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 .
Response to Arguments
Applicant’s arguments filed on 09/08/2025 have been fully considered but are moot in view of a new grounds of rejection.
Claim Objections
Claim 9 is objected to for the following informalities:
In re claim 9, the limitation “wherein at least one of the proximity sensors is a capacitive sensor the configured to detect when the first end effector is in proximity to the second end effector”, should read “wherein at least one of the proximity sensors is a capacitive sensor configured to detect when the first end effector is in proximity to the second end effector”
Appropriate correction is required.
Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Invention I: Claims 1-6 and 9-10, drawn to a robotic surgical system, classified in A61B 34/20.
Invention II: Claims 7-8, drawn to a robotic surgical system, classified in A61B 2034/2055.
Inventions I and II are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). For example, Invention I recites “a first end effector axially rotatable relative to the first robotic manipulator arm to cause rotation of the first surgical instrument about its longitudinal axis” (claim 1), whereas Invention II does not. Additionally, Invention II recites “a processor having a memory storing a computer program that includes instructions executable by the processor to receive the image data corresponding to images captured by the camera and determine distance between the first end effector and the second end effector” (claim 7), whereas Invention I does not. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Invention I would require searching in at least A61B 34/20 along with a unique text search for the feature of “a first end effector axially rotatable relative to the first robotic manipulator arm to cause rotation of the first surgical instrument about its longitudinal axis”. Invention II would require searching in at least A61B 2034/2055 and a unique text search focusing on the feature of “a processor having a memory storing a computer program that includes instructions executable by the processor to receive the image data corresponding to images captured by the camera and determine distance between the first end effector and the second end effector”.
Moreover, it must be noted that the examination burden is not limited exclusively to a prior art search but also includes the effort required to apply the art by making and discussing all appropriate grounds of rejection. Multiple inventions, such as those in the present application, require additional reference material and further discussion for each additional feature addressed. Concurrent examination of the multiple inventions claimed would thus involve a significant burden even if all searches were coextensive, which they are not. See MPEP 808.02
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Kathleen A. Frost on 11/19/2025 a provisional election was made without traverse to prosecute Invention I, directed to claims 1, 2, 4-6 and 9-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7 and 8 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 112
Claim 6 is 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.
In re claim 6, the limitation “wherein the plurality of imagers are positioned on the first end effector and the second end effector”, is unclear. Specifically, it is unclear how the same set of imagers (i.e., “the plurality of imagers”) could be positioned on both the first end effector and the second end effector. For examination purposes, as best understood, the limitation “wherein the plurality of imagers are positioned on the first end effector and the second end effector” is being interpreted as “wherein the plurality of imagers are positioned on the first end effector and a plurality of imagers are positioned on the second end effector”. Examiner also notes that the limitation “wherein the plurality of imagers are positioned on the first end effector” is redundant given that the parent claim (claim 2) already requires “…a plurality of imagers on said first end effector”.
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.
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.
Claims 1, 2, 4, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Crawford et al. (US 2019/0000569) in view of Meglan et al. (US 2021/0153958), in view of Inoue (US 2018/0193102), in view of Ruiz Morales (US 2009/0024142).
In re claim 1, Crawford discloses a robotic surgical system (FIG. 20) comprising:
a first robotic manipulator arm (2008) having
a first base (2010) and
a first end effector (2010) configured to support a first surgical instrument having a longitudinal axis [0137, 0138],
the first base independently moveable on a floor of an operating room [0152];
a proximity sensor (2030A) positioned on the first robotic manipulator arm to detect proximity of the first robotic manipulator arm to a secondary object.
Crawford lacks:
the first end effector axially rotatable relative to the first robotic manipulator arm to cause rotation of the first surgical instrument about its longitudinal axis;
a second robotic manipulator arm having a second base and a second end effector configured to support a second surgical instrument;
each of the first base and the second base independently moveable on a floor of an operating room
a plurality of proximity sensors circumferentially positioned on the first end effector to detect proximity of the first end effector to the second end effector.
Meglan discloses a robotic surgical system that like Crawford is also capable of detecting collisions between a first surgical robot assembly (FIG. 4: 100a) and a secondary object (abstract). Examiner notes that Meglan discloses the secondary object being a second surgical robotic assembly (100b), as opposed to a patient as disclosed in Crawford. As shown in FIG. 2, each surgical robot assembly (100a, 100b; [0042]) of Meglan includes a robotic arm (3), moveable base (see wheels 150, 140), and one or more sensors (134) disposed along the periphery of the moveable base (FIG. 2; [0050]). Meglan further discloses that the sensors may optionally be located on other components of the robotic surgical assembly [0050], not just the moveable base as depicted in FIG. 2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the robotic surgical assembly of Crawford, to include a second robotic manipulator arm having a second base, and a second end effector configured to support a second surgical instrument, as taught by Meglan. One would have been motivated to make this modification because the addition of a second robotic manipulator arm would provide a surgeon with access to more than one surgical instrument. Accordingly, such a modification would yield a robotic surgical system that includes “each of the first base and the second base independently moveable on the floor of an operating room”.
Regarding the sensor being “positioned on the first end effector to detect proximity of the first end effector to the second end effector”. Inoue discloses a robotic surgical system (Fig. 1) that like Meglan and Crawford is capable of detecting proximity between a first robotic surgical assembly and a secondary object [0046. Inoue specifically discloses detecting proximity using a sensor (Fig. 2: 5) located on a first end effector (4, [0009]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the proximity sensor of the proposed combination, to be positioned on the first end effector, as taught by Inoue. One would have been motivated to make this modification because placing a sensor on an end effector is known, and the result of the modification (i.e., proximity detection) is reasonably predictable. Moreover, one of ordinary skill in the art would have the ability to choose a sensor location that would best meet their needs. Accordingly, such a modification would make it possible “to detect proximity of the first end effector to the second end effector”.
Regarding the limitations “a plurality of sensors circumferentially positioned…”. As discussed in paragraph 22 above, Meglan discloses placing a plurality of sensors peripherally placed along a component of the robotic surgical system [0050]. It would have been obvious to one of ordinary skill in the art to modify end effector, taught by the proposed combination, to include a plurality of sensors circumferentially positioned, as taught by Meglan. One would have been motivated to make this modification because the circumferential arrangement ensures that the relative pose or orientation of the end effector can be properly determined (Meglan, [0050]).
Regarding the limitation “the first end effector axially rotatable relative to the first robotic manipulator to cause rotation of the first surgical instrument about its longitudinal axis”. Ruiz Morales discloses a robotic surgical system (FIG. 3) that like Meglan and Crawford includes a robotic arm (26), an end effector (30), and a surgical instrument (18) coupled to the end effector. Ruiz Morales further discloses the surgical instrument being rotatable (indicated by arrows surrounding 18) about its longitudinal axis (Fig. 3: “Z”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first end effector of the proposed combination, to cause rotation of the first surgical instrument about its longitudinal axis, as taught by Ruiz Morales. One would have been motivated to make this modification because doing so would provide a surgeon with an additional degree of freedom to utilize during a surgical operation.
In re claim 2, the proposed combination does not yield wherein the plurality of proximity sensors comprise a plurality of imagers on said first end effector.
Crawford further discloses optionally using a variety of different sensor types to detect proximity [0160]. Some specific examples disclosed by Crawford include: a pressure sensor [0161], a load cell or switch [0162], a light source and a light sensor [0163], an electro-conductive pad system [0164], a distance ranging circuit [0165], and a camera system [0167].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the plurality of proximity sensors on the first end effector of the proposed combination, to comprise a plurality of imagers, as taught by Crawford. One would have been motivated to make this modification because the sensors of the proposed combination, and the imagers taught by Crawford both detect proximity. Moreover, one of ordinary skill in the art would have the ability to choose the sensor that would best meet their needs.
In re claim 4, the proposed combination does not yield
wherein the system further includes a plurality of light emitters on the second end effector.
It would have been obvious to one of ordinary skill in the art to modify the second robotic manipulator arm of the proposed combination, to include a plurality of proximity sensors on the second robotic manipulator arm, as taught by Meglan (see paragraph 22 above). One would have been motivated to make this modification because doing so would help prevent potential collisions between the second robotic manipulator arm and the surrounding robotic surgical system.
Regarding the sensors being positioned “on the second end effector”. For substantially the same reasons as described above (In re claim 1, paragraphs 24-25 above), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the proximity sensors of the proposed combination, to be positioned on the first end effector, as taught by Inoue.
Regarding the limitation “a plurality of light emitters”, for substantially the same reason described above (In re claim 2, paragraph 31), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the proximity sensors of the proposed combination to be a plurality of light emitters, as taught by Crawford.
In re claim 6, the proposed combination yields (all mapping directed to Crawford),
wherein the plurality of imagers are positioned on the first end effector (see above In re claim 2)
wherein the system further includes a plurality of light emitters on the second end effector (see above In re claim 4)
The proposed combination lacks:
wherein the plurality of imagers are positioned on the first end effector and the second end effector,
wherein the system further includes a plurality of light emitters on each of the first end effector and the second end effector.
Regarding the limitation “wherein the plurality of imagers are positioned on the first end effector and the second end effector”, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify some of the plurality of light emitters on the second end effector to be imagers, as taught by Crawford. One would be motivated to make this modification to ensure that the robotic system could properly track the proximity between the second end effector and the first end effector. Accordingly, such a modification would yield “wherein the plurality of imagers are positioned on the first end effector and the second end effector”.
Regarding the limitation “wherein the system further includes plurality of light emitters on each of the first end effector and the second end effector”. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify some of the plurality of imagers on each of the first end effector (see above section Claim Rejection 112 (In re claim 6)) to be *light emitters, as taught by Crawford. One would be motivated to make this modification to ensure that the robotic system could properly track/visualize the first end effector. Accordingly, such a modification would yield “wherein the system further includes a plurality of light emitters on each of the first end effector and the second end effector”.
*See paragraph 20 which discloses the different sensor types taught by Crawford, one being “a light source and a light sensor.”
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Crawford et al. (US 2019/0000569), in view of Meglan et al. (US 2021/0153958), in view of Inoue (US 2018/0193102), in view of Ruiz Morales (US 2009/0024142), in view of Hares (US 2017/0360520).
In re claim 9, the proposed combination yields wherein at least one of the proximity sensors is a specific sensor configured to detect when the first end effector is in proximity to the second end effector (see modification above In re claim 1).
The proposed combination does not disclose the specific sensor being a capacitive sensor and thus lacks: wherein at least one of the proximity sensors is a capacitive sensor the configured to detect when the first end effector is in proximity to the second end effector.
Hares discloses an analogous robotic manipulator arm (FIG. 4) that also a proximity sensor (404) to detect the proximity between the robotic manipulator arm and a surgical instrument (abstract). Hares further discloses the proximity sensor optionally being a magnetic sensor, a capacitive sensor, an inductive sensor or an optical sensor [0046].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify at least one of the proximity sensors of the proposed combination to be a capacitive sensor as taught by Hares. One would have been motivated to make this modification because the two sensors (proximity, and capacitive) are known functional equivalents. Moreover, one of ordinary skill in the art would have the ability to choose the sensor that would best meet their needs.
In re claim 10, wherein at least one of the proximity sensors is an inductive sensor (Hares, [0046]: “proximity sensor may be… an inductive sensor”) configured to detect when the first end effector is in proximity (Hares, [0046]: “proximity sensor”) to the second end effector (see above In re claim 1).
Examiner notes that for substantially the same reasons as discussed above In re claim 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify at least one of the proximity sensors of the proposed combination to be an inductive sensor, as taught by Hares.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Liu et al. (US 2020/0367977) discloses a robotic surgical system (FIG. 2) that uses capacitive sensors to avoid/prevent collisions (abstract).
Hares (US 2021/0267700) discloses a robotic surgical system that uses position and torque sensors to detect/prevent collisions between robotic arms (abstract).
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.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVIA WALKER whose telephone number is (571)272-7052. The examiner can normally be reached M-F: 7-4pm CT.
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, David Hamaoui can be reached at (571)-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLIVIA WALKER/Examiner, Art Unit 3796
/DAVID HAMAOUI/SPE, Art Unit 3796