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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-9, drawn to apparatus, classified in A61B 34/30.
II. Claims 10-18, drawn to method, classified in A61F 9/00736.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus can be used to practice another and materially different process. Specifically, it can be used in a surgical process in another anatomical structure other than the eye, such as the heart.
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:
An extensive search of multiple classifications would have to be conducted and applicable art for the two inventions would not necessarily be applicable to one another.
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 Marcus Simon on 11/13/25 a provisional election was made without traverse to prosecute the invention of the method, claims 10-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-9 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claims 10-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsao et al. (WO 2019/222228).
Regarding claim 10, an invention relating to a intraocular surgical robot, Tsao discloses (Fig. 16) a method for performing intraocular surgery on an eye of a patient using a tool (12) having a tip (Abstract & Par. 0032), the method comprising: securing the tool within a tool mount (10) of a robotic unit (1; Par. 00122); driving the robotic unit to insert the tool into the patient's eye such that entry of the tool into the patient's eye is via an incision point, and the tip of the tool is disposed within the patient's eye (Par. 0081, 00106, 00128, 00134); and using a computer processor (4), driving the robotic unit to perform at least a portion of a procedure on the patient's eye by moving the tip of the tool in a desired manner with respect to the eye such as to perform the portion of the procedure, while entry of the tool into the patient's eye is maintained fixed at the incision point (Par. 0030-0032, 00145, 00147).
Regarding claim 11, Tsao discloses the method according to claim 10. Tsao discloses further comprising using the computer processor: receiving the images of the patient's eye: detecting movement of the patient's eye in three dimensions, by analyzing the images; and in response to the detected movement of the patient's eye, driving the robotic unit to move the tip of the tool in a desired manner with respect to the eye such as to perform the portion of the procedure, while entry of the tool into the patient's eye is maintained fixed at the incision point (Par. 0087, 0095-0096, 00107-00108, 00122).
Regarding claim 12, Tsao discloses the method according to claim 10. Tsao further discloses wherein driving the robotic unit to perform at least a portion of a procedure on the patient's eye by moving the tip of the tool in a desired manner with respect to the eye such as to perform the portion of the procedure comprises driving the robotic unit to move the tool mount along x-, y-, and z-axes, as well as through pitch and yaw angular rotations, while entry of the tool into the patient's eye is maintained fixed at the incision point (Par. 00122-0123).
Regarding claim 13, Tsao discloses the method according to claim 12. Tsao further discloses wherein driving the robotic unit to move the tool mount along x-, y-, and z-axes, as well as through pitch and yaw angular rotations comprises driving the robotic unit to move the tool mount through a yaw angular rotation of plus/minus 25 degrees from a central orientation, while entry of the tool into the patient's eye is maintained fixed at the incision point (Par. 00122-00123).
Regarding claim 14, Tsao discloses the method according to claim 12. Tsao further discloses wherein driving the robotic unit to move the tool mount along x-, y-, and z-axes, as well as through pitch and yaw angular rotations comprises driving the robotic unit to move the tool mount through a pitch angular rotation of 60 degrees from a starting pitch, while entry of the tool into the patient's eye is maintained fixed at the incision point (Par. 00122-00123).
Regarding claim 15, Tsao discloses the method according to claim 10. Tsao further discloses wherein driving the robotic unit to perform at least a portion of a procedure on the patient's eye by moving the tip of the tool in a desired manner with respect to the eye such as to perform the portion of the procedure comprises driving the tool to roll with respect to the tool mount, while entry of the tool into the patient's eye is maintained fixed at the incision point (Par. 00122-00123 & 00146).
Regarding claim 16, Tsao discloses the method according to claim 15. Tsao further discloses wherein driving the tool to roll with respect to the tool mount comprises driving the tool to roll with respect to the tool mount through a roll angular rotation of plus/minus 80 degrees from a central position, while entry of the tool into the patient's eye is maintained fixed at the incision point (Par. 00122-00123 & 00146).
Regarding claim 17, Tsao discloses the method according to claim 10. Tsao further discloses wherein driving the robotic unit to perform at least a portion of a procedure on the patient's eye by moving the tip of the tool in a desired manner with respect to the eye such as to perform the portion of the procedure, while entry of the tool into the patient's eye is maintained fixed at the incision point comprises providing a dynamic remote center of motion that is located at the incision point and about which motion of the tool is centered (Par. 0057, 0087, 00122-00124).
Regarding claim 18, Tsao discloses the method according to claim 17. Tsao further discloses wherein providing the dynamic remote center of motion comprises providing a dynamic remote center of motion that moves in coordination with movement of the eye, to thereby maintain entry of the tool into the patient's eye fixed at the incision point, even as the patient's eye undergoes movement in three dimensions (Par. 0057, 0096-0098, 00108).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Chima Igboko whose telephone number is (571)272-8422. The examiner can normally be reached on Monday-Friday 9:00am-6:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Jackie Ho, at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.U.I/ Examiner, Art Unit 3771
/ASHLEY L FISHBACK/Primary Examiner, Art Unit 3771 November 15, 2025
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