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 .
Election/Restrictions
Applicant’s election without traverse of Species B in the reply filed on 7/28/25 is acknowledged.
Examiner notes that Applicants indicated this would cover claims 1, 5-11 and 16-18, Examiner agrees. Claims 8-10 and 16-18 are specific to the elected species while the additional 1, 5-7 and 11 as currently claimed are generic to the locking mechanism species.
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.
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:
“Instrument drive unit” in claims 1, 8-10 see [0053], [0055]-[0057], [0059]
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
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 1, 5-8, 11, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/205311 to Kapadia et al. (hereinafter Kapadia) in view of WO 2017/209695 to Penny et al. (hereinafter Penny). Both references are recited in the IDS dated 6/29/22.
Regarding Claim 1, an interpretation of Kapadia discloses a robotic surgical assembly, comprising:
an instrument drive unit configured to drive operations of a surgical instrument (instrument drive unit 110 Fig. 2, [0170]-[0171]); and
a carriage configured to be slidably coupled to a robotic arm and to support the instrument drive unit (carriage 42 Figs. 2, 24, [0176]-[0177]), the carriage including:
a drive assembly having:
a motor (motor 44 Fig. 24, [0176]);
a pulley operably coupled to the motor (pulley 118 Fig. 24, [0176]); and
a drive belt coupled to the pulley and configured to be operably coupled to the surgical instrument, such that the surgical instrument rotates in response to a rotation of the pulley (drive belt 122 Fig. 24, [0171], [0176]-[0177] see also [0198], [0313]); and
An interpretation of Kapadia may not explicitly disclose a locking assembly configured to selectively lock the drive assembly to prevent rotation of the surgical instrument
However, in the same field of endeavor (medical robotic systems), Penny teaches a locking assembly configured to selectively lock the drive assembly to prevent rotation of the surgical instrument (a "locking mechanism 1218" (p. 30, 31 ), which is arranged to "lock the rotation of the base" (p. 30, I. 30)).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the system of Kapadia with a driving belt, pulley and motor to include a locking mechanism as recited by Penny because it is combining prior art (combining in the locking mechanism as recited by Penny to the system of Kapadia) elements according to known methods to yield predictable results of locking the rotation of the instrument.
Regarding Claim 5, an interpretation of Kapadia further discloses wherein the instrument drive unit includes: a housing configured to be rotationally fixed relative to the carriage ([0178], [0198], Figs. 2, 24 see also Figs. 28-29); and a motor pack rotatably supported in the housing ([0198]).
Regarding Claim 6, an interpretation of Kapadia further discloses wherein the motor pack is configured to non-rotatably couple to the surgical instrument ([0171], [0198], Figs. 2, 24).
Regarding Claim 7, an interpretation of Kapadia further discloses wherein the drive belt is configured to be non-rotatably coupled to the motor pack ([0171], [0198], Figs. 2, 24), such that the motor pack and the surgical instrument rotate about a longitudinal axis defined by the surgical instrument upon rotation of the pulley ([0171], [0198], Figs. 2, 24).
Regarding Claim 11, an interpretation of Kapadia discloses a robotic surgical system ([0007] "a robotic surgical system is provided"), comprising:
a surgical instrument defining a longitudinal axis (surgical instrument 200 Fig. 2, [0170], [0173]);
an instrument drive unit configured to transmit rotational forces to the surgical instrument while the surgical instrument is coupled to the instrument drive unit, the instrument drive unit having a motor pack configured to non-rotatably couple to the surgical instrument (instrument drive unit 110 Fig. 2, [0086], [0170]-[0171], [0198] see also [0313]); and
a carriage supporting the instrument drive unit and the surgical instrument while the surgical instrument is coupled to the instrument drive unit (carriage 42 Fig. 2, [0176]-[0177]), the carriage including:
a back member (rear shell portion 60a Fig. 2, [0177]);
a housing extending from the back member (annular shell portion 60b Fig. 2, [0177]);
a drive assembly having:
a motor supported in the back member (motor 44 Fig. 24, [0176]);
a pulley supported in the housing and operably coupled to the motor (pulley 118 Fig. 24, [0176]); and
a drive belt supported in the housing and coupled to the pulley, the drive belt being configured to non-rotatably couple to the motor pack, such that the surgical instrument rotates in response to a rotation of the pulley (drive belt 122 Fig. 24, [0171], [0176]-[0177] see also [0198], [0313]).
An interpretation of Kapadia may not explicitly disclose a locking assembly configured to selectively lock the drive assembly to prevent rotation of the surgical instrument
However, in the same field of endeavor (medical robotic systems), Penny teaches a locking assembly configured to selectively lock the drive assembly to prevent rotation of the surgical instrument (a "locking mechanism 1218" (p. 30, 31 ), which is arranged to "lock the rotation of the base" (p. 30, I. 30)).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the system of Kapadia with a driving belt, pulley and motor to include a locking mechanism as recited by Penny because it is combining prior art (combining in the locking mechanism as recited by Penny to the system of Kapadia) elements according to known methods to yield predictable results of locking the rotation of the instrument.
Claim Rejections - 35 USC § 103
Claim(s) 1, 8, 11, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kapadia in view of US 20220186831 to Loui et al. (hereinafter Loui).
Regarding Claim 1, an interpretation of Kapadia discloses a robotic surgical assembly, comprising:
an instrument drive unit configured to drive operations of a surgical instrument (instrument drive unit 110 Fig. 2, [0170]-[0171]); and
a carriage configured to be slidably coupled to a robotic arm and to support the instrument drive unit (carriage 42 Figs. 2, 24, [0176]-[0177]), the carriage including:
a drive assembly having:
a motor (motor 44 Fig. 24, [0176]);
a pulley operably coupled to the motor (pulley 118 Fig. 24, [0176]); and
a drive belt coupled to the pulley and configured to be operably coupled to the surgical instrument, such that the surgical instrument rotates in response to a rotation of the pulley (drive belt 122 Fig. 24, [0171], [0176]-[0177] see also [0198], [0313]); and
An interpretation of Kapadia may not explicitly disclose a locking assembly configured to selectively lock the drive assembly to prevent rotation.
However, solving the same problem of limiting drive belt driven rotational of mechanical elements, Loui teaches a locking assembly configured to selectively lock the drive assembly to prevent rotation (abstract, [0022]-[0024], Fig. 1; Examiner notes that per applicants’ specification the “pulley” can be spur gears with teeth. The Loui reference discloses a solenoid driving a pawl to interact with the teeth of a gear to lock it from rotating in one position and letting it rotating in another position).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the system of Kapadia with a driving belt, pulley and motor to include a pawl and solenoid locking mechanism as recited by Loui because using a linear actuator is a smaller arrangement for a locking mechanism ([0002]). Additionally, it would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the system of Kapadia with a driving belt, pulley and motor to include a pawl and solenoid locking mechanism as recited by Loui because it is combining prior art (combining in the locking mechanism as recited by Loui to the mechanical system of Kapadia) elements according to known methods to yield predictable results of locking the rotation of the instrument.
Regarding Claim 8, an interpretation of Kapadia may not explicitly disclose the locking assembly includes: a solenoid; and a pawl associated with the solenoid and disposed adjacent the pulley, wherein the solenoid is configured to move the pawl between a first position, in which the pawl is disengaged from the pulley, and a second position, in which the pawl is engaged to the pulley to resist rotation of the pulley.
However, in the same field of endeavor, solving the same problem of limiting drive belt driven rotational of mechanical elements, Loui teaches the locking assembly includes:
a solenoid ([0022]-[0024] including “In a preferred embodiment of the invention the actuator 42 is a linear actuator and is depicted in the drawings as a solenoid actuator.”, Fig. 1); and
a pawl associated with the solenoid and disposed adjacent the pulley, wherein the solenoid is configured to move the pawl between a first position, in which the pawl is disengaged from the pulley, and a second position, in which the pawl is engaged to the pulley to resist rotation of the pulley (abstract, [0022]-[0024], Figs. 1-2; Examiner notes that per applicants’ specification the “pulley” can be spur gears with teeth. The Loui reference discloses a solenoid driving a pawl to interact with the teeth of a gear to lock it from rotating in one position and letting it rotating in another position).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the system of Kapadia with a driving belt, pulley and motor to include a pawl and solenoid locking mechanism as recited by Loui because using a linear actuator is a smaller arrangement for a locking mechanism ([0002]). Additionally, it would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the system of Kapadia with a driving belt, pulley and motor to include a pawl and solenoid locking mechanism as recited by Loui because it is combining prior art (combining in the locking mechanism as recited by Loui to the mechanical system of Kapadia) elements according to known methods to yield predictable results of locking the rotation of the instrument.
Regarding Claim 11, an interpretation of Kapadia discloses a robotic surgical system ([0007] "a robotic surgical system is provided"), comprising:
a surgical instrument defining a longitudinal axis (surgical instrument 200 Fig. 2, [0170], [0173]);
an instrument drive unit configured to transmit rotational forces to the surgical instrument while the surgical instrument is coupled to the instrument drive unit, the instrument drive unit having a motor pack configured to non-rotatably couple to the surgical instrument (instrument drive unit 110 Fig. 2, [0086], [0170]-[0171], [0198] see also [0313]); and
a carriage supporting the instrument drive unit and the surgical instrument while the surgical instrument is coupled to the instrument drive unit (carriage 42 Fig. 2, [0176]-[0177]), the carriage including:
a back member (rear shell portion 60a Fig. 2, [0177]);
a housing extending from the back member (annular shell portion 60b Fig. 2, [0177]);
a drive assembly having:
a motor supported in the back member (motor 44 Fig. 24, [0176]);
a pulley supported in the housing and operably coupled to the motor (pulley 118 Fig. 24, [0176]); and
a drive belt supported in the housing and coupled to the pulley, the drive belt being configured to non-rotatably couple to the motor pack, such that the surgical instrument rotates in response to a rotation of the pulley (drive belt 122 Fig. 24, [0171], [0176]-[0177] see also [0198], [0313]).
An interpretation of Kapadia may not explicitly disclose a locking assembly configured to selectively lock the drive assembly to prevent rotation.
However, solving the same problem of limiting drive belt driven rotational of mechanical elements, Loui teaches a locking assembly configured to selectively lock the drive assembly to prevent rotation (abstract, [0022]-[0024], Fig. 1; Examiner notes that per applicants’ specification the “pulley” can be spur gears with teeth. The Loui reference discloses a solenoid driving a pawl to interact with the teeth of a gear to lock it from rotating in one position and letting it rotating in another position).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the system of Kapadia with a driving belt, pulley and motor to include a pawl and solenoid locking mechanism as recited by Loui because using a linear actuator is a smaller arrangement for a locking mechanism ([0002]). Additionally, it would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the system of Kapadia with a driving belt, pulley and motor to include a pawl and solenoid locking mechanism as recited by Loui because it is combining prior art (combining in the locking mechanism as recited by Loui to the mechanical system of Kapadia) elements according to known methods to yield predictable results of locking the rotation of the instrument.
Regarding Claim 16, an interpretation of Kapadia may not explicitly disclose the locking assembly includes: a solenoid; and a pawl associated with the solenoid and disposed adjacent the pulley, wherein the solenoid is configured to move the pawl between a first position, in which the pawl is disengaged from the pulley, and a second position, in which the pawl is engaged to the pulley to resist rotation of the pulley.
However, in the same field of endeavor, solving the same problem of limiting drive belt driven rotational of mechanical elements, Loui teaches the locking assembly includes:
a solenoid ([0022]-[0024] including “In a preferred embodiment of the invention the actuator 42 is a linear actuator and is depicted in the drawings as a solenoid actuator.”, Fig. 1); and
a pawl associated with the solenoid and disposed adjacent the pulley, wherein the solenoid is configured to move the pawl between a first position, in which the pawl is disengaged from the pulley, and a second position, in which the pawl is engaged to the pulley to resist rotation of the pulley (abstract, [0022]-[0024], Figs. 1-2; Examiner notes that per applicants’ specification the “pulley” can be spur gears with teeth. The Loui reference discloses a solenoid driving a pawl to interact with the teeth of a gear to lock it from rotating in one position and letting it rotating in another position).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the system of Kapadia with a driving belt, pulley and motor to include a pawl and solenoid locking mechanism as recited by Loui because using a linear actuator is a smaller arrangement for a locking mechanism ([0002]). Additionally, it would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the system of Kapadia with a driving belt, pulley and motor to include a pawl and solenoid locking mechanism as recited by Loui because it is combining prior art (combining in the locking mechanism as recited by Loui to the mechanical system of Kapadia) elements according to known methods to yield predictable results of locking the rotation of the instrument.
Allowable Subject Matter
Claim 9-10, 17-18 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 9-10, 17-18 are allowed over the prior art. While the references disclose the locking mechanism with a pawl and solenoid to lock the pulley (which per Applicants specification can be a gear), the references do not disclose the specific set up claimed in claims 9, 17 and their respective dependent claims.
Conclusion
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/James Moss/Examiner, Art Unit 3792