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 .
Election/Restrictions
Applicant’s election without traverse of Species B, which reads upon claims 1-3 and 5-12, in the reply filed on 09/02/2025 is acknowledged.
Response to Arguments
Applicant's arguments filed 02/11/2026 have been fully considered but they are not persuasive.
In the Remarks received 02/11/2026, Applicant argues that the claimed invention would not be rendered obvious to one of ordinary skill in the art in view of the prior art presented in the previous Office Action.
Applicant argues that there is not the requisite incentive or motivation to combine the previously presented prior art, and that the combination of references does not disclose all of the limitations of the claimed invention. Each of Applicant’s arguments A-C are addressed below.
Applicant argues that Noonan fails to disclose the body of claim 1
Applicant argues that Noonan does not disclose the body of the non-contact marking device and that Examiner’s assertion that the Noonan’s depiction of laser pointer 50 as a 2-dimensional rectangle may be assumed to be a 3-dimensional rectangular prism is incorrect. Examiner maintains that it is a fair assumption for the 2-dimensional rectangular representation to be assumed to be a 3-dimensional rectangular prism. However, even if Applicant’s assertion is correct and the laser pointer may have a cylindrical body represented by the rectangle in the figure, the shape of the body of the device does not create any patentable distinction between the device of the prior art and the claimed invention. Regardless of the shape of the laser pointer depicted by Noonan, should it perform the function of the claimed invention and be coaxially aligned with a longitudinal axis of a tool guide when its body is at least partially inserted into the guide slot of the scalpel guide when the scalpel guide is inserted into the tool guide, then the laser pointer of Noonan teaches the limitations of the claimed device. A change in shape would merely be a matter of choice which a person of ordinary skill in the art would have found obvious. See MPEP 2144.04(IV), In re Dailey, 357 F.2d 669.
Applicant also argues that Noonan does not teach a ‘scalpel guide’ or ‘the guide slot of the scalpel guide while the scalpel is inserted in the tool guide of the surgical system,’ however it can be appreciated that with respect to the claimed non-contact marking device of claim 1, the limitations of the non-contact marking device ‘being configured to project light from the bottom face of the body such that the light projected by the marking device is coaxially aligned with a longitudinal axis of a tool guide of a surgical system when the body of the non-contact marking device is at least partially inserted in the guide slot of the scalpel guide while the scalpel guide in inserted in the tool guide of the surgical system,’ reflects a statement of intended use of the non-contact marking device. The features of the scalpel guide having a guide slot and the tool guide are not positively recited with respect to the structure of the non-contact marker itself. Therefore, any device which fulfills the structural limitations as presented in the claim, may fairly qualify as satisfying the intended use.
Applicant argues that Noonan fails to disclose the marking device of claim 1
Applicant argues that Noonan does not each a marking device configured to project light from the bottom face of the body; or configured to project light coaxially aligned with a longitudinal axis of a tool guide. Examiner argues that Noonan does teach a marking device configured to project light coaxially with a tool guide, as shown in Noonan Fig. 1. Examiner also points to Noonan paragraph [0036], which dates ‘end effector 45 is structurally configured as known in the art to hold laser pointer 50 whereby a laser bean LB emitted by the laser pointer 50a is aligned with a longitudinal axis of the end-effector holder 45.’
As noted above, Applicant also argues that Noonan does not teach a ‘scalpel guide’ or ‘the guide slot of the scalpel guide while the scalpel is inserted in the tool guide of the surgical system,’ however it can be appreciated that with respect to the claimed non-contact marking device of claim 1, the limitations of the non-contact marking device ‘being configured to project light from the bottom face of the body such that the light projected by the marking device is coaxially aligned with a longitudinal axis of a tool guide of a surgical system when the body of the non-contact marking device is at least partially inserted in the guide slot of the scalpel guide while the scalpel guide in inserted in the tool guide of the surgical system,’ reflects a statement of intended use of the non-contact marking device. The features of the scalpel guide having a guide slot and the tool guide are not positively recited with respect to the structure of the non-contact marker itself. Therefore, any device which fulfills the structural limitations as presented in the claim, may fairly qualify as satisfying the intended use. The laser pointer 50 taught by Noonan is configured to be inserted into a tool guide.
Applicant argues that Dhupar fails to disclose the shoulder of claim 1
Applicant argues that Dhupar fails to disclose the body of the marking device of claim 1, including the bottom face, top face, a first face, a second face separated a first predetermined distance from the first face, a first side, and a second side separated a second predetermined distance from the first time; and a shoulder extending outwardly from the body. As stated above with respect to the body taught by Noonan, the shape of the body of the device does not create any patentable distinction between the device of the prior art and the claimed invention. Regardless of the shape of the laser pointer depicted by Dhupar, should it perform the function of the claimed invention and be coaxially aligned with a longitudinal axis of a tool guide when its body is at least partially inserted into the guide slot of the scalpel guide when the scalpel guide is inserted into the tool guide, then the laser pointer of the prior art teaches the limitations of the claimed device. A change in shape would merely be a matter of choice which a person of ordinary skill in the art would have found obvious. See MPEP 2144.04(IV), In re Dailey, 357 F.2d 669.
The light emitting device taught by Dhupar teaches a shoulder extending out from the body, as shown in Fig. 2 and annotated below in the Claim Rejections section. Applicant incorrectly states that Examiner cites element 74 of Dhupar as the marking device shoulder. The marking device shoulder as recited by the Examiner is the unlabeled shoulder of light source 20 and denoted in the annotated figure below in the Claim Rejections section.
With this in consideration, the rejection is maintained.
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed 11/19/2024 has been considered by the Examiner.
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.
Claim(s) 1, 3, 5, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noonan et al (US 20200246085 A1) in view of Dhupar (US 20170112586 A1).
Regarding claim 1, Noonan teaches a non-contact marking device (50), comprising:
a body having a bottom face, a first face, a second face separated a first predetermined distance from the first face, a first side, and a second side separated a second predetermined distance from the first side (see Fig. 1, laser pointer 50 is depicted as a rectangle, which is assumed to be 3-dimensional, thereby having a bottom, first, and second face, and a first and second side),
the body (50) sized and shaped to be at least partially inserted into a guide slot of a scalpel guide (45);
a marking device configured to emit a light (LB), the marking device configured to project light from the bottom face of the body such that the light projected by the marking device is coaxially aligned with a longitudinal axis of a tool guide (TT) of a surgical system when the body of the non-contact marking device is at least partially inserted in the guide slot of the scalpel guide while the scalpel guide is inserted in the tool guide of the surgical system. See annotated Noonan Fig. 1 below, the figure has been enlarged for clarity.
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It should be noted that Examiner argues that it is a fair assumption for the 2-dimensional rectangular representation to be assumed to be a 3-dimensional rectangular prism. However, regardless of the representation in the figure, the shape of the body of the device does not create any patentable distinction between the device of the prior art and the claimed invention. Regardless of the shape of the laser pointer depicted by Noonan, should it perform the function of the claimed invention and be coaxially aligned with a longitudinal axis of a tool guide when its body is at least partially inserted into the guide slot of the scalpel guide when the scalpel guide is inserted into the tool guide, then the laser pointer of Noonan teaches the limitations of the claimed device. A change in shape would merely be a matter of choice which a person of ordinary skill in the art would have found obvious. See MPEP 2144.04(IV), In re Dailey, 357 F.2d 669.
Noonan is silent regarding a shoulder extending outwardly from the body and formed a predetermined distance from the bottom face of the body and configured to limit a distance the body may be at least partially inserted into the guide slot of the scalpel guide.
Dhupar teaches a non-contact marking device (20) comprising:
a body having a bottom face, a first face, a second face separated a first predetermined distance from the first face, a first side, and a second side separated a second predetermined distance from the first side (see Dhupar Figs. 1 and 2)
a shoulder extending outwardly from the body and formed a predetermined distance from the bottom face of the body and configured to limit a distance the body may be at least partially inserted into the guide slot of the scalpel guide (see Dhupar Annotated Fig. 2 below; unlabeled shoulder structure of light source 20 and tool guide holder 36); and
a marking device configured to emit a light (22), the marking device configured to project light from the bottom face of the body (see Dhupar [0035-0037], Annotated Fig. 2 below).
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It would have been obvious for one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the non-contact marking device as taught by Noonan with the shoulder structure as taught by Dhupar. One of ordinary skill in the art would have been motivated to make this modification in order to hold and attach the light source to its support structure when the support and non-contact marking device are not integral (Dhupar [0040-0042]).
Regarding claim 3, Noonan and Dhupar teach the non-contact marking device of claim 1. Noonan further teaches wherein the marking device comprises a laser (see [0029]; optical end-effector in the form of a laser pointer 50).
Regarding claim 5, Noonan and Dhupar teach the non-contact marking device of claim 1. Noonan further teaches a power source supplying power to the marking device (see [0006]; robotic surgical system employs an optical end-effector).
Regarding claim 6, Noonan and Dhupar teach the non-contact marking device of claim 1. Noonan further teaches wherein the light (LB) includes a wavelength or range of wavelengths visible to a human eye (see [0029]; optical end effector in the form of a laser pointer 50).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noonan et al (US 20200246085 A1) in view of Dhupar (US 20170112586 A1) and Barmes (US 20210059769 A1).
Regarding claim 2, Noonan and Dhupar teach the non-contact marking device of claim 1. They are silent regarding a button electrically connected to the marking device and configured to switch the marking device from an off state wherein the marking device does not emit the light to an on state wherein the marking device emits the light.
Barmes teaches a non-contact marking device (see Barmes Figs. 8-9, [0118]; laser device 132) configured to emit a light from a bottom surface (see Barmes Fig. 11, [0122]; laser device 136 projecting laser line or point 138 from bottom surface) further comprising a button (164) electrically connected to the marking device and configured to switch the marking device from an off state wherein the marking device does not emit the light to an on state wherein the marking device emits the light (see Barmes Figs. 19-21, [0152]; the switch module 164, which is illustrated as a button in Fig. 19, is electrically connected to a power source and configured to selectively provide electrical power in order to emit laser line 138).
It would have been obvious for one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the non-contact marking device of Noonan and Dhupar with the control button as taught by Barmes. One of ordinary skill in the art would have been motivated to make this modification in order to selectively provide electrical power to the laser module to control when the laser is in an on state where light it emitted or an off state where light is not emitted (Barmes [0152]).
Allowable Subject Matter
Claims 7-12 allowed.
Claim 7 is found to be patentable over the closest prior art of Noonan et al (US 20200246085 A1), Dhupar (US 20170112586 A1), and Barmes (US 20210059769 A1).
Noonan teaches a non-contact marking device, comprising:
a body (50) having a lower face and an upper face,
the body sized and shaped to be at least partially inserted into an aperture of a tool guide of a surgical system (see Noonan [0036]; end effector holder 45 is configured to hold the body of laser pointer 50).
Dhupar teaches a non-contact marking device (20) comprising:
a body having a bottom face, a first face, a second face separated a first predetermined distance from the first face, a first side, and a second side separated a second predetermined distance from the first side (see Dhupar Figs. 1 and 2)
a shoulder extending outwardly from the body and formed a predetermined distance from the bottom face of the body and configured to limit a distance the body may be at least partially inserted into the guide slot of the scalpel guide (see Dhupar Annotated Fig. 2 above; unlabeled shoulder structure of light source 20 and tool guide holder 36); and
a marking device configured to emit a light (22), the marking device configured to project light from the bottom face of the body (see Dhupar [0035-0037], Annotated Fig. 2 above; light source 20 emits a laser 22 towards the target field, the laser 22 emitted from the bottom face of light source 20).
Barmes teaches a non-contact marking device (see Barmes Figs. 8-9, [0118]; laser device 132) configured to emit a light from a bottom surface (see Barmes Fig. 11, [0122]; laser device 136 projecting laser line or point 138 from bottom surface) further comprising a button (164) electrically connected to the marking device and configured to switch the marking device from an off state wherein the marking device does not emit the light to an on state wherein the marking device emits the light (see Barmes Figs. 19-21, [0152]; the switch module 164, which is illustrated as a button in Fig. 19, is electrically connected to a power source and configured to selectively provide electrical power in order to emit laser line 138).
They are silent regarding the body of the non-contact marking device having:
a guide slot formed in and extending through the body from the upper face to the lower face, the guide slot sized and shaped to receive a body of a scalpel;
a top having an upper surface and a lower surface spaced a predetermined distance apart and connected to at least one of the body and the shoulder; and
a marking device supported by the top configured to emit a light through the guide slot, the marking device disposed in the lower surface of the top.
By virtue of their dependence on an allowable parent claim, claims 8-10 are also allowable.
Claim 11 is found to be patentable over the closest prior art of Noonan et al (US 20200246085 A1).
Noonan teaches a robotic surgical system comprising:
a robotic arm (see Noonan Fig. 1, [0029]; concentric arc robot 40);
a tool guide supported by the robotic arm (see Noonan Fig. 1, [0030]; robot arm 40 coupled to or integrated with an end-effector holder 45),
the tool guide comprising a tool support having a first end, a second end, an aperture extending through the tool support from the first end to the second end (see Noonan Fig. 1; end-effector holder 45 having a first and second end and an aperture extending throughout), and
a longitudinal axis extending through a center of the aperture from the first end to the second end (see Noonan Fig, 1, [0037]; end effector axis represented by LB); and
a controller in communication with the robotic arm (see Noonan Fig. 1, [0029]; robot controller 60a),
the controller having a non-transitory computer readable memory and a processor (see Noonan Fig. 1, [0045-0047]; registration module 62a),
the non-transitory computer readable memory storing at least one planned trajectory associated with a surgical procedure and processor executable instructions that, when executed, cause the processor to pass a first signal to the robotic arm causing the robotic arm to position the tool support a distance from a patient with the longitudinal axis of the tool support substantially coaxially aligned with the at least one planned trajectory (see Noonan [0032]; controller 60a commands movement of the robot system in order to position the end effector to the desired position); and
a non-contact marking device (50) comprising:
the body positioned within the aperture of the tool support, the body having a central axis (see Noonan Fig. 1, [0036]; end effector holder 45 is configured to hold the body of laser pointer 50); and a marking device configured to emit a light in a wavelength visible to a human eye (see [0029]; optical end effector output in the form of laser beam LB),
the marking device configured to emit light from the bottom face of the body such that the marking device is coaxially aligned with the central axis extending through a center of the body (see Noonan Fig. 1, [0036]; laser beam LB is emitted by laser pointer 50 in alignment with the longitudinal axis of end-effector holder 45).
Noonan is silent regarding a body having a first body portion having a first diameter extending from a bottom face to a first shoulder and a second body portion having a second diameter that is larger than the first diameter extending from the first shoulder to a second shoulder.
By virtue of its dependence on an allowable parent claim, claim 12 is also allowable.
Conclusion
THIS ACTION IS MADE FINAL. 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 ALISHA J SIRCAR whose telephone number is (571)272-0450. The examiner can normally be reached Monday - Thursday 9-6:30, Friday 9-5:30 CT.
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/A.J.S./Examiner, Art Unit 3792
/Benjamin J Klein/Supervisory Patent Examiner, Art Unit 3792
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