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 .
Status of Claims
Amendments filed 12/25/2025 have been entered. Claims 1-20 are pending, claims 5, 12, 17, and 20 are withdrawn from consideration, and claims 1-4, 6-11, 13-16, 18 and 19 are currently under consideration for patentability under 37 CFR 1.104
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.
This application includes one or more claim limitations that are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Such claim limitation(s) is/are:
positioning means for positioning the virtual target object model image displayed on the monitor at a determined position in claim 1;
rotation means for rotating the virtual target object model image displayed on the monitor at the determined position in claim 1;
positioning means configured to position a virtual target object model image displayed on the monitor at a determined position in claim 13; and
rotation means configured to rotate the virtual target object model image displayed on the monitor at the determined position in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 13-16 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reinstein et al. (U.S. 2018/0280100).
With respect to claim 13, Reinstein et al. teaches an adapter device (220) for a control grip of a surgical instrument (FIG. 2), the adapter device comprising:
positioning means (208) configured to position a virtual target object model image of a target object displayed on a monitor of a surgical system at a determined position;
rotation means (206) configured to rotate the virtual target object model image displayed on the monitor at the determined position.
With respect to claim 14, Reinstein et al. teaches the positioning means comprises at least one button (208).
With respect to claim 15, Reinstein et al. teaches the at least one button comprises a pair of buttons (208) for controlling a horizontal movement of the virtual target object model image displayed on the monitor (intended use).
With respect to claim 16, Reinstein et al. teaches the at least one button comprises a pair of buttons (208) for controlling a vertical movement of the virtual target object model image displayed on the monitor (intended use).
With respect to claim 19, Reinstein et al. teaches a fastener for fastening the adapter device onto the control grip (FIG. 3).
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) 1-4 and 6-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katsuki et al. (WO 2021/256168) in view of Reinstein et al. (U.S. 2018/0280100).
For the purposes of examination US 20230222740 will be relied upon as the English language equivalent of Katsuki et al.
With respect to claim 1, Katsuki et al. teaches a surgical system comprising:
a surgical instrument (5001) comprising:
a shaft (5003) with a distal end and a proximal end,
an image sensor (5009) positioned at the distal end of the shaft, the image sensor being configured to capture images of a target object of a living object (para [0082]), and
a control grip (5005) is arranged at the proximal end of the shaft for controlling at least one function of the surgical instrument,
a monitor (5041) for displaying the images,
a controller (5037) comprising hardware, the controller being configured to display each of a captured image of the target object (3d surgical image 206a, see para [0099]) and a virtual target object model image (3d model image 206d) of the target object on the monitor (S108, para [0130] for example),
However, Katsuki does not teach the control grip comprises the positioning means or rotation means.
With respect to claim 1, Reinstein et al. teaches a surgical system comprising:
a surgical instrument (202) comprising:
a control grip is arranged at the proximal end of the shaft for controlling at least one function of the surgical instrument (FIG. 2 for example),
wherein the control grip comprises:
positioning means (208) for positioning the virtual target object model image displayed on the monitor at a determined position, and
rotation means (206) for rotating the virtual target object model image displayed on the monitor at the determined position.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify Katsuki et al. to utilize the controller device on the control grip as taught by Reinstein et al. in order to give the user a greater range of motion and overall freedom (para [0043] of Reinstein et al.).
With respect to claim 2, Reinstein et al. teaches the positioning means comprises at least one button (208).
With respect to claim 3, Reinstein et al. teaches the at least one button comprises a pair of buttons (208) for controlling a horizontal movement of the virtual target object model image displayed on the monitor (intended use).
With respect to claim 4, Reinstein et al. teaches the at least one button comprises a pair of buttons (208) for controlling a vertical movement of the virtual target object model image displayed on the monitor (intended use).
With respect to claim 6, Katsuki et al. teaches a trackball is a known rotation means (para [0042]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify would be obvious to modify the trackpad of Reinstein et al. to be a trackball in the manner taught by Katsuki et al. because it is a simple substitution of one known user input element for another, and the results of such a substitution would have been predictable.
With respect to claim 7, Reinstein et al. teaches the positioning means and the rotation means are provided on an adapter device connected to the control grip (FIG. 2).
With respect to claim 8, Reinstein et al. teaches the adapter device is configured to be attachably connected on the control grip (FIG. 2, 3).
With respect to claim 9, Reinstein et al. teaches a fastener for fastening the adapter device onto the control grip (FIG. 3).
With respect to claim 10, Katsuki et al. teaches the surgical instrument is configured as an endoscope (5001).
With respect to claim 11, Katsuki et al. teaches the controller is configured to display the virtual target object model image as a 3-D virtual target object model image (para [0040] for example).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reinstein et al. (U.S. 2018/0280100) in view of Katsuki et al. (WO 2021/256168).
For the purposes of examination US 20230222740 will be relied upon as the English language equivalent of Katsuki et al.
Reinstein et al. teaches an adapter as set forth above. While Reinstein et al. teaches a trackpad, Reinstein et al. does not teach a trackball.
With respect to claim 18, Katsuki et al. teaches trackballs are a known means of user input (para [0042]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify would be obvious to modify the trackpad of Reinstein et al. to be a trackball in the manner taught by Katsuki et al. because it is a simple substitution of one known user input element for another, and the results of such a substitution would have been predictable.
Response to Arguments
Applicant's arguments filed 12/25/2025 have been fully considered but they are not persuasive.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
With respect to claim 13, it is noted that the claim limitations Applicant argues are being interpreted under 35 U.S.C. 112(f). It is further noted that there is no processor recited in claim 13 and therefore processor related functionality is considered intended use.
Applicant’s arguments with respect to claim 1 are not persuasive at least in view of paragraph [0130] of Katsuki.
Conclusion
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.
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/ALEXANDRA L NEWTON/Primary Examiner, Art Unit 3799