DETAILED ACTION
This office action is responsive to the amendment filed March 2, 2026. By that amendment, claims 1, 12 and 17 were amended. Claims 1-20 are pending.
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 with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The newly presented rejections are necessitated by the amendments to the claims of March 2, 2026.
All arguments presented are to state that limitations newly added to the claims are not present in the prior art. Examiner agrees, and therefore applies a new combination of prior art references in making new rejections.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Every claim now requires a sensor being a linear encoder, or rotary encoder, or incremental encoder, or force sensor, being a sensor which ‘detects that the robotic arm has received the surgical tool’. Examiner is of the position that this capability of this type of sensor was not original disclosed, and further believes that insufficient detail is present as to how such a sensor is intended to function to achieve this result.
The disclosure provides one paragraph which discusses the claimed types of encoders at [0064]. Sensor 126 is discussed at [0064-0066] and [0089]. The disclosure states that sensor 126 may be an encoder, or a force sensor “configured to detect a force applied on the robotic arm 116 (e.g. whether via an end effector of the robotic arm 116, a tool held by an end effector of the robotic arm 116, or otherwise).” At [0066], data from 126 may be used to “calculate a position in space of the robotic arm 116…” Sensor 126 may be used to measure the depth (of a bore) [0089].
Examiner does not find any originally presented disclosure which taught use of a sensor being a linear encoder, a rotary encoder, an incremental encoder, or force sensor, for detecting that the robotic arm has received a surgical tool. This limitation is now considered to be new-matter.
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.
Claim(s) 1-7 and 11-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tierney et al. (US 6,491,701 B2) in view of Netravali et al. (US 2016/0038291 A1) and Vargas et al. (US 2018/0168761 A1).
Regarding claim 1, Tierney teaches a system for performing a minimally-invasive surgical procedure comprising:
a processor (col. 3, lines 28-38);
a memory storing data for processing by the processor (col. 2, line 60 – col. 3, line 5), the data, when processed, causes the processor to:
determine that a robotic arm 58 has received a surgical tool 54 (fig. 4) through an arm guide 72 of the robotic arm 58 (col. 14, lines 23-39; see fig. 2B to indicate passing a tool 54 through cannula 72 and fig. 14C to indicate attachment of the tool 54 to the adapter 128; col. 17, lines 15-25); and
cause the robotic arm 58 to orient the surgical tool 54 in at least one direction along a trajectory (col. 7, line 61 – col. 8, line 7); and
a sensor that detects that the robotic arm has received the surgical tool (col. 14, lines 22-38; col. 4, line 31 – col. 5, line 17; col. 11, line 57 – col. 12, line 13).
Tierney fails to teach the processor causing the robotic arm to cause the surgical tool to remove at least a portion of an anatomical element to form a custom shaped cavity in the anatomical element; and fails to teach the sensor being at least one of a linear encoder, a rotary encoder, an incremental encoder or a force sensor. However, Tierney does teach various cutter tools as the surgical tool. (col. 6, lines 40-57)
Netraveli teaches a system including a processor 10, a memory 12, and the processor causing a robotic arm [0021] S120, S150) to orient a surgical tool 20 in a direction along a trajectory to remove a portion of an anatomical element (bone/cartilage) to form a custom shaped cavity 16 in the anatomical element [0028].
It would have been obvious to one with ordinary skill in the art at the time of the invention to use the Tierney device to carry out the Netravali method. One would have done so by causing Tierney’s robotic arm and programming to conduct the cutting path taught by Netravali. One would have done so in order to produce a cavity 16 in a bone using a tool other than the tool taught by Netravali. One would have done so in a situation where the Netravali tool was not present for a surgeon to use.
The combination continues to fail to teach the sensor being at least one of a linear encoder, a rotary encoder, an incremental encoder or a force sensor.
Vargas teaches a controller using information from a sensor (being a rotary encoder) [0064] to determine that appropriate torque has been applied to indicate that the surgical tool is fully seated into the driver attachment [0064].
It would have been obvious to one with ordinary skill in the art at the time of the invention to apply a rotary encoder to the Tierney device in order to provide the Tierney controller with knowledge of an attachment state of a tool. One would have done so in order to improve patient safety during the procedure being carried out by the Tierney device.
For sake of brevity, claims 1, 12 and 17 will be treated together, in the same manner as which they have been treated together in prior office actions and replies from applicant.
Specific to claim 17, Tierney has taught multiple arm guides carried by the surgical robot, which all together, will be considered to be the arm guide. Determination of each portion of the arm guide receiving and using a surgical tool 54 is considered within the scope of what is disclosed.
Regarding claims 2, 14 and 19, the custom shaped cavity 16 has cross-sectional area larger than a cross-sectional area of the surgical tool 20 as seen at Netravali fig. 3A.
Regarding claims 3, 15 and 20, the at least one direction comprises a lateral direction and a depth direction (inherent to cause the tool 20 of Netravali to form the cavity 16 seen in fig. 3A).
Regarding claims 4 and 16, the system includes the arm guide 72, wherein the arm guide 72 comprises a depth stop (top surface of 72 as seen at fig. 2B) to prevent movement of the surgical tool past a predetermined depth (since 54 will not be able to pass the top surface of 72), and wherein the depth stop is adjustable (as by movement of 58).
Regarding claim 5, the memory stores further data for processing by the processor that, when processed, causes the processor to: cause the robotic arm to stop movement of the surgical tool at a predetermined depth [0029]-[0030] (custom instructions clearly include a depth element).
Regarding claim 6, the surgical tool 20 is configured to drill and mill the anatomical element.
Regarding claims 7 and 18, a reamer is known to be a tool for widening a hole. There is no reason that Netravali’s tool 20 cannot be used as a reamer. Netravali teaches that 20 is a rotary bit [0025] or milling tip [0028]. The memory stores further data (instructions as at [0029]-[0030] for processing by the processor 10 that, when processed, causes the processor to: determine that the robotic arm has received a drill bit 20 through the arm guide of the robotic arm; and cause the robotic arm to orient the drill bit 20 in one direction along a drill bit trajectory to form a bore in the anatomical element prior to removal of the at least the portion of the anatomical element by the reamer.
Regarding claim 11, the surgical tool 20 has a diameter larger than a cutting depth of the surgical tool 20 as seen at fig. 3A.
Regarding claim 13, there is no reason the combination method cited in rejecting claim 12 cannot be said to be minimally invasive.
Allowable Subject Matter
Claims 8-10 are 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.
The claims cannot be allowed until such time as the outstanding rejection under 35 USC 112(a) is overcome.
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 David Bates whose telephone number is (571)270-7034. The examiner can normally be reached Monday through Friday, 10AM-6PM
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If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571)272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID W BATES/Primary Examiner, Art Unit 3799
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