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 .
Continued Examination Under 37 CFR 1.114
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/02/2026 has been entered.
Response to Arguments
2. Applicant's arguments filed 06/02/2026 have been fully considered but they are not persuasive.
The Applicant argues that the use of “gripper” in the claims is not a substitute for “means” performing a function, and that it is rather used to define geometric reference points. The Examiner agrees that “gripper” is not being used as a means performing a function; however, “gripper” is still an indefinite term. Based on the art, a “gripper” is defined as an end effector or a manipulator for a surgical tool. However, the Applicant’s specification and figures appear to define this “gripper” not an end effector, but rather as a coupling element. A U.S.C. 112b rejection has been applied to this portion of the claims. For examination purposes, “gripper” is being interpreted as a coupling means.
The Applicant has also amended the claims to detail this slidable shaft where there is an upper shaft with a hollow and the lower shaft is slidable into this hollow. The Examiner notes that Un Je would cover this portion. Looking at Applicant’s Figure 3 and Un Je’s Figure 5, these figures show the same invention. Fig 5 of Un Je shows where the grippers themselves (125 and 115) are hollow and allow for sliding to happen. The only difference between the Applicant’s figures is that they have an extension/second shaft (see the circled portion below, Un Je on the left and Applicant on the right).
PNG
media_image1.png
458
278
media_image1.png
Greyscale
PNG
media_image2.png
820
568
media_image2.png
Greyscale
The Applicant’s specification does not detail any benefits of this configuration. Since Un Je’s also moves in the same way as the present application (See “M” on both figures which indicates their movement), this would be a mere duplication of parts, i.e. to merely duplicate the hollow shaft of grippers 115 or 125, or an obvious change in size/shape, i.e. to merely elongate/extend the hollow tube grippers so that they are longer, which is the exact same structure claimed and disclosed by applicant (see annotated figures above). It would have been obvious to one having ordinary skill in the art at the time the invention was made to include two shafts instead of one OR make the hollow shaft of grippers (115 or 125) longer, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art and/or changes in size/shape have been held to be obvious, especially in situations where there is no criticality or unexpected results to the claimed structure; see MPEP 2144.04.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claims 1-5 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “gripper” in claim 1 is used by the claim to indicate a coupling element (per the Examiner’s understanding of the specification) while the accepted meaning is an end effector or manipulator if a surgical tool (based on the art). The term is indefinite because the specification does not clearly redefine the term.
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.
4. Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Un Je (KR20180001153A).
In regards to claim 1, Un Je teaches a slave device comprising: a lower shaft and an upper shaft connected to the lower shaft in one degree of freedom (character 130);
a lower delta robot rotatably coupled to the lower shaft and configured to movably support the lower shaft, an upper delta robot configured to movably support the upper shaft and an upper delta robot rotatably coupled to the upper shaft and configured to movably support the upper shaft (reference characters 110 and 120 show the upper and lower delta robots; see also Par. 0069);
and a surgical instrument provided at a lower end of the lower shaft (Par. 0025 teaches a surgical device coupled to the point of action);
wherein the upper and lower delta robots are independently controllable relative to one another so as to cause the lower shaft and the upper shaft to slidably move relative to one another along the one degree of freedom (See Fig 5);
wherein a lower gripper central point is a point at which the lower shaft is fixed to a lower gripper, and an upper gripper central point is a point at which the upper shaft is fixed to an upper gripper (Fig 5 shows the grippers, 125 and 115, each having their own central point); and
wherein a distance between the lower gripper central point and the upper gripper central point is adjustable while the surgical instrument maintains a position separated from the lower gripper central point in an axial direction of the lower shaft (Fig 5 shows there being movement between the upper and lower grippers portions that would allow for their positions to be maintained).
Un Je does not explicitly teach wherein one of the lower shaft and the upper shaft includes a hollow and the other of the lower shaft and the upper shaft is slidable while being inserted into the hollow (Un Je shows there only being one shaft, however, the grippers themselves having a hollow that would allow for slidable connection).
However, Applicant’s specification does not detail any benefits of this configuration. Since Un Je’s also moves in the same way as the present application (See “M” on both figures which indicates their movement), this would be a mere duplication of parts, i.e. to merely duplicate the hollow shaft of grippers 115 or 125, or an obvious change in size/shape, i.e. to merely elongate/extend the hollow tube grippers so that they are longer, which is the exact same structure claimed and disclosed by applicant (see annotated figures above). It would have been obvious to one having ordinary skill in the art at the time the invention was made to include two shafts instead of one OR make the hollow shaft of grippers (115 or 125) longer, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art and/or changes in size/shape have been held to be obvious, especially in situations where there is no criticality or unexpected results to the claimed structure; see MPEP 2144.04.
In regards to claim 2, Un Je teaches the slave device of claim 1, wherein the lower shaft is configured to maintain a position relative to the lower shafe irrespective of a change in a distance between the lower shaft and the upper shaft in an axial direction of the lower shaft (Par. 0039 of Un Je teaches fixing the positions).
In regards to claim 3, Un Je teaches the slave device of claim 1, wherein each of the lower delta robot and the upper delta robot comprises: three support rods, three movement parts, each of the three movement parts configured to move in a longitudinal direction of each of the three support rods and three guide rods arranged in parallel with the three support rods and configured to guide movements of the three movement parts (Par. 0071 and Fig 5 of Un Je teaches and shows using multiple rods);
three arms configured to connect the three movement parts and a corresponding one of the lower and upper shafts (Par. 0067of Un Je teaches three arms).
In regards to claim 4, Un Je teaches the slave device of claim 3, wherein the three support rods of the lower delta robot are provided laterally side by side with and separated from the three support rods of the upper delta robot (Fig 5 of Un Je shows the support rids 111 and 121 being side by side)
In regards to claim 5, Un Je teaches the slave device of claim 1, wherein the surgical instrument comprises a surgical tip having a smaller thickness than the lower shaft and a rotation module which is placed at a lower end of the lower shaft and configured to rotate the surgical tip (Par. 0066 of Un Je teaches the surgical robot having a surgical instrument [140]. Fig5 of Un Je shows the instrument having a tip with a smaller thickness than the shaft).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SKYLAR LINDSEY CHRISTIANSON whose telephone number is (571)272-0533. The examiner can normally be reached Monday-Friday, 7:30-5:30 EST.
Examiner interviews are 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, Niketa Patel can be reached on (571) 272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.L.C./Examiner, Art Unit 3792
/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796
Prosecution Insights