image data of an environment.
`
`Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito
`
`(US 20060009679), as applied to claim 11 above, in view of Neumann (EP 1681014,
`
`translated).
`
`Regarding claims 14 and 15, Ito does not explicitly disclose an instruction unit that gives
`
`an instruction of operation of an autonomously driven main body in accordance with the
`
`environment map generated based on the measurement result obtained by the sensor unit
`
`having relatively high reliability among the plurality of types of sensor units, whenthe detection
`
`unit has detected deterioration in the reliability of the entire medical observation system,
`
`wherein the instruction unit causes the main body to execute crisis avoidance operation.
`
`However, Neumannteaches an automatic safety shutdown of the forward movement of an
`
`endoscope (p.5 of translated copy). Thus, it would have been obvious to one ofordinaryskill in
`
`the art before the effectivefiling date of the present invention to apply the instruction as
`
`taught by Neumann to the device of Ito, as to provide automated crisis avoidance.
`
`Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito (US
`
`20060009679), as applied to claim 1 above,in view of Lee (US 20110306986).
`
`Regarding claim 18, Ito does not explicitly disclose a support arm device having an arm
`
`unit at least a part of which is configured to be bendable and which is configured to be able to
`
`support a medical instrument, wherein the plurality of types of sensorunits are supported by
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 13
`
`the arm unit. However, Lee teaches an endoscope maneuvered by an articulated robotic arm
`
`(Abstract). Thus, it would have been obvious to one of ordinary skill in the art before the
`
`effective filing date of the present invention to apply the arm of Lee to the endoscope ofIto, as
`
`to provide robotic control of an endoscope.
`
`Conclusion
`
`The prior art made of record and not relied upon is considered pertinent to applicant's
`
`disclosure.
`
`US 2016/0307303 to Ishigami teaches dirt detection in an image ([0076]: “dirt detector
`
`that detects a dirt region on or near the main lens..”) for use with an endoscope ([0078]:
`
`“endoscopes”).
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Jason Ip whose telephone number is (571) 270-5387. The
`
`examiner can normally be reached Monday- Friday 9a-5p PST.
`
`Examiner interviewsare 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 on (571) 272-7230. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 17/620, 747
`Art Unit: 3797
`
`Page 14
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Centeris available
`
`to registered users. To file and manage patent submissions in Patent Center,visit:
`
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`
`/JASONM IP/
`Primary Examiner, Art Unit 3793
`
`