CTNF 18/006,575 CTNF 79622 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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, see pages 10-12, filed 03/11/2026, with respect to the rejection(s) of claims 1-8, and 17-20 under 35 U.S.C. 102 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 Therefore, the rejection has been withdrawn.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 the same prior art, but a different and proper interpretation of the prior art (see the rejections below). Claim Objections 07-05-05 Applicant is advised that should claims 9-16 (9 with 13, 10 with 14, 11 with 15, and 12 with 16) be found allowable, claims 9-16 (9 with 13, 10 with 14, 11 with 15, and 12 with 16) will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). 07-05-06 Claims 13-16 are objected to under 37 CFR 1.75 as being a substantial duplicate of claims 9-12 . When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-8, and 17-20 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Duval (U.S. Patent Application Publication 2011/0282359) . Regarding claims 1, and 17 , Duval discloses a system comprising: a surgical instrument unit that includes a surgical instrument (see for example the distal shaft like portion of 960, see [0121] and figures 9A-10) at a front end; a drive unit that drives the surgical instrument (comprising a) all of the rectangular "instrument manipulator 542" except for the actuators on its distal face, e.g., 542b, 542c, 542d, 542e, and b) “insertion mechanism 444,” see [0108] and [0116] and figures 4A-4B, and 10, and other alternate/equivalent counterparts in other embodiments, e.g., see figure 3-5C-4); and an adapter that attaches the surgical instrument unit to the drive unit, wherein the adapter includes: a translatory transmission part ("pocket extension 1106," see [0134] and figures l lA-11C) that transmits a driving force generated by the drive unit to the surgical instrument unit; and a drip-proof part ("sterile drape" 1000/2000, [O 129] and figures 1 A, 2A, 10-11C) that separates a side of the surgical instrument unit and a side of the drive unit in the translatory transmission part (see figure 10). Regarding claims 2, and 18 , Duval discloses the claimed invention including the air chamber (air gap or channel shown in figure 10). Regarding claims 3 and 19 , Duval discloses the claimed invention including two elastic bodies each having a two-fold structure (the outer side portions connecting the two pair of flexible membranes provides a pocket extension 1106 to the rest of 1100a, A) the first two-fold elastic body is the pair of flexible membranes 1106 located at the bottom (6 O'clock) and left side (9 O'clock) in figures 11 A, B) the second two-fold elastic body is the pair of flexible membranes 1106 located at the top (12 O'clock) and right side (3 O'clock) in figure l lA) are arranged to face each other, and the air chamber is formed between the elastic bodies by connecting both ends with the translatory transmission part. Also see figures 11A-11C. Regarding claim 4 , Duval discloses the claimed invention, see figures 10-11C. The recitation "the air chamber is maintained at a constant air pressure" is a recitation of 1) intended use, 2) functional limitation, or 3) language directed to the manner in which an apparatus is intended to be employed. A recitation of intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference ( or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. However, if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. It is well established that a recitation with respect to the manner in which an apparatus is intended to be employed, i.e., a functional limitation, does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claim. In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974); In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 136 USPQ 458 (CCPA 1963 ). Where the prior art reference is inherently capable of performing the function described in a functional limitation, such functional limitation does not define the claimed apparatus over such prior art reference, regardless of whether the prior art reference explicitly discusses such capacity for performing the recited function. In re Ludtke, 441 F.2d 660,169 USPQ 563 (CCPA 1971). In addition, where there is reason to believe that such functional limitation may be an inherent characteristic of the prior art reference, Applicant is required to prove that the subject matter shown in the prior art reference does not possess the characteristic relied upon. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986); In re Ludtke, 441 F.2d at 664, 169 USPQ at 566 (CCPA 1971). A recitation with respect to the manner in which an apparatus is intended to be employed does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claim. In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974); In re Yanush, 477 F.2d 958, 177 USPQ 705 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028, 168 USPQ 530 (CCPA 1971); In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 136 USPQ 458 (CCPA 1963); Ex parte Masham, 2 USPQ2d 1647 (BdPatApp & Inter 1987). Regarding claims 5, and 20 , Duval discloses the claimed first and second linear shafts that are coupled (these are met by the hollow shafts defined by 444 and 1106, see figures 10-11C). Regarding claims 6 and 7 , Duval discloses the claimed invention see [0074]-[0075], herein locked or the locked state is defined by not being able to move the shaft of the surgical instrument with the system controls. Regarding claim 8 , Duval discloses the claimed invention, here since the shaft of the surgical instrument cannot be moved with the system controls (since attachment is not complete) the locked state is achieved. Regarding claims 9, and 13 , Duval discloses the adapter further includes a receiving part (1103 in figure 11B), the receiving part (1104 in figure 11B) includes a guiding part configured to guide the coupling between the third linear shaft and the second linear shaft. Allowable Subject Matter Claims 10-12, and 14-16 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. Also consider the duplicate claim objections made above. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON F ROANE whose telephone number is (571)272-4771. The examiner can normally be reached generally Mon-Fri 8am-9pm. 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, Niketa Patel can be reached at (571) 272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /AARON F ROANE/Primary Examiner, Art Unit 3792 Application/Control Number: 18/006,575 Page 2 Art Unit: 3792 Application/Control Number: 18/006,575 Page 3 Art Unit: 3792 Application/Control Number: 18/006,575 Page 4 Art Unit: 3792 Application/Control Number: 18/006,575 Page 5 Art Unit: 3792 Application/Control Number: 18/006,575 Page 6 Art Unit: 3792 Application/Control Number: 18/006,575 Page 7 Art Unit: 3792 Application/Control Number: 18/006,575 Page 8 Art Unit: 3792
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