DETAILED ACTION
The following Office Action is in response to the Response to Restriction filed on April 3, 2026. Claims 1-9 and 24-38 are currently 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 .
Election/Restrictions
Applicant’s election of Group I in the reply filed on April 3, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11-21 were cancelled in response to the restriction requirement. Election was made without traverse in the reply filed on April 3, 2026.
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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitation of “the grip locator comprises a pair of arms, wherein in the open state the arms are further apart than in the closed state” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 34 is objected to because of the following informalities: Line 7 of the claim recites the phrase “to without changing the pose”, wherein the word “to” appears to be erroneously inserted. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-38 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Concerning claim 1, line 13 of the claim recites the limitation of “the bodily tissue”. There is a lack of antecedent basis for this limitation in the claim, making it indefinite as to what bodily tissue this is referring to. For the purposes of compact prosecution, the limitation will be interpreted as reading “bodily tissue”.
Concerning claim 9, line 2 of the claim recites the limitation of “the corner”. There is a lack of antecedent basis for this limitation in the claim given it is dependent on claim 1. The limitation of “at least one corner” is instead included in claim 8. For the purposes of compact prosecution, claim 9 will be interpreted as being dependent on claim 8, and the limitation will be interpreted as “the at least one corner”.
Concerning claim 34, lines 6-7 of the claim recite the limitations of “the information” and “the end effector fitting”. There is a lack of antecedent basis for this limitation in the claims. For the purposes of compact prosecution, the limitations will be interpretation as “information and to couple an end effector fitting”.
Concerning claim 38, line 1 of the claim recites the limitation of “the inserter”. There is a lack of antecedent basis for this limitation in the claim, and it cannot be determined what this limitation is referring to. For the purposes of compact prosecution, the limitation will be interpreted as “an inserter”.
Claims 2-38 are further rejected for being dependent on an indefinite claim.
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) 1-9 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ravi et al. (US 2017/0312546, hereinafter Ravi) in view of Ahluwalia (US 2017/0112535).
Concerning claim 1, the Ravi et al. prior art reference teaches a positioning tool (Figure 1; 100) for assisting treatment of a subject in an external radiotherapy programme comprising two or more external radiotherapy treatment sessions comprising: a steering guide (Figure 1; 108) having a proximal and distal end comprising: a rigid end effector shaft (Figure 4; 114) at the distal end configured for insertion into a canal of the subject ([¶ 0029]), and a rigid handle portion disposed at the proximal end in fixed relation to the effector shaft for controlling the position and/or direction of the effector shaft (Figure 4; 116), wherein the positioning tool is configured to move and/or fix the canal and bodily tissue for the external radiotherapy treatment session: the handle portion is provided with a grip locator (Figure 3; 126) configured for position-repeatable cooperation with a gripper (Figure 1; 138), wherein the gripper has an open state (Figure 7; locking handle 136 does not engage grip locator) and a closed state (Figure 7; locking handle 136 engages grip locator); wherein the grip locator is configured to be seated within the gripper in the closed state, in which the movements of the seated grip locator relative to the gripper are limited and prevented, but it does not specifically the gripper being part of a robotic arm.
However, the Ahluwalia reference teaches a positioning tool for retracting or immobilizing an organ during gynecological procedures similar to that of the Ravi reference, wherein the positioning tool (Figure 2A; 30) may include a grip locator (Figure 16C; 31) that may be used in cooperation with a gripper of an adjustment member (Figure 16C; 200) as in the Ravi reference, wherein the Ahluwalia reference alternatively teaches that the adjustment member may be part of a robotic arm (Figure 16D; 220).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the gripper of the Ravi reference be associated with an adjustment member in the form of a robotic arm as in the Ahluwalia reference given a robotic arm has been presented as an alternative to a hand-operated arm that achieves a full six degrees of freedom motion needed to perform gynecological manipulation procedures (Ahluwalia; [¶ 0111]).
Concerning claim 2, the combination of the Ravi and Ahluwalia reference teaches the positioning tool according to claim 1, wherein the Ravi reference further teaches the grip locator comprising a pair of arms (Figure 5; locking spindle 132 and Figure 7; 136 locking handle together may be interpreted as a pair of arms), wherein in the open state the arms are further apart than the closed state.
Concerning claims 3-6, the combination of the Ravi and Ahluwalia reference teaches the positioning tool according to claim 1, wherein the Ravi reference further teaches the grip locator comprising one or more movement limiters or stop members in the form of notches each having a direction (Figure 3; 128), configured to cooperate with one or more complementary movement limiter members or stop members of the closed gripper ([¶ 0036], surface of opening 134 that abuts grooves of the grip locator may be interpreted as a complementary movement limiter/stop member), thereby limiting and preventing movements of the seated grip locator relative to the gripper.
Concerning claim 7, the combination of the Ravi and Ahluwalia reference teaches the positioning tool according to claim 1, wherein the Ravi reference further teaches the grip locator comprising one or more corners disposed along an axial direction of the proximal end of the handle portion (Figure 3; 26 | [¶ 0035], grip locator defined as square shaped member).
Concerning claim 8, the combination of the Ravi and Ahluwalia reference teaches the positioning tool according to claim 1, wherein the Ravi reference further teaches the grip locator comprising at least one notch (Figure 3; 128) and at least one corner (Figure 3; 126), where the at least one notch and at least one corner have different mutual directions.
Concerning claim 9, the combination of the Ravi and Ahluwalia reference teaches the positioning tool according to claim 1, wherein the Ravi reference further teaches the at least one notch being provided within a longitudinal span of the at least one corner (Figure 3; 128).
Concerning claim 33, the combination of the Ravi and Ahluwalia reference teaches a system comprising: the positioning tool according to claim 1, and the robotic arm (Ahluwalia; Figure 16D; 220), wherein the gripper in the closed state is configured as a rotation and/or movement limiter, limiting and preventing rotation and/or movement of the grip locator seated within the gripper relative to the gripper (Ravi; [¶ 0036]).
Claim(s) 24 and 35-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ravi et al. (US 2017/0312546, hereinafter Ravi) in view of Ahluwalia (US 2017/0112535) as applied to claims 1-9 and 33 above, and further in view of Braun et al. (US 2010/0305406, hereinafter Braun).
Concerning claim 24, the combination of the Ravi and Ahluwalia reference teaches a system comprising: the positioning tool according to claim 1, but does not specifically teach the rigid effector shaft and/or the rigid handle portion provided with one or more position-determining radio transponders whose positions can be determined and tracked using a spatial transponder detector.
However, the Braun reference teaches a positioning tool for retracting or immobilizing an organ during gynecological procedures, therein being in the same field of endeavor as the Ravi and Ahluwalia references, wherein the Braun reference teaches that the positioning tool may include a radio transponder to transmit data and images to an external receiving and display system which may be used as a spatial transponder detector ([¶ 0052]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the Ravi and Ahluwalia combination include the radio transponders of the Braun reference to allow an external receiving and display system to display of data, control, and other functions of the positioning tool during the procedure (Braun; [¶ 0052]).
Concerning claim 35, the combination of the Ravi and Ahluwalia reference teaches the positioning tool according to claim 1, but does not specifically teach the steering guide being provided with an image capture system configured for capture of images from a distal tip of the effector shaft allowing the effector shaft to be inserted into the entrance to the canal under guidance of the capture images.
However, the Braun reference teaches a positioning tool for retracting or immobilizing an organ during gynecological procedures, therein being in the same field of endeavor as the Ravi and Ahluwalia references, wherein the Braun reference teaches a steering guide including an image capture system configured for capture of images from a distal tip of the effector shaft allowing the effector shaft to be inserted into the entrance to the canal under guidance of the capture images ([¶ 0011]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention have the Ravi and Ahluwali combination include an image capture system as in the Braun reference to allow for the transmission of data to an external source with regards to the patient anatomy (Braun; [¶ 0015-0016]).
Concerning claim 36, the combination of the Ravi, Ahluwalia, and Braun references as discussed above teaches the positioning tool according to claim 35, wherein the Braun reference further teaches that the imaging capture system may further include an optical system that may receive light, therein defining an image inlet port (Braun; [¶ 0060]).
Concerning claim 37, the combination of the Ravi, Ahluwalia, and Braun references as discussed above teaches the positioning tool according to claim 35, wherein the Braun reference further teaches that the imaging capture system may further include an illumination source, such as LEDs, therein defining one or more outlet ports (Braun; [¶ 0013]).
Concerning claim 38, the combination of the Ravi, Ahluwalia, and Braun references as discussed above teaches the positioning tool according to claim 35, wherein the Ahluwalia reference further teaches an inserter (Figure 16D; 221).
Claim(s) 25 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ravi et al. (US 2017/0312546, hereinafter Ravi) in view of Ahluwalia (US 2017/0112535) as applied to claims 1-9 and 33 above, and further in view of Mantri et al. (US 2020/0360100, hereinafter Mantri).
Concerning claims 25 and 26, the combination of the Ravi and Ahluwalia reference teaches the positioning tool according to claim 1, but does not specifically teach the handle portion being provided with a docking beacon configured to provide information as to the position.
However, Mantri reference teaches a positioning tool for a probe for gynecological procedures that may be controlled via a robotic arm, therein being in the same field of endeavor as the Ravi and Ahluwalia references, wherein the Mantri reference teaches that the probe may include a docking beacon configured to provide information as to the position of the probe (Figure 8B; 830), wherein the beacon may be a passive docking beacon comprising fiducials, therein defining predefined geometric shapes that are recognizable by a vision guided system of the robotic arm ([¶ 0238]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the handle portion of the rigid effector shaft of the Ravi and Ahluwalia reference include the docking beacon of the Mantri reference to allow the positioning tool to confirm to a user that it is properly engaged with the robotic arm (Mantri; [¶ 0098]).
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ravi et al. (US 2017/0312546, hereinafter Ravi) in view of Ahluwalia (US 2017/0112535) and Mantri et al. (US 2020/0360100, hereinafter Mantri) as applied to claims 25 and 26 above, and further in view of Frushour (US 2020/0214770).
Concerning claim 27, the combination of the Ravi, Ahluwalia, and Mantri references as discussed above teaches the positioning tool according to claim 26, but does not specifically teach the docking beacon comprising a plurality of spheres.
However the Frushour reference teaches a device including fiducial markers that may be spherical ([¶ 0029]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the docking beacon of the Ravi, Ahluwalia, and Mantri combination have spherical fiducials as in the Frushour reference given the Frushour reference teaches that spheres are a suitable shape for a fiducial marker (Frushour; [¶ 0029]).
Claim(s) 28-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ravi et al. (US 2017/0312546, hereinafter Ravi) in view of Ahluwalia (US 2017/0112535) and Mantri et al. (US 2020/0360100, hereinafter Mantri) as applied to claims 25 and 26 above, and further in view of Braun et al. (US 2010/0305406, hereinafter Braun).
Concerning claim 28, the combination of the Ravi, Ahluwalia, and Mantri references as discussed above teaches the positioning tool according to claim 25, wherein the Mantri reference further teaches that the docking beacon comprises an active docking beacon that allows the position and/or orientation of the handle portion to be determined ([¶ 0099]), but it does not specifically teach the active docking beacon configured to wirelessly emit information.
However, the Braun reference teaches that a positioning tool that may include a radio transponder to wirelessly transmit data and images to an external receiving and display system (Braun; [¶ 0024]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the active docking beacon of the Ravi, Ahluwalia, and Mantri combination be configured to wirelessly emit information as in the Braun reference given the Braun reference teaches it as a known manner of transmitting data to a data processing unit that is alternative to a wired connection (Braun; [¶ 0024]).
Concerning claim 29, the combination of the Ravi, Ahluwalia, Mantri, and Braun references as discussed above teaches the positioning tool according to claim 28, wherein the Mantri reference further teaches that the active docking beacon may include a built-in power source (Mantri; [¶ 0162]).
Concerning claim 30, the combination of the Ravi, Ahluwalia, Mantri, and Braun references as discussed above teaches the positioning tool according to claim 28, wherein the Mantri reference further teaches the docking beacon comprising a solid state gyroscope (Mantri; [¶ 0133]).
Concerning claim 31, the combination of the Ravi, Ahluwalia, Mantri, and Braun references as discussed above teaches the positioning tool according to claim 28, wherein the Mantri reference further teaches the active docking beacon being an array of transponders (Mantri; [¶ 0493]), wherein Braun reference further teaches that the transponders may be radio transponders (Braun; [¶ 0052]).
Concerning claim 32, the combination of the Ravi, Ahluwalia, Mantri, and Braun references as discussed above teaches the positioning tool according to claim 28, wherein the Mantri reference teaches that components of the device may be disassembled or portable or both (Mantri; [¶ 0162]), therein making it obvious to have the docking beacon detachable form the handle portion.
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ravi et al. (US 2017/0312546, hereinafter Ravi) in view of Ahluwalia (US 2017/0112535) as applied to claims 1-9 and 33 above, and further in view of Cohen et al. (US 2017/0071688, hereinafter Cohen).
Concerning claim 34, the combination of the Ravi and Ahluwalia references teaches the system according to claim 33, but does not specifically teach a processing unit.
However, the Cohen reference teaches a robotic surgical system that may be used in uterine procedures, wherein the robotic system may include a processing unit comprising at least one processor and a memory ([¶ 0200]), wherein the processing unit is configured to control movement of the robotic arm ([¶ 0199]), wherein the processing unit is configured to adjust a pose of the end effector in real-time as it approaches a handle portion using information to couple an end effector fitting to the handle portion without changing the pose of the steering guide already inserted in the subject canal (processing unit may automate movement [¶ 0200], and may further adjust to feedback [¶ 0778]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the surgical system of the Ravi and Ahluwalia combination include the processing unit of the Cohen reference to allow the robotic system to operate automatically as an alternative to manual control of the system (Cohen; [¶ 0199]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Mantri et al. reference (US 2021/0401521) and Mantri et al. reference (US 2021/0405122) both teach uterine probes attachable to a robotic arm via a docking beacon; the Prior et al. reference (US 2021/0282814) teaches a robotically operable uterine manipulator; and the Carrascosa reference (US 2012/0265058) teaches a uterine examination device including an imaging system and a gripper.
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/MARTIN T TON/
Examiner, Art Unit 3771 6/8/2026
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