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
1. Applicant’s arguments, filed 06/20/2025, with respect to the rejection(s) of the claim(s) under U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Blanco (US 20200315729 A1).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be 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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be 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.
2. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term 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 always linked 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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of 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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: The “robotic arm engagement feature” of claim 7 is being interpreted as a circular projection (Par. 0092 of specification).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
3. Claim(s) 1-2, 10, 13, 17, 20-21, 26-27, 34, 38, 49-50, 137, and 139-140 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chin (US 20230218353 A1) in view of Britton (US 20190167356 A1) and in further view of Blanco (US 20200315729 A1)
In regards to claim 1, Chin discloses an end effector connector (Par. 0008 discloses connecting end effectors to surgical robots), comprising:
a housing configured to receive an end effector (Fig 4 and Par. 0047 teach a housing [32] to receive an end effector/surgical tool [36]) ; and
a connector arm configured to releasably couple the housing to a robotic arm (Fig 4 shows the connecting arm [55] connecting the housing [32] to the robotic arm [50]. Par. 0047 discloses the arm can be detached from the housing) the connector arm comprising:
a proximal portion (Fig 4 shows the connecter arm [55] having a proximal and distal end); and
a distal portion comprising a housing release mechanism configured to manually release the housing from the connector arm (Par. 0047 discloses there is a release mechanism for the arm and housing).
While the art of Chin teaches a connector, they do not explicitly teach the connector being releasably attached to the robotic arm itself. However, in the same field of endeavor, Britton teaches a robotic arm assembly (Abstract) wherein there is a connector that is releasably attached to the robotic arm itself (Par. 0100) in order to releasably secure different elements of the assembly (Par. 0100; regarding the Applicant’s arguments that it would not make sense to modify the art of Chen to include a connector that is releasably attached to the arm itself, the Examiner respectfully disagrees. The Applicant points to paragraphs of Chin where they disclose electrical connections being present through the arm and connector. While the Examiner acknowledges these paragraphs, they do point out that this continuous electrical connection is not required, but rather only exists in some embodiments of the invention. It is not ever mentioned to be a crucial aspect of the overall invention.)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the art of Chin and modified it by having the system comprise a connector that releasably attaches to the arm as well, as taught and suggested by Britton, in order to releasably secure different elements of the assembly.
The combined teachings of Chin and Britton do not disclose a handle configured to be held by an operator's hand, wherein the distal portion of the connector arm defines a first longitudinal axis and the handle of the connector arm defines a second longitudinal axis, and wherein the first longitudinal axis and the second longitudinal axis are non-parallel.
However, in the same field of endeavor, Blanco discloses a surgical robot (Abstract) wherein there is a handle [200] connected to a connector [132] and is held by the user, creating a non-parallel arrangement between the handle and the connector (Par. 0054 and Fig 2) in order to allow a clinician to use a custom-made handle assembly and/or different kinds of handle assemblies for different surgical applications (Par. 0054).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the art of Chin and modified it by having the system comprise a handle connected to the connector, as taught and suggested by Blanco, in order to allow a clinician to use a custom-made handle assembly and/or different kinds of handle assemblies for different surgical applications (Par. 0054 of Blanco).
In regards to claims 2 and 13, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, wherein the proximal portion of the connecter arm comprises a magnetic portion (Fig 4 of Chin shows the magnetic based connector arm [55] at the proximal portion of the arm [50]; Par. 0047 of Chin discloses it can be magnetic).
In regards to claim 10, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, wherein the proximal portion comprises a rotational alignment feature (Par. 0072 of Chin discloses a support element for maintaining alignment).
In regards to claim 17, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, wherein the proximal portion defines a third longitudinal axis and the housing defines a fourth longitudinal axis, wherein the third longitudinal axis and the fourth longitudinal axis are non-parallel (Fig 4 of Chin shows the housing portion [32] being along a longitudinal axis and the magnetic coupling [55] being along a non-parallel longitudinal axis).
In regards to claim 20, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 17, wherein the end effector received in the housing defines a fifth longitudinal axis parallel to the second longitudinal axis (Fig 4 of Chin shows the end effector [36] defining a third longitudinal axis).
In regards to claim 21, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 20, wherein a second angle between the third longitudinal axis and the fourth longitudinal axis is up to about 40 degrees (Fig 4 of Chin shows there being an angle between the first and second axis, see below. Since “about 40 degrees” has not been defined, the angle shown below would meet this claim criteria).
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In regards to claim 26, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 24, wherein the proximal portion defines a third longitudinal axis and, wherein the third longitudinal axis and the fifth longitudinal axis are non-parallel (Fig 4 of Chin shows the magnetic coupling [55] being along a non-parallel longitudinal axis and the handle [32] defining a second longitudinal axis, where these are not parallel).
In regards to claim 27, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 26, wherein a third angle between the first longitudinal axis and the fourth longitudinal axis is up to about 75 degrees (Since “about 75 degrees” has not been defined, the angle show below would meet this claim criteria)
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In regards to claim 34, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, wherein the housing release mechanism comprises a first portion coupled to the connector arm and a second portion coupled to the housing (Fig 4 of Chin shows the release mechanism [55] connected to the arm [50] and the housing [32]).
In regards to claim 38, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 34, wherein the housing release mechanism comprises a rotational alignment feature configured to inhibit rotation of the first portion relative to the second portion Par. 0072 of Chin discloses a support element for maintaining alignment/not allowing for rotation).
In regards to claim 49, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, wherein a distal portion of the housing is configured to receive the end effector (Fig 4 of Chin shows the housing [32] receiving the end effector [36] at its distal end)
In regards to claim 50, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, wherein a proximal portion of the housing is coupled to a lateral sidewall of the housing release mechanism (Fig 4 of Chin, elements [55] and [32]).
In regards to claim 137, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 10, wherein the rotational alignment feature comprises one or both of a circular projection configured to mate with a circular recess of the robotic arm and a linear projection configured to mate with a linear recess of the robotic arm (Fig 8 of Chin shows the support member, i.e. rotational alignment feature [67] being linear)
In regards to claim 139, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, wherein the proximal portion comprises a channel configured to receive one or more lead wires for electrically coupling the robotic arm to the end effector (Par. 0056 of Chin teaches a hollow lumen, i.e. channel, that can allow for connector cables or wires to pass through)
In regards to claim 140, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, wherein the end effector comprises one or more of a visualization device, a grasper, a retractor, a magnetic positioning device, a sensor, an intracavity device, a delivery device, a stapler, a clip applier, and an electrocautery hook (Par. 0029 of Chin teaches the end effector being a surgical device, which can be a discectomy surgical devices, i.e. graspers).
4. Claim(s) 3, 5, 7, and 138 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chin, Britton, and Blanco in view of Shelton (US 20200405403 A1).
In regards to claims 3, 5, and 7, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, except for wherein the proximal portion is configured to magnetically couple the arm to the robot through a sterile drape and wherein a first side of the magnetic portion is configured to mechanically and magnetically attach to a flange of the robot.
While Chin discloses a magnetic coupling system, they do not teach there being a sterile drape or a flange between the coupling systems. However, in the same field of endeavor, Shelton teaches a surgical robot comprising an effector and arm (Abstract) wherein between the coupling members there is a sterile drape and a flange (Par. 0679-0680 and 1126-1127; a flange is a circular projection used to increase strength and reduce force therefore covering the subject matter of claim 7) in order to create a sterile barrier and increase strength of the coupling.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Chin, Britton, and Blanco and modified them by having the device comprise a sterile barrier and flanges, as taught and suggested by Shelton, in order to create a sterile barrier and increase strength of the coupling.
In regards to claim 138, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 13, except for wherein the magnetic release mechanism comprises one or more cams coupled to a circumference of the proximal portion, and wherein the one or more cams are configured to push the proximal portion away from the robotic arm.
However, in the same field of endeavor, Shelton teaches a surgical robot comprising an effector and arm (Abstract) wherein the system utilizes cams (Par. 0960) in order to allow system to compensate for frictional loss within the drive train itself. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Chin, Britton, and Blanco and modified them by having the device comprise cams, as taught and suggested by Shelton, in order to allow system to compensate for frictional loss within the drive train itself (Par. 0960 of Shelton).
5. Claim(s) 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chin, Britton, and Blanco and in view of Adams (US 20190125468 A1)
In regards to claim 41, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, except for wherein the housing release mechanism comprises a switch configured to release the housing from the connector arm. However, in the same field of endeavor, Adams discloses a robotic arm (Abstract) with a detachable arm that can be detached via a switch (Par. 0098) in order to allow the user to perform manual release.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Chin, Britton, and Blanco and modified them by having the device comprise a release switch, as taught and suggested by Adams, ) in order to allow the user to perform manual release.
6. Claim(s) 56 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chin, Britton, and Blanco and in view of Troxell (US 20200367873 A1)
In regards to claim 56, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, wherein the housing comprises a housing handle (Par. 0057). Chin does not disclose the housing handle defines a handle longitudinal axis and a handle lateral axis, and the housing comprises a first stiffness along the handle longitudinal axis and a second stiffness along the handle lateral axis, the first stiffness more than the second stiffness.
However, in the same field of endeavor, Troxell discloses a surgical robotic arm with an end effector (Abstract) wherein there is a handle that has a first and second stiffness (Par. 0023, Fig 4 element [147]; The Applicant discloses in their specification that the varying stiffness is a result of the handle having a longer length than width, which is show by Troxell, therefore covering this claimed aspect) in order to allow for more control of the system.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Chin, Britton, and Blanco and modified them by having the device comprise a handle with varying stiffness, as taught and suggested by Troxell, in order to allow for more control of the system.
7. Claim(s) 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chin, Britton, and Blanco and in view of Quaid (US 20060142657 A1)
In regards to claim 58, the combined teachings of Chin, Britton, and Blanco disclose the end effector connector of claim 1, except for wherein the housing defines an aperture configured for access to the end effector. However, in the same field of endeavor, Quaid discloses a surgical robot (Abstract) wherein there is an aperture to receive an end effector (Par. 0118) in order to allow for the end effector/tool to be releasable attached to the device.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Chin, Britton, and Blanco and modified them by having the device comprise an aperture to receive the end effector, as taught and suggested by Quaid, in order to allow for the end effector/tool to be releasable attached to the device.
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.
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/S.L.C./Examiner, Art Unit 3792
/MICHAEL W KAHELIN/Primary Examiner, Art Unit 3792
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