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 .
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.
Notice of Amendment
In response to the amendment(s) filed on 1/15/26, amended claim(s) 11-13 is/are acknowledged. The following new and/or reiterated ground(s) of rejection is/are set forth:
Drawings
The drawings are objected to because newly introduced Figs. 11B introduces new matter into the disclosure. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11, 13, and 15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2021/0212728 to Greening.
For claim 11, Greening discloses a neurosurgical (Examiner’s Note: functional language/intended use, i.e., capable of) instrument (Abstract) comprising a rigid, straight outer tube (20) (Fig. 1) (para [0122]) (also see para [0123] and [0129]) and an inner tube (30) (Figs. 5-6) (para [0122]) with a rigid pre-curved body (33) (Fig. 12-14) (“pre-curved,” para [0163]) and a flexible (Examiner’s Note: Applicant’s specification providing support that the “flexible” characteristic is imparted by notches, see first full paragraph of Applicant’s specification as originally filed) distal segment (32) (Figs. 12-14) (see “grooves,” para [[0138]) monolithically fabricated from a single tubing of super-elastic Nickel Titanium Alloy (para [0149]), wherein the rigid body and the flexible distal segment do not overlap (see Figs. 12-14), wherein the outer tube and the inner tube are concentric at a proximal end of the neurosurgical instrument (as can be seen in Figs. 3-4 and 8), and the outer tube constrains the inner tube to maintain a straight configuration of the instrument upon complete withdrawal of the inner tube into the outer tube (as can be seen in Figs. 10-14) (para [0123]).
For claim 13, Greening further discloses wherein the rigid body and the flexible distal segment are fabricated from a medical grade material selected from Nickel Titanium and Stainless Steel (para [0149]).
For claim 15, Greening further discloses at least one end effector (34).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 12, 16, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greening in view of U.S. Patent Application Publication No. 2020/0015839 to Eastwood et al. (hereinafter “Eastwood”).
For claim 12, Greening does not expressly disclose wherein the flexible distal segment of the inner tube comprises at least one symmetric or asymmetric notch parameter selected from notch shape, notch pattern, and notch dimension, wherein the flexible distal segment is configured to bend with a 1-degree of freedom (DoF) or 2-DoF motion driven by actuation cables.
However, Eastwood teaches wherein a flexible distal segment comprises at least one symmetric or asymmetric notch parameter selected from a notch shape, notch pattern, and notch dimension (as can be seen in Fig. 3), wherein the flexible distal segment is configured to bend with a 1-degree of freedom (DoF) or 2-DoF motion (as can be seen in Fig. 3).
It would have been obvious to a skilled artisan to modify Greening wherein the flexible distal segment of the inner tube comprises at least one symmetric or asymmetric notch parameter selected from notch shape, notch pattern, and notch dimension, wherein the flexible distal segment is configured to bend with a 1-degree of freedom (DoF) or 2-DoF motion driven by actuation cables, in view of the teachings of Eastwood, for the obvious advantage of having control over flexibility in a particular direction or directions.
For claim 16, Greening does not expressly disclose wherein the at least one end effector is a biopsy forceps, scissors, a grasping forceps, a dissecting forceps, a suction tool, an irrigation tool, or an endoscopic camera.
However, Eastwood teaches wherein the at least one end effector is a biopsy forceps, scissors, a grasping forceps, a dissecting forceps, a suction tool, an irrigation tool, or an endoscopic camera (Fig. 15) (para [0127]).
It would have been obvious to a skilled artisan to modify Greening wherein the at least one end effector is a biopsy forceps, scissors, a grasping forceps, a dissecting forceps, a suction tool, an irrigation tool, or an endoscopic camera, in view of the teachings of Eastwood, as another means by which to dissect the ovarian wall to be able to harvest eggs in the ovary, which is what Greening wants to do.
For claim 22, Greening does not expressly disclose wherein the segment features asymmetric notch patterns and dimensions, with the asymmetric notches on one side of the segment having different notch dimensions compared to the asymmetric notches on the opposite side of the segment.
However, Eastwood teaches wherein the segment features asymmetric notch patterns and dimensions (see “Asymmetric” in Fig. 3), with the asymmetric notches on one side of the segment having different notch dimensions compared to the asymmetric notches on the opposite side of the segment (see “Serially Stacked” in Fig. 3).
It would have been obvious to a skilled artisan to modify Greening wherein the segment features asymmetric notch patterns and dimensions, with the asymmetric notches on one side of the segment having different notch dimensions compared to the asymmetric notches on the opposite side of the segment, in view of the teachings of Eastwood, for the obvious advantage of varying the flexibility, including its directionality, along an axial length of the distal segment.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greening in view of U.S. Patent Application Publication No. 2021/0223123 to Lai et al. (hereinafter “Lai”) and U.S. Patent Application Publication No. 2021/0100576 to Pansky et al. (hereinafter “Pansky”).
For claim 18, Greening does not expressly disclose flexible sheaths made from metal or polymer, wherein the sheaths are constrained by Nitinol wire, and that serve as actuation tendons or rod routing channels, and comprising at least one sensor within the lumen of the instrument, wherein the at least one sensor comprise at least one Fiber Bragg Grating (FBG).
However, Lai teaches sheaths (101) (Fig. 6) (para [0045]) (also see para [0013]), wherein the sheaths are constrained by Nitinol wire (211) (Fig. 10a) (para [0064]) (also see para [0003]), and comprising at least one sensor within the lumen of the instrument (as can be seen in Fig. 6), and hold sensors within the lumen of the instrument (107a/b) (as can be seen in Figs. 6 and 8) (para [0053]-[0054]), wherein the at least one sensor comprise at least one Fiber Bragg Grating (FBG) (para [0053]).
Additionally, Pansky teaches sheaths made from metal or polymer (para [0216]).
It would have been obvious to a skilled artisan to modify Eastwood to include flexible sheaths made from metal or polymer, wherein the sheaths are constrained by Nitinol wire, and that serve as actuation tendons or rod routing channels, and comprising at least one sensor within the lumen of the instrument, wherein the at least one sensor comprise at least one Fiber Bragg Grating (FBG), in view of the teachings of Lai and Pansky, for the obvious advantage of being able to measure strain in Greening’s system and metal or polymer is a suitable material by which to make a sheath to protect Greening’s tubular structure.
Response to Arguments
Applicant’s arguments filed 1/15/26 have been fully considered.
With respect to the objection to the drawings, the objection to Fig. 11D has been removed. The objection to Fig. 11B is maintained because the new matter of the size, location, shape, geometry, position, orientation, and introduction of the FBG sensor is new matter.
With respect to the 112 rejections, Applicant’s amendments and arguments are persuasive and thus the rejections are withdrawn.
With respect to the 102 rejection(s), Applicant’s arguments have been considered but are moot because the arguments do not address the new grounds of rejection necessitated by Applicant’s amendments presented in the response filed 1/15/26.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791