DETAILED ACTION
Claims 1-20 are pending in this application.
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 .
Claim Objections
Claims 10, 13, 14 are objected to because of the following informalities:
Claim 10, line 7 reads as “the at N+1 input controllers” and should read as --the at least N+1 input controllers--.
Claim 13, line 2 reads as “the N+1 input controllers” and should read as --the at least N+1 input controllers--.
Claim 14, line 3 reads as “the at N+1 input controllers” and should read as --the at least N+1 input controllers--.
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 10-20 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.
Claim 10, line 5 recites the limitation "the cables". It is unclear if this refers to the previously recited “at least one of N+1 surgical cables” (in lines 3-4 of Claim 10) or additional cables. For examination purposes, the limitation will be read as --the at least one of N+1 surgical cables--.
Similarly, Claim 10, line 7 recites the limitation "the surgical cables". For examination purposes, the limitation will be read as --the at least one of N+1 surgical cables--.
Claim 12, line 4 recites the limitation "the input controllers". It is unclear if this refers to the previously recited “at least N+1 input controllers” (in line 3 of Claim 10) or additional input controllers. For examination purposes, the limitation will be read as --the at least N+1 input controllers--.
Claim 14, line 3 recites the limitation "the cables". It is unclear if this refers to the previously recited “at least one of N+1 surgical cables” or additional cables. For examination purposes, the limitation will be read as --the at least one of N+1 surgical cables--.
Claim 17 recites “the rotating at least one armature about a rotation shaft” lacks sufficient antecedent basis. For examination purposes, Claim 17 will be dependent on Claim 16 rather than Claim 15, since Claim 16 recites “rotating at least one armature about a rotation shaft” in line 2.
Claim 19, lines 2-3 recite “a first cable segment” and “a second cable segment”. It is unclear if the recited first and second cable segments are part of the previously recited “at least one of N+1 surgical cables” or are part of additional cables. For examination purposes, the limitations will be read as --a first cable segment of the at least one of N+1 surgical cables-- and --a second cable segment of the at least one of N+1 surgical cables--.
Similarly, Claim 20, lines 2-3 recite “a first cable segment” and “a second cable segment”. It is unclear if the recited first and second cable segments are part of the previously recited “at least one of N+1 surgical cables” or are part of additional cables. For examination purposes, the limitations will be read as --a first cable segment of the at least one of N+1 surgical cables-- and --a second cable segment of the at least one of N+1 surgical cables--.
Claims 11, 13, 15-18 are rejected due to their dependency on Claim 10.
Claim Rejections - 35 USC § 102
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 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 1, 3, 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jinno et al., hereinafter Jinno (U.S. Pub. No. 2008/0245175).
Regarding claim 1, Jinno discloses a method of manipulating a surgical effector of a surgical instrument (abstract), the method comprising:
actuating a first input controller 50b (Figures 7-8; [0087]) to control a length of a first cable segment (one side of cable 54 loop) to move the surgical effector 104 in at least one degree of freedom of movement (rotating/rolling about rotational axis Or; Id.)
actuating a second input controller 138 (Id.) to control a length of a second cable segment (the opposite side of cable 54 loop) to move the surgical effector in the at least one degree of freedom of movement (Id.);
moving a differential (including gear 168 forming “differential mechanism”; Figures 3, 7, [0149], [0165]) that couples the first and second input controllers together (Figures 7-8) to conserve a length of cable 54 between the first input controller 50b and the second input controller 138 (via a compensation control; [0107], [0108])
Regarding claim 3, Jinno discloses actuating the first and second input controllers comprises rotating the first and second input controllers about their respective rotation axes ([0087]; pulley 50b and gear 138 rotate about axes).
Regarding claim 7, Jinno discloses actuating the first and second input controllers comprising actuating a manipulator 10a (Id.).
Claims 1-4, 7-14, 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (U.S. Pub. No. 2014/0318288).
Regarding claim 1, Lee discloses a method of manipulating a surgical effector of a surgical instrument (Figures 1-2; manipulating end tool 120 of surgical instrument 100), the method comprising:
actuating a first input controller (first input unit 1311; Figure 4A, [0081], [0096], [0153]) to control a length of a first cable segment (portion of control wire 135J11; Figures 2, 4A, [0085]) to move the surgical effector (first jaw 121 of end tool) in at least one degree of freedom of movement (rotating in the direction of arrow YJ in Figure 2, or yaw direction);
actuating a second input controller (output unit 1313; Figure 4A, [0081], [0096], [0153]) to control a length of a second cable segment (other portion of control wire 135J11; [0085]) to move the surgical effector in the at least one degree of freedom of movement (rotating in the direction of arrow YJ in Figure 2, or yaw direction);
moving a differential (differential control pulleys 1313c/133d; Figure 4A, [0096]) to conserve a length of cable between the first input controller and the second input controller (Id.; the wire 135J11 is “unwound” as much as the wire 135J11 is “wound” around 1311 via the differential control pulleys 1313c/133d, and therefore a length of the cable 135J11 is conserved).
Regarding claim 2, Lee discloses the at least one degree of freedom comprises at least one of pitch, yaw (direction of arrow YJ in Figure 2, or yaw direction), and grip of the surgical effector.
Regarding claim 3, Lee discloses actuating the first and second input controllers comprises rotating the first and second input controllers 1311, 1313 about their respective rotation axes ([0084]).
Regarding claim 4, Lee discloses actuating the first and second input controllers 1311, 1313 causes motion in the surgical effector (first jaw 121 of end tool) and creates a reciprocal motion in a pantograph (see structure including multiple components including extension portions 1313b, 1313e and differential pulleys 1313c, 1313d in Figure 4A, wherein the differential pulleys move in a reciprocal or corresponding motion to the surgical effector in order to move the surgical effector) to conserve the length of cable between the first and second controllers ([0096]). It is noted that Applicant acts as his or her own lexicographer to specifically define the term “pantograph” contrary to its ordinary meaning, wherein the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term (Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999)). Applicant defines "pantograph" as "a physical structure containing multiple physical components that is named as such because it is configured to “move in a reciprocal manner to the surgical effector” (see present publication, paragraph [0056]), which is contrary to the ordinary meaning of “an instrument for copying something (as a map) on a predetermined scale consisting of four light rigid bars jointed in parallelogram form; also : any of various extensible devices of similar construction (as for use as brackets or gates)”. See https://www.merriam-webster.com/dictionary/pantograph.
Regarding claim 7, Lee discloses actuating the first and second input controllers 1311, 1313 comprising actuating a manipulator 112 (Figure 1, [0096]; yaw operator 112).
Regarding claim 8, Lee discloses actuating the first and second input controllers 1311, 1313 concurrently increase the length of the first cable segment and increase the length of the second cable segment ([0096]; first and second portions of the cable 135J11 around 1312 are increased, or “unwound”).
Regarding claim 9, Lee discloses actuating the first and second input controllers 1311, 1313 concurrently decrease the length of the first cable segment and decrease the length of the second cable segment ([0096]; first and second portions of the cable 135J11 around 1311 are decreased, or “wound”).
Regarding claim 10, Lee discloses a method of operating a surgical wrist (Figures 1-2; operating end tool 120) that moves with at least N degrees of freedom ([0042]-[0044]; pitch, yaw, actuation/grip), the method comprising
independently operating at least N+1 input controllers (plurality of pulleys, including 1311, 1313, 1321, 1323; Figures 2, 4A-4B, [0075]) [0060], [0155], [0160], [0161]; pitch, yaw, and actuation/grip have independent inputs and operations) that are each coupled to at least one of N+1 surgical cables (plurality of wires including wires 135J11, 135J21; Id.) to control motion of the surgical wrist (rotating in the direction of arrow YJ in Figure 2, or yaw direction); and
conserving a length of the at least one of N+1 surgical cables (wires 135J11, 135J21; Figures 4A-4B, [0096]-[0097]) between pairs of the at least N+1 input controllers (1311/1313 and 1321/1323; Id.) that are coupled by a reciprocal structure (including differential control pulleys 1313c/1313d, 1323c/1323d) by inversely moving the reciprocal structure to conserve the length of the at least one of N+1 surgical cables between pairs of the at N+1 input controllers (the wires 135J11, 135J21 are [inversely] “unwound” as much as the wires 135J11, 135J21 are “wound” via the differential control pulleys 1313c/1313d, 1323c/1323d, and therefore a length of the cables 135J11, 135J21 is conserved; Id).
Regarding claim 11, Lee discloses the at least N degrees of freedom comprise at least one of pitch, yaw, and grip ([0042]-[0044]; pitch, yaw, actuation/grip) of the surgical wrist.
Regarding claim 12, Lee discloses independently operating the at least N+1 input controllers comprises rotating the at least N+1 input controllers 1311, 1313, 1321, 1323about a rotation axis ([0084]), the rotation of the at least N+1 input controllers causing spooling (winding/”wound” wires 135J11, 135J21; [0096]-[0097]) or unspooling (unwinding/”unwound” wires 135J11, 135J21; Id.) of the at least N+1 surgical cables about the input controllers.
Regarding claim 13, Lee discloses spooling or unspooling the at least N+1 surgical cables about the at least N+1 input controllers creates motion of the surgical wrist (Id.).
Regarding claim 14, Lee discloses independently operating the at least one of N+1 surgical input controllers causes motion of the surgical wrist and creates a reciprocal motion in a pantograph (see structure including multiple components including extension portions 1313b, 1313e, 1323b, 1323e and differential pulleys 1313c, 1313d, 1323c, 1323d in Figures 4A-4B, wherein the differential pulleys move in a reciprocal or corresponding motion to the surgical effector in order to move the surgical effector) to conserve the length of the at least N+1 cables between pairs 1311/1313 and 1321/1323 of the at least N+1 input controllers ([0096]-[0097]). It is noted that Applicant acts as his or her own lexicographer to specifically define the term “pantograph” contrary to its ordinary meaning, wherein the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term (Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999)). Applicant defines "pantograph" as "a physical structure containing multiple physical components that is named as such because it is configured to “move in a reciprocal manner to the surgical effector” (see present publication, paragraph [0056]), which is contrary to the ordinary meaning of “an instrument for copying something (as a map) on a predetermined scale consisting of four light rigid bars jointed in parallelogram form; also : any of various extensible devices of similar construction (as for use as brackets or gates)”. See https://www.merriam-webster.com/dictionary/pantograph.
Regarding claim 18, Lee discloses independently operating the at least N+1 input controllers comprising actuating a manipulator 112 (Figure 1, [0096]; yaw operator 112).
Regarding claim 19, Lee discloses a pair of the at least N+1 surgical controllers 1311, 1313 concurrently increase a length of a first cable segment of the at least one of N+1 surgical cables and increase a length of a second cable segment of the at least one of N+1 surgical cables ([0096]; first and second portions of the cable 135J11 around 1312 are increased, or “unwound”).
Regarding claim 20, Lee discloses a pair of the at least N+1 surgical controllers 1311, 1313 concurrently decrease a length of a first cable segment of the at least one of N+1 surgical cables ([0096]; 135J11 is “wound” or increased around 1311) and increase a length of a second cable segment of the at least one of N+1 surgical cables (Id.; 135J11 is “unwound” or decreased around 1312).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7-15, 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9, 14, 17-21, 23 of U.S. Patent No. 9,962,228 in view of Lee (U.S. Pub. No. 2014/0318288). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that elements in claims 1-5, 7, 10-15, 18 are to be found in claims 1-6, 9, 17- 21, 23 of the patent. The patent claims encompass the application claims, as discussed above, except for features that are merely obvious. Regarding claims 8-9, 19-20, Lee teaches a method of manipulating a surgical effector or operating a surgical wrist that moves with at least N degrees of freedom, the method including actuating the first and second input controllers 1311, 1313 concurrently increase the length of the first cable segment and increase the length of the second cable segment ([0096]; first and second portions of the cable 135J11 around 1312 are increased, or “unwound”), actuating the first and second input controllers 1311, 1313 concurrently decrease the length of the first cable segment and decrease the length of the second cable segment ([0096]; first and second portions of the cable 135J11 around 1311 are decreased, or “wound”). Lee further teaches a pair of the at least N+1 surgical controllers 1311, 1313 concurrently increase a length of a first cable segment of the at least one of N+1 surgical cables and increase a length of a second cable segment of the at least one of N+1 surgical cables ([0096]; first and second portions of the cable 135J11 around 1312 are increased, or “unwound”), and a pair of the at least N+1 surgical controllers 1311, 1313 concurrently decrease a length of a first cable segment of the at least one of N+1 surgical cables ([0096]; 135J11 is “wound” or increased around 1311) and increase a length of a second cable segment of the at least one of N+1 surgical cables (Id.; 135J11 is “unwound” or decreased around 1312). It would have been obvious to one of ordinary skill before the effective filing date to modify the patent claims with the above features, as taught by Lee, in order to accurately extract a desired output from a plurality of inputs in a surgical instrument (Lee; [0008]).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9, 13-16, 18 of U.S. Patent No. 10,682,189 in view of Lee (U.S. Pub. No. 2014/0318288). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that elements in claims 1-7, 10-18 are to be found in claims 1-6, 9, 13-16, 18 of the patent, respectively. The patent claims encompass the application claims, as discussed above, except for features that are merely obvious. Regarding claims 8-9, 19-20, Lee teaches a method of manipulating a surgical effector or operating a surgical wrist that moves with at least N degrees of freedom, the method including actuating the first and second input controllers 1311, 1313 concurrently increase the length of the first cable segment and increase the length of the second cable segment ([0096]; first and second portions of the cable 135J11 around 1312 are increased, or “unwound”), actuating the first and second input controllers 1311, 1313 concurrently decrease the length of the first cable segment and decrease the length of the second cable segment ([0096]; first and second portions of the cable 135J11 around 1311 are decreased, or “wound”). Lee further teaches a pair of the at least N+1 surgical controllers 1311, 1313 concurrently increase a length of a first cable segment of the at least one of N+1 surgical cables and increase a length of a second cable segment of the at least one of N+1 surgical cables ([0096]; first and second portions of the cable 135J11 around 1312 are increased, or “unwound”), and a pair of the at least N+1 surgical controllers 1311, 1313 concurrently decrease a length of a first cable segment of the at least one of N+1 surgical cables ([0096]; 135J11 is “wound” or increased around 1311) and increase a length of a second cable segment of the at least one of N+1 surgical cables (Id.; 135J11 is “unwound” or decreased around 1312). It would have been obvious to one of ordinary skill before the effective filing date to modify the patent claims with the above features, as taught by Lee, in order to accurately extract a desired output from a plurality of inputs in a surgical instrument (Lee; [0008]).
Claims 1-5, 7-15, 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9, 11-15, 18 of U.S. Patent No. 11,564,759 in view of Lee (U.S. Pub. No. 2014/0318288). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that elements in claims 1-5, 7, 10-15, 18 are to be found in claims 1-6, 9, 11-15, 18 of the patent, respectively. The patent claims encompass the application claims, as discussed above, except for features that are merely obvious. Regarding claims 8-9, 19-20, Lee teaches a method of manipulating a surgical effector or operating a surgical wrist that moves with at least N degrees of freedom, the method including actuating the first and second input controllers 1311, 1313 concurrently increase the length of the first cable segment and increase the length of the second cable segment ([0096]; first and second portions of the cable 135J11 around 1312 are increased, or “unwound”), actuating the first and second input controllers 1311, 1313 concurrently decrease the length of the first cable segment and decrease the length of the second cable segment ([0096]; first and second portions of the cable 135J11 around 1311 are decreased, or “wound”). Lee further teaches a pair of the at least N+1 surgical controllers 1311, 1313 concurrently increase a length of a first cable segment of the at least one of N+1 surgical cables and increase a length of a second cable segment of the at least one of N+1 surgical cables ([0096]; first and second portions of the cable 135J11 around 1312 are increased, or “unwound”), and a pair of the at least N+1 surgical controllers 1311, 1313 concurrently decrease a length of a first cable segment of the at least one of N+1 surgical cables ([0096]; 135J11 is “wound” or increased around 1311) and increase a length of a second cable segment of the at least one of N+1 surgical cables (Id.; 135J11 is “unwound” or decreased around 1312). It would have been obvious to one of ordinary skill before the effective filing date to modify the patent claims with the above features, as taught by Lee, in order to accurately extract a desired output from a plurality of inputs in a surgical instrument (Lee; [0008]).
Allowable Subject Matter
Claims 5-6, 15-16 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if a Terminal Disclaimer is filed to overcome the double patenting rejections set forth in this office action.
Claim 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, and if a Terminal Disclaimer is filed to overcome the double patenting rejections set forth in this office action.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art of record, alone or in combination, teaches or renders obvious a method of manipulating a surgical effector of a surgical instrument including, inter alia, moving a differential that couples first and second input controllers together to conserve a length of cable between the first input controller land the second input controller, wherein actuating the first and second input controllers causes motion in the surgical effector and creates a reciprocal motion to conserve the length of cable between the first and second controllers, as well as creates an inverse motion in a pantograph, as in claim 5.
None of the prior art of record, alone or in combination, teaches or renders obvious a method of operating a surgical wrist that moves with at least N degrees of freedom, the method comprising, inter alia, conserving a length of at least one of N+1 surgical cables between pairs of at least N+1 input controllers that are coupled by a reciprocal structure by inversely moving the reciprocal structure to conserve the length of the N+1 surgical cables between pairs of the at least N+1 input controllers, wherein independently operating the at least N+1 input controllers causes motion of the surgical wrist and creates a reciprocal motion in a pantograph to conserve the length of the N+1 surgical cables between pairs of the at least N+1 input controllers, wherein independently operating the at least N+1 input controllers causes motion of the surgical wrist and creates an inverse motion in the pantograph, as in claim 15.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANE D YABUT whose telephone number is (571)272-6831. The examiner can normally be reached M-F 9am-5pm.
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/DIANE D YABUT/Primary Examiner, Art Unit 3771