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 .
Response to Arguments
Applicant's arguments filed 12/08/2026 have been fully considered but they are not persuasive.
Applicant argues that one of ordinary skill in the art would have no motivation to modify Swarup’s shaft to include the articulation portion of Marcyzk. Applicant explains that Swarup’s instrument is already designed for various degrees of freedom and controlled by the robotic surgical manipulator system to translate and rotate relative to the tool base. The proposed modification would require substantial and complicated redesign of multiple components of Swarup to allow the articulation disclosed by Marcyzk.
The examiner respectfully disagrees. In response to applicant's argument that above, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Both Swarup and Marcyzk utilize cables to steer and articulate the device and Marcyzk further teaches that the system may be used as a component in a robotic surgical device as well (para. 0131 of Marcyzk). Swarup discloses that the cables are used to articulate the mechanical wrist of the device relative to the shaft (para. 0120) and Marcyzk teaches cables used to articulate the linkages relative to the shaft (para. 0117 of Marcyzk). Furthermore, the linkages of Marcyzk provide greater degrees of freedom via. the linkages that are steered by cables similarly to the wrist mechanism of Swarup to provide the device with Swarup with increased steering capabilities as provided in Marcyzk (para. 0014, 0105 of Marcyzk).
Applicant argues that both Swarup and Marcyzk disclose articulation portions at a distal end of a non-articulating portion of the shaft. Therefore, one of ordinary skill in the art if motivated to combine Swarup with Marcyzk would replace Swarup’s mechanical wrist with the articulating portion of Marcyzk.
The examiner respectfully disagrees. The mechanical wrist of Swarup allows articulation of the jaws of the end effector relative to the most distal end of the shaft (Figs. 5A-B, para. 0119, 0145 of Swarup) whereas Marcyzk teaches linkages more proximal to the distal most end of the shaft (see Figs. 16-17 of Marcyzk) such that a distal portion of the shaft has greater flexibilty. Therefore, one of ordinary skill in the art would not replace the wrist of Swarup but would modify the distal end of the shaft to include the joint structure of Marcyzk such that the wrist of Swarup is in between the end effector and the joint structure as a way to increase the flexibility of the shaft along a greater length of the shaft relative to the wrist portion (Figs. 17-18, para. 0105 of Marcyzk).
Applicant argues that the modification of incorporating Marcyzk’s articulating portion to the shaft of Swarup would not result in locating Swarup’s nonconductive portion 456 (i.e. the interpreted electrically insulative portion) within Marcyzk’s articulating portion 218. Instead, the nonconductive portions 456 would be located proximal to the articulating portion and within the rigid shaft 416 of Swarup. Such a combination would provide no motivation and appears to be based on an improperly reliance on hindsight.
The examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, Swarup discloses a shaft comprising cables C (interpreted as the claimed actuation member) extending along the entire length of the shaft (see Fig. 4A which illustrates the shaft 416 and encircling of a section of the shaft that defines Fig. 4G). Fig. 4G illustrates the actuation member comprising the first electrically conductive length portion 438 which extends to the wrist portion 850 and end effectors 812A-B (see Fig. 9 which illustrates this connection, para. 0120, 0127 discloses that the cables extend to the region of the wrist), the second electrically conductive length portion 437 which extend to drive system 800 (see Fig. 9 which illustrates this connection, para. 0125, 0162 disclose that the cables extend to the drive system 800/tool base 412), and the electrically insulative length portion 433, 456 disposed between and connecting the first electrically conductive length portion 438 and the second electrically conductive length portion 437 as required by the claim (para. 0127). As supported by Figs. 4A, 4G, and 9, the electrically insulative length portion 433, 456 extends along the cables in the shaft from the distal end of the shaft, adjacent to the wrist mechanism, to the proximal end of the shaft, adjacent the drive system/tool base. This is supported by para. 0132 which states that “Note that the connections described above provide an insulated continuous electrical path from the base connector 474 to the end effectors 414A-414B protected from tissue contact except at the jaw portions thereof”.
Marcyzk teaches a shaft 216 comprising joint structure 218 extending adjacent to an end effector 212 (Fig. 14, para. 0103). The joint structure comprises a first joint, a second joint, and a tube portion connecting between the first joint and the second joint as required by the claim (see annotated Fig. 14 below, para. 0103). Marcyzk further teaches that the joint structure includes an electrically insulative portion 414 located in the tube portion and distal to the second joint (Figs. 14-15, para. 0110 states “The central guide tube 414 is dimensioned for reception within proximal portion 220 of the shaft 216 310, and may extend distally there from into the central lumen 218e defined in the links 218a and 218b” such that at least a portion of the electrically insulative portion extends distal to the second joint).
In combination with Swarup, Swarup discloses the electrically insulative portion extends along the entire length of the shaft such that the electrically insulative portion of Swarup would also be located in the tube portion and distal to the second joint of Marcyzk since the electrically insulative portion of Swarup extends up to the wrist mechanism. As stated above, the wrist of Swarup would not be replaced but the distal end of the shaft would be modified to include the joint structure of Marcyzk such that the wrist of Swarup is in between the end effector and the joint structure as a way to increase the flexibility of the shaft along a greater length of the shaft relative to the wrist portion (Figs. 17-18, para. 0105 of Marcyzk). Marcyzk further teaches a benefit for an electrically insulative portion to be located in the tube portion of the joint structure in order to minimize stretching during articulation (para. 0111 of Marcyzk). Therefore, the limitation is taught and the rejection is maintained.
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Annotated Fig. 14 of Marcyzk
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) 42-43, 45-46, 53, 55, 59, and 61-65 are rejected under 35 U.S.C. 103 as being unpatentable Swarup et al. (US 20090088775) [hereinafter Swarup] in view of Marczyk et al. (US 20130123783) [hereinafter Marcyzk].
Regarding claim 53, Swarup discloses an instrument 400 (Figs. 4A-12B, para. 0117-0120, 0126-0127), comprising:
a shaft 416 having a proximal end (interpreted as end near tool base 412; Figs. 4A, 4C, para. 0117) and a distal end (interpreted as end near wrist 402/850; Figs. 4A, 9, para. 0117, 0139);
an end effector 414A-B/812A-B coupled to and extending in a direction distally away from the distal end of the shaft (Figs. 4A, 9, para. 0117, 0136-0137);
a force transmission mechanism 800 coupled to a proximal region of the shaft 416 (Figs. 4C, 8-12B, para. 0117, 0126, 0156-0158) and
an actuation member C extending through the shaft and being operably coupled to the force transmission mechanism 800 at one end of the actuation member C and to a moveable component 402/850 of the instrument 400 at an opposite end of the actuation member C (Figs. 4A, 9, para. 0117, 0126-0127, 0136-0137, 0156-0158), wherein the actuation member comprises:
a first electrically conductive length portion (interpreted as cable portions 438 that extend to wrist portion 850 and end effectors 812A-B; Figs. 4G, 9, para. 0126-0128, 0136-0137);
a second electrically conductive length portion (interpreted as cable portions 437 that extend to drive system 800) positioned proximally relative to the first electrically conductive length portion (Figs. 4G, 9, para. 0126-0128, 0136-0137); and
an electrically insulative length portion 433, 456 disposed between and connecting the first electrically conductive length portion and the second electrically conductive length portion (Figs. 4G, 9, para. 0127, 0136-0137), and
wherein the electrically insulative length portion 433, 456 electrically isolates the first electrically conductive length portion 438 and the second electrically conductive length portion 437 from each other (para. 0127).
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Annotated Fig. 9 of Swarup
However, Swarup fails to disclose a joint structure connected to the distal end of the shaft and coupling the end effector to the distal end of the shaft, the joint structure configured to articulate relative to the distal end of the shaft and alter a position of the end effector relative to the shaft, wherein the joint structure comprises a first joint, a second joint, and a tube portion connecting and between the first join and the second joint, and wherein the electrically insulative length portion is located in the tube portion and distal to one of the first joint and the second joint.
Marczyk in the same field of endeavor of surgical grasping instruments teaches a joint structure 218 connected to a distal end of the shaft 220 and coupling an end effector 212 to the distal end of the shaft 220 (Fig. 14, para. 0103), the joint structure 218 configured to articulate relative to the distal end of the shaft 220 and alter a position of the end effector 218 relative to the shaft 220 (Figs. 16-18, para. 0103, 0105), wherein the joint structure 218 comprises a first joint, a second joint, and a tube portion connecting and between the first join and the second joint (see annotated Fig. 14 of Marcyzk below), and wherein an electrically insulative length portion 414 is located in the tube portion and distal to one of the first joint and the second joint (para. 0110-0111).
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Annotated Fig. 14 of Marcyzk
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to modify the distal end of the shaft in Swarup to include the first joint, second joint, and tube portion of Marcyzk in order to provide the device steering capabilities, thereby enhancing maneuverability of the device during use (para. 0014, 0105 of Marcyzk).
Regarding claim 42, modified Swarup discloses wherein the electrically insulative length portion 433, 456 is respectively coupled to the proximal end of the first electrically conductive length portion 438 and the distal end of the second electrically conductive length portion 437 by a crimp (para. 0127 of Swarup).
Regarding claim 43, modified Swarup discloses wherein one or both of the first 438 and second electrically conductive portions 437 comprise flexible cables (Figs. 4G, 9, para. 0127 of Swarup).
Regarding claim 46, modified Swarup discloses all of the limitations set forth above in claim 53. Modified Swarup further discloses that the electrically insulative portion is formed of non-conductive material (para. 0127, 0142 of Swarup). However, Modified Swarup fails to disclose wherein the electrically insulative length portion comprises fiberglass.
Para. 0141 of Swarup further discloses that the shaft may be formed of a non-conductive material such as electrical grade fiberglass/vinyl ester composite material.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the non-conductive material of the electrically insulative portion in Swarup to include the non-conductive fiberglass material as taught in para. 0141 of Swarup since it is well within the general skill of one skilled in the art to select a known material based on its suitability for its intended use. (In re Leshin 125 USPQ 416; MPEP 2144.07).
Regarding claim 45, modified Swarup discloses wherein the fiberglass is pultruded (see note below).
Note: The claimed limitation “wherein the fiberglass is pultruded” is being treated as a product by process limitation; that is the product-by-process limitation is limiting only in so far as the final structure necessitated by the process. The final structure necessitated by a pultruded fiberglass is a non-conductive material formed of fiberglass. Since the electrically insulative length portion of modified Swarup is formed of fiberglass, it is considered to meet this product-by-process limitation. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 USC 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. MPEP 2113.]
Regarding claim 55, modified Swarup discloses wherein the joint structure forms a parallel motion linkage mechanism (Figs. 16-18, para. 0103, 0105 of Marcyzk; The examiner notes that para. 0035 of the instant application states that a combination of joint structures that impart one or more degrees of freedom to the end effector may be referred as a parallel motion linkage mechanism).
Regarding claim 59, modified Swarup discloses wherein the first electrically conductive length portion 438 comprises a rod member (a cable of the cable portion 438 is interpreted as a rod member, para. 0127 of Swarup; see note below), the second electrically length portion comprises a flexible cable (para. 0127 of Swarup), and the electrically insulative length portion is secured to a proximal end of the flexible cable (Figs. 4G, 9, para. 0127 of Swarup).
Note: Under broadest reasonable interpretation “rod member” is defined as “a slender bar (as of wood or metal)” (see attached Merriam-Webster Dictionary definition). Since the first electrically conductive length portion 438 of Swarup comprise slender tubes formed of metal, the first electrically conductive length portion 438 of modified Swarup meets the limitation.
Regarding claim 61, modified Swarup discloses wherein the first electrically conductive length portion is a first flexible portion (para. 0127 of Swarup discloses that the cables are made of metal such as Tungsten or stainless steel, to provide sufficient bendability. Therefore, the first electrically conductive length portion formed of said material is a first flexible portion),
wherein the second electrically conductive length portion is a second flexible portion (para. 0127 of Swarup discloses that the cables are made of metal such as Tungsten or stainless steel, to provide sufficient bendability. Therefore, the first electrically conductive length portion formed of said material is a first flexible portion), and
wherein the electrically insulative length portion is rigid (para. 0127 of Swarup).
Regarding claim 62, modified Swarup discloses further comprising an articulatable wrist portion 402 (Figs. 4A, para. 0115, 0117, 0119 of Swarup). The combination of Swarup in view of Marcyzk would result in a product wherein the wrist portion 402 of Swarup (Figs. 4A, para. 0115, 0117, 0119 of Swarup) would be coupling the end effector 414A-B/812A-B of Swarup (Figs. 4A, para. 0117 of Swarup) to the joint structure 218 of Marcyzk (Fig. 14, para. 0103 of Marcyzk).
Regarding claim 63, modified Swarup discloses wherein the first and second joints are configured to articulate relative to the shaft in pitch (Fig. 16 of Marcyzk) and yaw (Figs. 17-18, para. 0105 of Marcyzk).
Regarding claim 64, modified Swarup discloses wherein the joint structure 218 is configured to articulate relative to the shaft 220 and move the end effector 212 laterally relative to the shaft while maintaining an orientation of the end effector 212 in pitch and yaw relative to the shaft 220 (Figs. 16-18, para. 0105 of Marcyzk).
Regarding claim 65, modified Swarup discloses wherein the shaft 220 is non-jointed (as taught by Marcyzk, Fig. 14, para. 0103).
Claim(s) 53 and 66-67 are rejected under 35 U.S.C. 103 as being unpatentable Swarup et al. (US 20090088775) [hereinafter Swarup] in view of Cooper (US 20110196419 ).
Alternate claim 53 rejection to reject claims 66 and 67
Regarding claim 53, Swarup discloses an instrument 400 (Figs. 4A-12B, para. 0117-0120, 0126-0127), comprising:
a shaft 416 having a proximal end (interpreted as end near tool base 412; Figs. 4A, 4C, para. 0117) and a distal end (interpreted as end near wrist 402/850; Figs. 4A, 9, para. 0117, 0139);
an end effector 414A-B/812A-B coupled to and extending in a direction distally away from the distal end of the shaft (Figs. 4A, 9, para. 0117, 0136-0137);
a force transmission mechanism 800 coupled to a proximal region of the shaft 416 (Figs. 4C, 8-12B, para. 0117, 0126, 0156-0158) and
an actuation member C extending through the shaft and being operably coupled to the force transmission mechanism 800 at one end of the actuation member C and to a moveable component 402/850 of the instrument 400 at an opposite end of the actuation member C (Figs. 4A, 9, para. 0117, 0126-0127, 0136-0137, 0156-0158), wherein the actuation member comprises:
a first electrically conductive length portion (interpreted as cable portions 438 that extend to wrist portion 850 and end effectors 812A-B; Figs. 4G, 9, para. 0126-0128, 0136-0137);
a second electrically conductive length portion (interpreted as cable portions 437 that extend to drive system 800) positioned proximally relative to the first electrically conductive length portion (Figs. 4G, 9, para. 0126-0128, 0136-0137); and
an electrically insulative length portion 433, 456 disposed between and connecting the first electrically conductive length portion and the second electrically conductive length portion (Figs. 4G, 9, para. 0127, 0136-0137), and
wherein the electrically insulative length portion 433, 456 electrically isolates the first electrically conductive length portion 438 and the second electrically conductive length portion 437 from each other (para. 0127).
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Annotated Fig. 9 of Swarup
However, Swarup fails to disclose a joint structure connected to the distal end of the shaft and coupling the end effector to the distal end of the shaft, the joint structure configured to articulate relative to the distal end of the shaft and alter a position of the end effector relative to the shaft, wherein the joint structure comprises a first joint, a second joint, and a tube portion connecting and between the first join and the second joint, and wherein the electrically insulative length portion is located in the tube portion and distal to one of the first joint and the second joint.
Cooper in the same field of endeavor of surgical grasping instruments teaches a joint structure 1800 connected to a distal end 1112 of the shaft 210 and coupling an end effector 750 to the distal end 1112 of the shaft 210 (Fig. 18, para. 0075), the joint structure 1800 configured to articulate relative to the distal end of the shaft 210 and alter a position of the end effector 750 relative to the shaft 210 (Fig. 18, para. 0075), wherein the joint structure 1800 comprises a first joint, a second joint, and a tube portion connecting and between the first join and the second joint (see annotated Fig. 18 of Cooper below).
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Annotated Fig. 18 of Cooper
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to modify the distal end of the shaft in Swarup to include the first joint, second joint, and tube portion of Cooper in order to provide greater lateral flexibility and articulation to the shaft (para. 0067 and 0075 of Cooper).
The combination of Swarup in view of Cooper would result in a product wherein the electrically insulative length portion of Swarup is located in the tube portion of Cooper and distal to the second joint of Cooper since Swarup discloses the electrically insulative portion extends along the entire length of the shaft up to the wrist mechanism such that the electrically insulative portion of Swarup would also be located in the tube portion and distal to the second joint of Cooper (Figs. 4A, 4G, and 9, para. 0120, 127, and 0132 of Swarup).
Regarding claim 66, modified Swarup discloses wherein the first and second joints of are configured to articulate relative to the shaft while the electrically insulative length portion in the tube portion remains straight (see annotated Fig. 18 of Cooper above which illustrates the first and second joints articulating relative to the shaft 210 while the tube portion remains unbended and therefore straight).
Regarding claim 67, modified Swarup discloses wherein the tube portion between the first joint and the second joint is non-jointed (see annotated Fig. 18 of Cooper above).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 LAUREN DUBOSE whose telephone number is (571)272-8792. The examiner can normally be reached Monday-Friday 7:30am-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached on 571-272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN DUBOSE/Examiner, Art Unit 3771
/SARAH A LONG/Primary Examiner, Art Unit 3771