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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1/10/11/12, 7/8, 9, 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 11, 2, 3 (respectively) of copending Application No. 17/995591 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed invention is broader than that of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites “a force sensor” but depends on claim 3 which recites a force sensor. Therefore, the definite article should be used.
Appropriate correction is required.
Claim Interpretation
Claim limitation “an operator” is taken to refer to a mechanical device, such as a joystick, keyboard, keypad, or teaching pendant [Par. 0051] and not to a human operator.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 7, 9-12, 14-15, 18-20, 21 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wang [US 2023/0138192 A1].
Re. claim 1, Wang discloses a robot system [Fig. 1 and Par. 0055; comprising the robot, operator, and controller as set forth below] comprising:
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a robot [1] that is disposed in a first space [Fig. 1. Note that this relates to the intended use of the robot; however, the robot of Wang is explicitly disclosed being as being remote from the operator and thus capable of being in a first space] and includes an arm [3A/3B] with a hand [6 and 12, together, Fig. 1] that holds a medical test instrument [the hand is capable of holding a medical test instrument, such as those described in Par. 0077,0078];
an operator [“smart gloves,” Par. 0078] that receives an operation on the test instrument in a second space different from the first space [Par. 0078. Note that the reference to the second space is the intended use, but the remote nature of the operator means that the human operator may perform operation on the operator]; and
a controller [“controller,” Par. 0020] that operates the test instrument by controlling the robot in response to the received operation [Par. 0078].
Re. claim 2, Wang discloses the test instrument includes a test instrument that collects a specimen from at least one of a nasal cavity and an oral cavity of a patient [“a universal collecting instrument 71 of an embodiment of the present invention is mainly used for collecting a sample such as … an oral cavity,” Par. 0077], the robot system further comprises:
a first imager [camera 33] that is provided at the hand or the arm and picks up an image of at least one of the nasal cavity and the oral cavity [intended use, of which the first imager is capable: “A middle finger 6 of a right nine-axis mechanical arm 3B extends into the patient mouth, presses down a tongue, and exposes a throat. A data provided by a lighting 30, a camera 33, a 3D sensor 16 and an infrared sensor 17 is used to sense an exact position of the throat,” Par. 0077]; and
a first display [VR device 94, Fig. 1] that is disposed in the second space [Par. 0078], and the controller displays a pickup image picked up by the first imager, on the first display [“The above operations are based on a type and/or characteristics of the samples to receive an instruction from a central data processing module 26 for intelligent control or remote control to execute a doctor order,” Par. 0077. The system is capable of displaying the image picked up by the first imager].
Re. claim 7, Wang discloses an irradiator that is provided at the hand [illumination 30, Par. 0068] and performs irradiation with light at a position at which the test instrument is inserted into a patient [intended use of which the irradiator is capable].
Re. claim 9, Wang discloses the apparatus substantially as set forth with respect to claims 2 and 7 above, and wherein the controller is capable of displaying the image of the patient irradiated with the light.
Re. claim 10, Wang discloses the robot is disinfected [Par. 0091] [“in a third space different from the first space and the second space” refers to the intended use of the robot. This limitation is not given further patentable weight].
Re. claim 11 Wang discloses: a disinfector [39] that is provided in the third space and disinfects the robot [Par. 0091] [“in the third space” refers to the intended use of the robot. This limitation is not given further patentable weight].
Re. claim 12, Wang discloses the robot is disinfected by itself [Par. 0091].
Re. claim 14, Wang discloses, wherein the operator receives an operation of holding the test instrument by the hand and releasing the holding [“When the remoted control mode is selected, a doctor wears a smart helmet or a pair of smart glasses and/or a pair of smart gloves of an artificial reality (AR)/virtual reality (VR) device 94, controls a left nine-axis mechanical arm 3A and a right nine-axis mechanical arm 3B, and guides a patient to change body position, then under a guidance, holds a blood collection tube 53,” Par. 0078].
Re. claim 15, Wang discloses a carriage [chassis 1] on which the arm is mounted [Fig. 1].
Re. claim 18, Wang discloses a container [box 48] that is provided in the robot and contains at least one of a drug, a food, a reagent, a specimen, and the test instrument [specimen or test instrument, Par. 0065].
Re. claim 19, Wang discloses the operator and the robot are configured by a master-slave method [remoted control mode, Par. 0078].
Re. claim 20, Wang discloses a control method for a robot system including an arm that is disposed in a first space and includes a hand that holds a medical test instrument [as set forth with respect to claim 1 above], the control method comprising:
receiving an operation on the test instrument in a second space different from the first space; and operating the test instrument by controlling the robot in response to the received operation [“When the remoted control mode is selected, a doctor wears a smart helmet or a pair of smart glasses and/or a pair of smart gloves of an artificial reality (AR)/virtual reality (VR) device 94, controls a left nine-axis mechanical arm 3A and a right nine-axis mechanical arm 3B,” Par. 0078].
Re. claim 21, Wang discloses the robot system substantially as set forth with respect to claims 1 and 2 above.
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Ghodoussi et al. [US 2003/0144649 A1, hereinafter “Ghodoussi”].
Re. claim 3, Wang discloses the system set forth above a first display [VR device 94, Fig. 1] that is disposed in the second space, wherein the controller displays a detection result of a sensor on the first display [the controller is capable of displaying a detection result], but fails to disclose a force sensor. However, Ghodoussi teaches, in a surgical robot system, a force sensor [134] detects a force from the test instrument abutting on a patient [Par. 0046]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the system of Wang by adding a force sensor as taught by Ghodoussi in order to provide feedback to the controller regarding the force applied by the end effector [Ghodoussi Par. 0046]. Furthermore, one of ordinary skill would reasonably be apprised of the benefits of the force sensor being provided at the hand as claimed.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Ghodoussi as applied to claim 3 above and further in view of Todorov et al. [US 2016/0278754 A1, hereinafter “Todorov”] and Bodduluri et al. [US 2009/0306498 A1, hereinafter “Boddoluri”].
Re. claim 5, the modified Wang discloses the system set forth above including the force sensor [see claim 3 above] that is provided at the hand and detects a force from the test instrument abutting on a patient [Par. 0046], but fails to disclose the controller displaying a color and diameter change.
Todorov teaches, in a controller for a robotic system, the controller displays a detection result of the force sensor and changes a color of the display in accordance with magnitude of the force detected by the force sensor [Pars. 0035-0036]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the system of Wang by configuring the controller to cause the display to change color in accordance with magnitude of the force detected by the force sensor, as taught by Todorov, in order to allow a user to easily monitor the force applied.
Boddoluri teaches, in a surgical system, a controller displays an insertion depth of an instrument into the patient, on the first display [Par. 0012]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the system of Wang by configuring the controller to display an insertion depth as taught by Bodduluri in order to allow the human operator to monitor and control the depth of insertion of a tool. Furthermore, displaying on the first display would have been obvious in order to allow the human operator to see the insertion depth.
Regarding the controller displaying a circle, and changing the diameter of the circle in accordance with the insertion depth, the modified Wang teaches a controller capable of performing such a function.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Bodduluri.
Re. claim 4, Wang discloses a first display [VR device 94, Fig. 1] that is disposed in the second space, but fails to dislcose the controller displaying an insertion depth. However, Boddoluri teaches, in a surgical system, a controller displays an insertion depth of an instrument into the patient, on the first display [Par. 0012]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the system of Wang by configuring the controller to display an insertion depth as taught by Bodduluri in order to allow the human operator to monitor and control the depth of insertion of a tool. Furthermore, displaying on the first display would have been obvious in order to allow the human operator to see the insertion depth.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Grubbs [US 2018/0338806 A1].
Re. claim 6, Wang discloses the system set forth above and further discloses a profile imager [facial imager, Par. 0068] that is disposed in the first space and (capable of) picking up an image of a profile of a patient [depending on the angle from which the profile imager views the patient], but fails to disclose the controller superimposes a model image on the image of the profile of the patient picked up by the profile imager, and displays a result of the superimposition on the first display, the model image virtually representing a cross section of the profile of the patient and the test instrument inserted into the patient.
However, Grubbs teaches the controller superimposes a model image on the image of the patient picked up by the profile imager, and displays a result of the superimposition on the first display, the model image virtually representing the patient and the test instrument inserted into the patient [Par. 0311]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the system of Wang by configuring the controller to superimpose a model image on Wang’s profile imager image of the patient, and display that superimposition, as taught by Grubbs, in order to allow the surgeon to identify specific structures during the operation [Grubbs Par. 0310]. Furthermore, regarding the profile being a cross section of the profile of the patient, Grubbs teaches different angles [Par. 0310] and thus it is within the scope of the teachings to provide the cross-section image.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Hongo et al. [US 20190053863 A1, hereinafter “Hongo”].
Re. claim 8, Wang discloses the system set forth above but fails to disclose the pair of laser light indicators. However, Hongo teaches, for a surgical system, an irradiator includes a pair of laser light indicators [230R and 230L], and rays of light with which irradiation is respectively performed from the pair of laser light indicators intersect with each other [Fig. 25 and Par, 0163]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the system of Wang by configuring the irradiator to include a pair of laser light indicators as taught by Hongo in order to easily (and accurately) pinpoint a desired surgical location [Hongo Par. 0164].
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Bonny et al. [US 20180200014 A1, hereinafter “Bonny”].
Re. claim 13, Wang discloses the system set forth above but fails to disclose the protective cover. However, Bonny discloses a robot covered with a protective cover [Fig. 1]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Wang by adding a cover such that the robot is covered with a protective cover as taught by Bonny in order to maintain sterile conditions [Bonny Par. 0004].
Claim(s) 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Wang et al. [US 2004/0019406 A1, hereinafter “Wang 2004”].
Re. claim 16, Wang discloses the system set forth above but fails to disclose the audio inputs and outputs. However, Wang 2004 teaches, in a robot system [Fig. 1], a first audio input [microphone(s) 42] and a first audio output [speaker 44] provided in at least one of the robot and the first space [in robot 12, Par. 0021;Fig. 1]; and a second audio input [microphone 28] and a second audio output [speaker 30] provided in the second space [at remote control station 16, Par. 0020], wherein the controller causes the second audio output to output audio information input to the first audio input, and causes the first audio output to output audio information input to the second audio input [Par. 0021]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Wang by adding the audio inputs and outputs as taught by Wang 2004 in order to “allow for audible communication between the patient and the user” [Wang 2004 Par. 0021].
Re. claim 17, Wang discloses the system set forth above but fails to disclose the second imager and second display. However, Wang 2004 teaches, in a robot system [Fig. 1], a second imager [camera 26] provided in the second space [at remote control station 16, Par. 0020]; and a second display [40] that is provided in at least one of the robot and the first space [robot 12, Par. 0021] and displays an image picked up by the second imager [Par. 0021]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the system of Wang by adding the second imager and second display as taught by Wang 2004 in order to allow the patient to view the user [Want 2004 Par 0021].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIN MCGRATH whose telephone number is (571)270-0674. The examiner can normally be reached M-Th 8am to 5pm ET; F 9 am to 1 pm.
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/ERIN MCGRATH/Primary Examiner, Art Unit 3771