DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 07, 2026 (hereinafter “01/07/26 Amendment") has been entered, and fully considered.
Response to Amendment
3. In the 01/07/26 Amendment, claims 1, 4, 5, 29, 34, & 37 were amended. No claims were cancelled (claims 9, 11, 28, & 35 were previously cancelled), or newly added. Therefore, claims 1-8, 10, 12-27, 29-34, & 36-40 remain pending in the application (and claims 14-27 remain withdrawn from further consideration).
4. The 01/07/26 Amendment has overcome the claim objections and the rejections under § 112(b) previously set forth in the Final Office Action mailed 10/08/2025 (“10/08/25 Action”), with the exception of those that have been reiterated herein.
5. New claim objections and rejections under § 112(b) are set forth herein, necessitated by Applicant's amendment.
6. As a result of the 01/07/26 Amendment:
Independent claim 1 would be allowable if rewritten or amended to overcome the claim objections and the rejection(s) under 35 U.S.C. 112(b) set forth (above) in this Office Action; &
The prior rejection of independent claim 37 under § 112(b) is maintained. Applicant’s arguments are addressed in detail below.
Claim Objections
7. Claims 1, 2, 4-7, 10, 12, 13, 29, & 34 are objected to because of the following informalities:
a. In claim 1, line 21, the recitation of “said electrosurgical operational mode” should instead recite --said desired electrosurgical operational mode--.
b. In claim 2, lines 3-4, the recitation of “said first surgical mechanical arm” should instead recite --said selected surgical mechanical arm--.
c. In claim 2, line 7, the recitation of “said first surgical mechanical arm” should instead recite --said selected surgical mechanical arm--.
d. In claim 4, line 2, the recitation of “said motor unit” should instead recite --said connected motor unit--.
e. In claim 5, lines 1-3, the recitation of “wherein said rotating portions of at least one of said first surgical mechanical arm or of said second surgical mechanical arm are actuated by rotating one or more gears of said at least one surgical mechanical arm” should instead recite --wherein said rotating portions of said selected surgical mechanical arm are actuated by rotating one or more gears of said selected surgical mechanical arm--.
f. In claim 6, lines 1-3, the recitation of “wherein said one or more gears of said at least one surgical mechanical arm” should instead recite --wherein said one or more gears of said selected surgical mechanical arm--.
g. In claim 7, line 3, the recitation of “said first motor unit” should instead recite --said connected motor unit--.
h. In claim 7, line 5, the recitation of “said first motor unit” should instead recite --said connected motor unit--.
i. In claim 10, line 2, the recitation of “said at least one surgical mechanical arm” should instead recite --said selected surgical mechanical arm--.
j. In claim 12, line 2, the recitation of “said first surgical mechanical arm” should instead recite --said selected surgical mechanical arm--.
k. In claim 13, line 2, the recitation of “said first surgical mechanical arm” should instead recite --said selected surgical mechanical arm--.
l. In claim 29, lines 2-3, the recitation of “said first surgical mechanical arm” should instead recite --said selected surgical mechanical arm--.
m. In claim 34, lines 1-4, the recitation of “wherein connecting said at least one of said first motor unit and second motor unit to said electrosurgical power generator comprises connecting a power cable between a power connector of the first motor unit and the electrosurgical power generator” should instead recite --wherein connecting said at least one of said first motor unit and second motor unit to said electrosurgical power generator comprises connecting a power cable between a power connector of the respective motor unit and the electrosurgical power generator--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
8. 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.
9. Claims 1-8, 10, 12-27, 29-34, & 36-40 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.
10. Claim 1 recites the limitation “the corresponding surgical mechanical arm” in line 27. There is insufficient antecedent basis for this recitation in the claim. Examiner suggests amending the claim to recite “the selected surgical mechanical arm” to obviate the rejection.
11. Claims 2-8, 10, 12, 13, 29-34, & 36 are rejected as ultimately depending from a claim (claim 1) rejected under 35 U.S.C. 112(b)
12. Claim 37 recites the limitation “performing a user selection of an electrosurgical tissue-manipulating tool of one of said first surgical mechanical arm or second surgical mechanical arm to be operated by said electrosurgical power” in lines 13-15. This recitation renders the claim indefinite, as it is unclear how a user can make a selection of a tool from among the first surgical mechanical arm and the second surgical mechanical arm when only one surgical mechanical arm is connected to the electrosurgical power generator [see the preceding lines 9-12 of the claim concerning step “b” requiring the connection of only one motor unit]. Clarification is required.
13. Claim 37 recites the limitation “using a dedicated relay, disabling the other of said first surgical mechanical arm and second surgical mechanical arm, not in said user selection” in lines 16-17. This recitation renders the claim indefinite, as it is unclear how an unselected arm can be disabled if it is not connected to the electrosurgical power generator to begin with [see the preceding lines 9-12 of the claim concerning step “b” requiring the connection of only one motor unit]. Clarification is required.
14. Claims 38-40 are rejected as ultimately depending from a claim (claim 37) rejected under 35 U.S.C. 112(b).
Allowable Subject Matter
15. Independent claim 1 would be allowable if rewritten or amended to overcome the claim objections and the rejection(s) under 35 U.S.C. 112(b) set forth (above) in this Office action.
Independent Claim 1 is directed to a method of using an electrosurgical system including a first surgical mechanical arm and a second surgical mechanical arm, each comprising an electrosurgical tissue-manipulating tool positioned at a distal end of said surgical mechanical arm, and a first motor unit and a second motor unit, each configured to operably attach to a proximal end of said first surgical mechanical arm and a proximal end of said second surgical arm respectively, and to actuate movement of said first surgical mechanical arm and said second surgical mechanical arm.
Claim 1 further requires the steps of removably attaching the proximal end of each of said first surgical mechanical arm and said second surgical mechanical arm to said first motor unit and said second motor unit respectively, and connecting at least one of said first motor unit and said second motor unit to an electrosurgical power generator to enable supply of electrosurgical power.
Claim 1 then specifies required (comparing and enabling) processing steps that occur “within the connected motor unit” to ensure that electrosurgical power supply is safely applied to the selected surgical mechanical arm:
i. comparing, using a processor, a type of electrosurgical power provided to the connected motor unit with a desired electrosurgical operational mode selected for one of said first surgical mechanical arm and said second surgical mechanical arm, and with a corresponding selection of one of said first surgical mechanical arm or said second surgical mechanical arm by a user for said electrosurgical operational mode; [and]
ii. enabling electrosurgical power supply to the selected surgical mechanical arm in said electrosurgical operational mode only if said type of electrosurgical power to be supplied matches said desired electrosurgical operational mode, and only if said power is to be supplied to the selected surgical mechanical arm, wherein said enabling comprises transferring said electrosurgical power supply via a dedicated relay configured within at least said connected motor unit.
Additionally, claim 1 specifies the use of different conduction pathways for different desired electrosurgical modes (bipolar or monopolar):
c. conducting said electrosurgical power supply to said electrosurgical tissue-manipulating tool of the corresponding surgical mechanical arm, based on said desired electrosurgical operational mode, through one of:
a first electrical conduction pathway comprised of an elongate wire or cable extending through an inner lumen defined by a tubular body of said selected surgical mechanical arm; and
a second electrical conduction pathway comprised of one or more elongate portions of said tubular body itself;
wherein said first electrical conduction pathway is configured to provide power supply to said electrosurgical tissue-manipulating tool in a bipolar electrosurgical mode; and
wherein said second electrical conduction pathway is configured to provide power supply to said electrosurgical tissue-manipulating tool in a monopolar electrosurgical mode.
16. The references of record, viewed either alone or in combination, do not fairly teach or suggest the required (comparing and enabling) processing steps that occur “within the connected motor unit” highlighted above, in combination with the remaining limitations of independent claim 1. As such, independent claim 1 is patentable over the references of record.
Response to Arguments
17. As noted above, the 01/07/26 Amendment has overcome the claim objections and the rejections under § 112(b) previously set forth in the 10/08/2025 Action.
18. New claim objections and rejections under § 112(b) are set forth herein, necessitated by Applicant's amendment.
19. Independent claim 1 would be allowable if rewritten or amended to overcome the claim objections and the rejection(s) under 35 U.S.C. 112(b) set forth (above) in this Office Action.
20. The prior rejection of independent claim 37 under § 112(b) is maintained. Due to the lack of clarity of independent claim 37 for the reasons set forth herein, prior art has not been applied to this claim at this time.
21. In the 01/07/26 Amendment, concerning the rejection of claim 37, Applicant argues as follows:
Applicant wishes to point out to the Examiner that the surgical system described in the present application comprises two motor units, each configured for receiving and activating a surgical arm. In operation, the surgeon chooses which surgical arm to work with, and the operating room staff then connects the power supply to the desired motor unit. However, to avoid human error (i.e. the staff connecting the power supply to the wrong motor unit), once the surgeon performs their selection of which surgical arm they wish to work with, an internal relay in the motor units disables power supply to the OTHER of the motor units by opening a circuit. Thus, even if the power supply is connected to the WRONG motor unit (i.e. NOT the motor unit selected by the surgeon), electricity will not flow as the circuit is open.
01/07/26 Amendment, pg. 10, emphasis added.
The following hypothetical example is provided to highlight the confusion concerning the current claim language:
In step b) of the claim, the power supply line connects the electrosurgical power generator to the second surgical mechanical arm, which becomes “the connected surgical mechanical arm.”
In step c) of the claim, a user selection of the first surgical mechanical arm is made, the motor unit of which has not been connected to the electrosurgical power generator.
In step d) of the claim, the second surgical mechanical arm (the connected arm) is disabled by the dedicated relay, since the second surgical mechanical arm is “not in said user selection.” Again, in this hypothetical example, the first surgical mechanical arm was selected in step c).
Step e) of the claim recites that electrosurgical power is conducted via the power supply line to the connected motor unit. In this hypothetical example, the connected motor unit is the second motor unit. However, the second surgical mechanical arm was disabled in step d).
As such, it is not clear how power can be conducted to the motor unit of a disabled surgical mechanical arm.
For this reason, claim 37 is still considered indefinite. Clarification is required.
Conclusion
22. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bradford C. Blaise whose telephone number is (571)272-5617. The examiner can normally be reached on Monday - Friday 8 AM-5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linda Dvorak can be reached on 571-272-4764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Bradford C. Blaise/Examiner, Art Unit 3794