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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/05/2026 has been entered.
Response to Arguments
Applicant's arguments filed 03/05/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s first argument, that the tendons of Bergamasco do not pass around the bearing stud of a ball joint, is unpersuasive. While Fig. 1 shows some connection points P1-P4 for tendons 8, Fig. 1 clearly shows tendons 8 that are not attaching in this manner (the internal of the tendons8, one shown by line F1). Para. 0050 states that tendons can be extended from a body, such as trocar 16, to a wrist of a device, and Para. 0044 clearly delineates that the wrist is separate and past the ball joint 10.
Applicant next argues that Bergamasco does not teach the limitation in Claim 12, “wherein the main body comprises a perimeter wall extending distally relative to the bearing stud, wherein the tendons are attached to the perimeter wall”, which is unpersuasive. Bergamasco’s support 2 extends both proximal to and distal to the bearing stud, as shown in Fig. 1, and the claim does not specify where the tendons must attach to the perimeter wall relative to other components. Applicant does not define in the claims what amounts to a distal or proximal end or the device, nor identifies what direction amounts to distal or proximal (for example, the claim would need to say “a perimeter wall extending distally from a bearing stud to the base/end effector” depending on whether Applicant considers the base end the distal or proximal end). Applicant is advised to amend the claims to distinctly state which configuration they prefer.
Applicant next argues that the tendons of Bergamasco are not attached to a flat or convex surface as required of Claim 13, which is unpersuasive. Bergamasco’s tendons 8 are not attached to the inner surface of support 2 as alleged by Applicant, but shown in Figs. 1, 9, and 10 to attach to the flat outer lip of support 2.
Applicant’s final arguments, that Claim 16’s limitation requiring at least one further tendon connected to the tool for controlling an action of the tool in a further degree of freedom is not taught in Bergamasco, is unpersuasive. While Applicant states that the further degree of freedom is controlled by deformation of means 15a and 15b, Para. 0049 explicitly states that this deformation is caused by tension in tendons 8 (“More in detail, when tendons 8 are subject to a tension higher than a determined value, the resultant of the reaction force of the ball joint 10 on support 2, and in particular its component R in the orthogonal direction to the plane of points P1-P4, causes a controlled deformation (bending) of the means 15a and 15b (FIGS. 17-20)”).
For these reasons, the rejections to the claims are maintained.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 5, 12-14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Publication 20080196533 awarded to Bergamasco et al, hereinafter Bergamasco.
Regarding Claim 1, Bergamasco teaches an end-effector for an endoscopic surgical instrument (abstract), the end-effector comprising: a tool configured to interact with tissue (Para. 0004); a main body comprising a bearing stud (central post 5), the tool being connected to the bearing stud (Fig. 1), wherein at least part of the tool is fixed relative to the bearing stud (Fig. 1, Para. 0044, “A robotic wrist 1 comprises a distal member as an end effector 3 mounted on a support 2 pivotally connected to a central post 5 integral to a fixed base 4”); a base comprising a surface facing the bearing stud the bearing stud and the surface forming a ball joint (ball joint 10); and a plurality of tendons connected to the main body so as to control movement of the tool (tendons 8) in two degrees of freedom (abstract, “In particular, the support (2) can be oriented with respect to the fixed member (5) with a redundant actuating system by arranging four forces in eccentric points, for example by means of tendons (8), and causing the rotation of the support (2) about the central post (5) by the ball joint (10)”), wherein the tendons pass around the outside of the bearing stud (Fig. 1).
Regarding Claim 2, Bergamasco teaches the end-effector of claim 1, wherein the bearing stud is a unitary mass of material (central post 5 is not described as being made of multiple materials).
Regarding Claim 5, Bergamasco teaches the end-effector of claim 1, wherein only the tendons are configured to constrain an axial position of the bearing stud relative to the surface facing the bearing stud (Para. 0045, “In particular, support 2 can be oriented with respect to central post 5 with a redundant actuating system, by arranging four forces F.sub.1-F.sub.4 in eccentric points P.sub.1-P.sub.4, for example by means of tendons 8, and causing support 2 to rotate about central post 5 by ball joint 10 (FIG. 6)”).
Regarding Claim 12, Bergamasco teaches the end-effector of claim 1, wherein the main body comprises a perimeter wall extending distally relative to the bearing stud, wherein the tendons are attached to the perimeter wall (support 2, Figs. 1 and 6, Para. 0049).
Regarding Claim 13, Bergamasco teaches the end-effector of claim 1, wherein the bearing stud comprises a flat or convex surface at its distal end to which the tendons are attached (support 2, Figs. 1 and 6, Para. 0049).
Regarding Claim 14, Bergamasco teaches an endoscopic surgical instrument (Para. 0004) comprising the end-effector of claim 1 (see rejection to Claim 1 above).
Regarding Claim 16, Bergamasco teaches the end-effector of claim 1, comprising at least one further tendon connected to the tool for controlling an action of the tool in a further degree of freedom (Para. 0045, “In particular, support 2 can be oriented with respect to central post 5 with a redundant actuating system, by arranging four forces F.sub.1-F.sub.4 in eccentric points P.sub.1-P.sub.4, for example by means of tendons 8, and causing support 2 to rotate about central post 5 by ball joint 10 (FIG. 6)”).
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.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication 20080196533 awarded to Bergamasco et al, hereinafter Bergamasco, in view of U.S. Patent 6210323 awarded to Gilhuly et al, hereinafter Gilhuly.
Regarding Claims 3-4, Bergamasco teaches the end effector of Claim 1. Bergamasco does not teach wherein the surface facing the bearing stud and/or a proximal end of the bearing stud is coated with a coating configured to affect friction between the proximal end of the bearing stud and the surface facing the bearing stud, or wherein a there comprises a frictional component between the surface facing the bearing stud and the bearing stud so as to affect effective friction between the bearing stud and the surface facing the bearing stud.
However, in the art of surgical arms, Gilhuly teaches a surface between a bearing stud and ball joint configured over the top of the bearing stud to provide a frictional component to provide effective friction between the bearing stud and the surface the bearing stud (Col. 8, Lines 42-59, “Contact between the ball joint balls and the link sleeves 22 is made through the urethane rubber material only, which has increased friction against stainless steel, would be the case if the ball was made of stainless steel or other hard metal. Furthermore, grooves can be cut, ground, etched or otherwise made in outer shell 22 to increase friction with the rubber hemisphere 25. The urethane rubber hemisphere 25 needs to be made from a durable, autoclavable rubber. It needs to be hard enough to prevent it from being extruded by the air pressure, yet compliant enough that it offers good friction contact. Both urethane rubber and neoprene have been found to be good materials for this purpose. It will be obvious to those skilled in the art that alternative designs do exist to increase friction in the pressurized ball joints presented above. The ball joint ball could be made out of steel or other hard material (potentially grooved), and the shell 22 can be made with an appropriate rubber gasket--an O-ring or a hemispherical gasket”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bergamasco by Gilhuly, i.e. by using the frictional surface of Gilhuly in the system of Bergamasco, for the predictable purpose of simply substituting one known ball joint for another.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication 20080196533 awarded to Bergamasco et al, hereinafter Bergamasco, in view of U.S. Patent Publication 20060058825 awarded to Ogura, hereinafter Ogura.
Regarding Claim 17, Bergamasco teaches the end-effector of claim 16. Bergamasco does not teach wherein the at least one further tendon extends through a channel in the bearing stud, but does teach an actuation system going through a bearing stud (fixed member 160, Para. 0054, Figs. 21-25).
However, in the art of surgical arms, Ogura teaches a bearing stud (member 50) with a plurality of channels through the bearing stud (Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bergamasco by Ogura, i.e. by using multiple channels through the bearing of Bergamasco as in Ogura instead of the singular channel as currently in Lee, for the predictable purpose of simply substituting one known method of extending tendons for another.
Regarding Claim 18, Bergamasco modified by Ogura makes obvious the end-effector of Claim 17. Bergamasco further teaches wherein at least two of said further tendons are provided, having respective channels that, in cross-section, align with a direction of movement of said one further degree of freedom and/or a direction of movement of one of said two degrees of freedom (Fig. 3 showing channels through connecting arms 7, Para. 0046, “The direction of application of forces F.sub.1-F.sub.4 is determined by connecting arms 7 (FIGS. 2 and 3), which deflect forces F.sub.1-F.sub.4 generated by a motor 40 located upstream and described hereafter (FIG. 1). In an exemplary embodiment shown in FIG. 2 connecting arms 7 are cantilevers that have a central body, of relatively high thickness, shaped as a tapering arc with an end 7' and a fixed joint 7'', with a cross section relatively thin that extends from the body of fixed base 4. This geometry allows a high flexibility in a preferential plane and high stiffness in other planes. This way, it is possible to provide a transmission of the movement with low friction and, therefore, to increase the precision of determination of the force applied by the instrument in the surgical site”).
Regarding Claim 19, Bergamasco modified by Ogura makes obvious the end-effector of Claim 18. Bergamasco further teaches wherein at least one pair of the channels is joined to form a common channel for a respective pair of the further tendons (Fig. 3).
Regarding Claim 20, Bergamasco modified by Ogura makes obvious the end-effector of Claim 20. Bergamasco does not teach wherein the channels have an internal width at least one and a half times a cross-sectional dimension of the tendons.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Bergamasco, i.e. by modifying the channels to have an internal width at least one and a half times a cross-sectional dimension of the tendons, as the dimensions of the channels is an obvious design choice optimized by one of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jess Mullins whose telephone number is (571)-272-8977. The examiner can normally be reached between the hours of 9:00 a.m. to 5:00 p.m. PST M-F.
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, James Kish, can be reached at (571)-272-5554. The fax number for the organization where this application or proceeding is assigned is (571)-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866)-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call (800)-786-9199 (In USA or Canada) or (571)-272-1000.
/JLM/
Examiner, Art Unit 3792
/ALLEN PORTER/Primary Examiner, Art Unit 3796
Prosecution Insights