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 Amendment
Applicant's submission filed on 03/03/2026 has been entered. Accordingly, claims 1-6, 8-9, and 21-32 remain pending, claims 1-2, 5-6, 8-9, and 24-25, have been amended, and claims 23 and 28-30 have been previously withdrawn.
Response to Arguments
Rejections under 35 USC 112
In light of applicant’s amendments to claim 5-6, 9, and 25 filed 03/03/2026, the previous rejections have been rendered moot and have been withdrawn.
Regarding the specific rejections of claim 1, the present amendments to claim 1 filed 03/03/2026 only partially resolve the outstanding rejection.
However, applicant has not amened claim 1, to address the all issues outlined in the previous rejection in the office action mail mailed 01/26/2026. The new amendments to the claims have introduced further clarity issues to the claim(s). The 112(b) rejections have been updated accordingly. See as outlined below.
Rejections under 35 USC 103
Applicant’s arguments with respect to claim(s) 1 filed 03/03/2026 have been considered but are moot because the new grounds of rejection has been presented. Consequently, the arguments do not apply to new references or the new combination of the references being used in the current rejection.
Nonetheless, in response to applicant's arguments against the references individually on pages 7-10 of the response filed 03/03/2026, it is noted that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant’s remarks on page 7-10 characterize the field of endeavor more narrowly than is appropriate. As noted in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009), “This court cannot, in the face of KSR, cling to formalistic rules for obviousness, customize its legal tests in specific scientific fields in a way that deem entire classes of prior art teachings irrelevant, or discount significant abilities of artisans of ordinary skill in an advanced area of art”.
Therefore, it is noted that the arguments presented are unsupported by objective evidence. Applicant is reminded that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
Claim Objections
Claim 8 is objected to because of the following informalities: the limitation “wherein the processor is configured to:” should be amended to recite “wherein the processor is further configured to:” to avoid potential issues under 112(b). 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 1-6, 8-9, 21-22, 24-27, 31, and 32 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 1 has been amended to recite “wherein the processor executes instructions to use the optical localizer to define a navigation space and determine at least one of a position of the optical tracking device and a position of an end effector attached to a robotic arm within the navigation space relative to a second optical tracking device different from the optical tracking device” in lines 14-17, which renders the claim indefinite because it is unclear if the robotic arm in the present limitation is meant to refer to or is different from the movable arm recited earlier in the claim. Similarly, it is unclear if the line of sight in the present limitation refers to the line of site recited earlier in the claim. It is unclear what functional meaning applicant meant to impart when citing that the instructions executed by the processor are to “to use” the optical localizer to define a navigation space, e.g., it is unclear how the optical localizer is both functionally and structurally “used” by the processor for the recited purpose of defining a navigation space and determining at least one of a position of the optical tracking device and a position of an end effector attached to a robotic arm, as the defining of a navigation space appears and the determination of at least one of a position of the optical tracking device and a position of an end effector attached to a robotic arm, but it is unclear, to be software-implemented limitations.
The following amendment is suggested to remedy a portion of the rejection:
“wherein, when line of sight between the optical localizer and the optical tracking device is lost, the processor executes instructions to transmit repositioning commands to the mount assembly to reposition the optical localizer along a predetermined path until line of sight between the optical localizer and the optical tracking device is reestablished” and “wherein the processor executes instructions to use the optical localizer to define a navigation space and determine at least one of a position of the optical tracking device and a position of an end effector attached to a robotic arm within the navigation space relative to a second optical tracking device different from the optical tracking device ”
should be amended to recite:
“wherein the processor is further configured to:
transmit repositioning commands to the mount assembly to reposition the optical localizer along the predetermined path to reestablish the line of sight between the optical localizer and the optical tracking device,
receive tracking information from the optical localizer, wherein the tracking information comprises positions of fiducial portions attached to an end effector,
define a navigation space by registering the received tracking information to identification information of the fiducial portions attached to the end effector by the obtained by the optical tracking device, and
determine at least one of a position of the optical tracking device and a position of an end effector attached to a robotic arm;
wherein, when the line of sight between the optical localizer and the optical tracking device is lost, the processor s the repositioning commands to the mount assembly to reposition the optical localizer along a predetermined path until the line of sight between the optical localizer and the optical tracking device is reestablished; and
wherein the processor s [[]the navigation space and determines the at least one of [[the position of the optical tracking device and [[the position of [[the end effector attached to a robotic arm within the navigation space relative to a second optical tracking device different from the optical tracking device”
Claims 9, 21-22, 24-27, 31, and 32 are also rejected for reciting the same and/or limitations outlined above.
All dependent claims are also rejected by the nature of their dependency.
Claim 25 recites the limitation "the mobile arm" in lines 4-5. There is insufficient antecedent basis for this limitation in the claim. Parent claim 24 does not recite a mobile arm.
All dependent claims are also rejected by the nature of their dependency.
Claim 32 recites “wherein the optical tracking device is mounted to a robotic arm and wherein the robotic arm includes an end effector, the optical tracking device is mounted proximate to the end effector” in lines 1-3, which renders the claim indefinite because it is unclear the robotic arm and the end effector of the present claim are meant to refer to the robotic arm and the end effector recited in parent claim 24 on which claim 32 is dependent.
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.
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) 1-6, 8-9, 21, 24-26, 31, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Forsyth et al. (US20190269467, hereafter “Forsyth”), in view of Otto et al. (US20220022994, hereafter “Otto”)*, further in view of Staunton et al. (US20220022994, hereafter “Staunton”).
*And as supported by the disclosure Staunton incorporated by reference in Otto.
Regarding claim 1, Forsyth discloses a surgical navigation system (FIG. 1) comprising:
an optical tracking device ([0040] 116 having optical tracking markers 118);
an optical localizer configured to optically track the optical tracking device ([0034] 200 is a camera);
a mount assembly supporting the optical localizer (202 in FIGS. 1-2); and
in a separate embodiment, Forsyth discloses the mount assembly including a movable arm configured to move the movable arm carrying the optical localizer ([0034]-[0035], [0043], [0050]-[0051], FIGS. 3, 5, the mount assembly of the optical localizer/camera supported by an arm with joints can have any suitable configuration to move, orient, and support the camera into a desired position as it is part of the surgical robot under control of the computer, with the camera having any configuration being able to be moved and oriented as desired reading on the limitation of moving the optical localizer ‘up, down, left, right, towards the optical tracking device’); and
a processor configured to execute instructions to transmit commands to the mount assembly for actuating the mount assembly to position the optical localizer where there is line of sight between the optical localizer and the optical tracking device ([0034]-[0035], [0043], [0050]-[0051], FIGS. 3, 5, 8, the mount assembly of the optical localizer/camera can have any suitable configuration to move, orient, and support the camera into a desired position as it is part of the surgical robot under control of the computer 504);
wherein, when line of sight between the optical localizer and the optical tracking device is lost, the processor executes instructions to transmit repositioning commands to the mount assembly to reposition the optical localizer ([0092] when the light of sight of the optical localizer/camera is partially obstructed, tracking or navigating must be paused and the camera system modified to restore line of sight to the markers on the dynamic reference base/optical tracking device (DRB)) along a predetermined path until line of sight between the optical localizer and the optical tracking device is reestablished ([0034], [0037]-[0038] the mount assembly is configured to control the translation and orientation including to correct/reposition the optical localizer if the optical localizer strays/is lost from the selected, preplanned trajectory/path); and
use the optical localizer to define a navigation space and determine a position of the optical tracking device ([0051] the location, orientation, and position of structures having these types of markers may be provided to computer 408/navigation system by the optical localizer, which may be shown to a user on display 304 in relation to a three dimensional image of a patient's anatomical structure) and a position of an end effector attached to a robotic arm ([0034], FIG. 2, robotic arm 104 has end effector 112 attached).
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the surgical navigation system disclosed by Forsyth with the mount assembly including a movable arm configured to move the movable arm carrying the optical localizer, the processor configured to execute instructions to transmit commands to the mount assembly for actuating the mount assembly to position the optical localizer where there is line of sight between the optical localizer and the optical tracking device, and the processor executes instructions to transmit repositioning commands to the mount assembly to reposition the optical localizer along a predetermined path until line of sight between the optical localizer and the optical tracking device is reestablished and the step of using the optical localizer to define a navigation space and determine a position of the optical tracking device and a position of an end effector attached to a robotic arm as taught by the separate embodiment of Forsyth in order to recover the registration of optical makers of the surgical robot and the one or more markers mounted elsewhere on the patient via utilization of the reference points in the tracking coordinate system from kinematic information provides an additional transformation calculation for the camera to be located at any suitable position having line of sight to the surgical field ([0035], [0058], [0070], [0092], [0098] of Forsyth).
The movable arm carrying the optical localizer included in the mount assembly disclosed by Forsyth is not explicitly disclose as having a servomotor configured to move the movable arm, nor is the processor disclosed by Forsyth that discloses the use the optical localizer to define a navigation space and determine a position of the optical tracking device and a position of an end effector attached to a robotic arm as explicitly disclosed as being within the navigation space relative to a second optical tracking device different from the optical tracking device.
However, in the same field of endeavor, Otto teaches a movable arm with a plurality of joints along the movable arm, each one of the plurality of joints including a servomotor configured to actuate the arm at the plurality of joints to move the optical localizer ([0042] the adjustable arm of the camera may be position controlled by motorized joints in two or more degrees of freedom), and
wherein the processor executes instructions ([0011], [0028], [0047], FIG. 3, one or more processors for executing instructions) to use the optical localizer to define a navigation space ([0011], [0028], [0047], FIG. 3, the one processes execute instructions to provide his own position within the field of view that includes a range of acceptable positions for tracking devices relative to the position of the camera/localizer) and determine a position of the optical tracking device and a position of an end effector (FIG. 1, surgical instrument 104) attached to a robotic arm ([0025], [0045], FIG. 1, robotic arm 102) within the navigation space relative to a second optical tracking device ([0025], [0045], the optical tracking devices of Staunton are incorporated by reference as the tracking devices disclosed by Otto, therefore, the tracking device seen at the base of the robotic arm in FIG. 1 of Otto, corresponds to the tracking device 52B located at the base of the robotic arm in FIGS. 1, 3 of Staunton which illustrates the tracking device 52 being located at the base and within the navigation space as detected by the optical localizer 44,) different from the optical tracking device ([0029], tracking device 100 affixed to end effector 104 in FIG. 1 of Otto being separate and different from the second optical tracking device attached to the base of 102 in FIG. 1 of Otto, which correspond to second optical tracking device 52B attached to the base of 14 which are separate and different from the optical tracking device 52A attached to end effector 20 as illustrated in FIGS. 1. 3 of Staunton, which are incorporated by reference in Otto).
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the surgical navigation system disclosed by Forsyth with a movable arm having a plurality of joints including a servomotor configured to actuate the arm at the plurality of joints and the processor executed step of using the optical localizer to define a navigation space and determine a position of the optical tracking device and a position of an end effector attached to a robotic arm within the navigation space relative to a second optical tracking device different from the optical tracking device as taught by Otto in order to provide the camera with a field of view that is free from obstruction and a fixed reference coordinate system for the other components of the robotic arm so that the known relationship data for the end effector and its corresponding tracker may be derived from calibration information ([0033], [0042]-[0043], [0068] of Otto) relating to the to the base of the robotic arm and its corresponding fixed second optical tracking device (see [0026], [0058] of Staunton).
It should be noted, that the limitations of “for actuating the mount assembly to position the optical localizer”, “where there is line of sight between the optical localizer and the optical tracking device”, “an optical localizer held by the mount assembly”, “reposition the optical localizer along a predetermined path until” and “until line of sight between the optical localizer and the optical tracking device is reestablished” are considered functional limitations of the device; the manner of operating the device does not differentiate an apparatus/device claim from the prior art; See "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Therefore, the device of Forsyth as modified, would be capable of performing all the functions as recited.
Regarding claim 2, Forsyth, substantially discloses all the limitations of the claimed invention, specifically, Forsyth discloses wherein the optical localizer is configured to* receive an optical signal within the navigation space** relative to a subject ([0015], [0040]-[0042] FIG. 2, the camera 200 identities/receives light emitted/optical signal from the active tracking markers 118 in a given measurement volume/ navigation domain viewable from the perspective of the camera relative to the patient).
*For the purposes of examination, the limitation has been interpreted in the alternative, requiring the optical localizer is configured to generate an optical signal; or requiring the optical localizer is configured to receive an optical signal.
**For the purposes of examination, as the term has not been defined in applicant’s original disclosure, the term has been interpreted under the broadest reasonable interpretation to mean any area or region related to surgical navigation as known in the art.
Regarding claim 3, Forsyth, in view of Otto, substantially discloses all the limitations of the claimed invention, specifically, Forsyth discloses a wherein the mount assembly includes:
a base (see base upon platform with casters for 202/200 in FIG. 2);
a movable arm extending from the base (see arm 202 extending base on which 200 is mounted in FIG. 2, [0034] arm 202 can have any suitable configuration to move, orient, and support the camera 200 in a desired position.);
and in another embodiment, Forsyth discloses a plurality of joints along the arm, at least one of the plurality of joints including configured to actuate the arm at the plurality of joints ([0098] robot system is equipped with encoders on each axis that precisely monitor the positions of each linkage of the robot arm, the amount of movement on each joint as monitored by the rotational encoders) to move the optical localizer up, down, left, right, towards the optical tracking device, and away from the optical tracking device (([0034]-[0035], [0043], [0050]-[0051], FIGS. 3, 5, the mount assembly of the optical localizer/camera can have any suitable configuration to move, orient, and support the camera into a desired position as it is part of the surgical robot under control of the computer, with the camera having any configuration being able to be moved and oriented as desired reading on the limitation of moving the optical localizer “up, down, left, right, towards the optical tracking device”); and specifically, Otto discloses a plurality of joints along the arm, at least one of the plurality of joints including the servomotor configured to actuate the arm at the plurality of joints to move the optical localizer ([0042] the adjustable arm of the camera may be position controlled by motorized joints in two or more degrees of freedom).
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the surgical navigation system disclosed by Forsyth with the arm having a plurality of joints along the arm, at least one of the plurality of joints including configured to actuate the arm at the plurality of joints as taught by the other embodiment of Forsyth in order to utilize the reference points in the tracking coordinate system from kinematic information provides an additional transformation calculation ([0098] of Forsyth) and with the at least one of the plurality of joints including the servomotor configured to actuate the arm at the plurality of joints to as taught by Otto in order to provide the camera with a field of view that is free from obstruction ([0042]-[0043] of Otto).
Regarding claim 4, Forsyth, substantially discloses all the limitations of the claimed invention, specifically, Forsyth discloses wherein the optical tracking device is mounted to a surgical instrument (see 612 mounted to instrument 608 in FIG. 8).
Regarding claim 5, Forsyth, substantially discloses all the limitations of the claimed invention, specifically, Forsyth discloses wherein the optical tracking device (see tracking device 116 with markers 116 is mounted to the distal end of 114 in FIG. 2) is mounted to the robotic arm (114 in FIG. 2), and specifically, Otto discloses wherein the second optical tracking device is fixed in a known position within the navigation space([0025], FIG. 1, a second optical tracking device is fixed at the base of the robotic arm, therefore the position is known, see [0026] of Staunton incorporated by reference by Otto, Staunton disclosing in [0026]that the base of the robotic arm provides a fixed reference coordinate system).
Regarding claim 6, Forsyth, in view of Otto, substantially discloses all the limitations of the claimed invention, specifically, Forsyth discloses wherein the optical tracking device is mounted proximate to the end effector (see tracking device 116 with markers 116 is mounted to the distal end of 112 in FIG. 2), and specifically, Otto discloses wherein the second optical tracking device is mounted to a base of the robotic arm ([0025], FIG. 1, at the base of the robotic arm a second optical tracking device is mounted).
Regarding claim 8, Forsyth, substantially discloses all the limitations of the claimed invention, specifically, Forsyth discloses in another embodiment wherein the processor further is configured to:
identify a location of the optical tracking device in an instrument coordinate system ([0085] the surveillance marker is tracked with respect to the DRB 2024 coordinate system in FIGS. 16A-16B);
identify a location of the optical localizer in a localizer coordinate system ([0093]-[0098], the location of the optical localizer in the localizer coordinate system is identified via registration with the image coordinate system such as the coordinate system of a computed tomography (CT) scan); and
identify a location of the optical localizer in the instrument coordinate system ([0093] transformation matrix from the camera coordinate system to the fixture coordinate system may be represented as T Camera-Fixture).
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the surgical navigation system disclosed by Forsyth with processor being configured to identify the location of the optical tracking device in an instrument coordinate system, identify the location of the optical localizer in a localizer coordinate system, and to the identify location of the optical localizer in the instrument coordinate system as taught by the other embodiment of Forsyth in order to recover the registration of optical makers of the surgical robot and the one or more markers mounted elsewhere on the patient ([0092] of Forsyth).
Regarding claim 24, Forsyth discloses a system, comprising:
a processor ([0034]-[0035], [0043], [0050]-[0051], FIGS. 3, 5, 8, the mount assembly of the optical localizer/camera can have any suitable configuration to move, orient, and support the camera into a desired position as it is part of the surgical robot under control of the computer 504); and
memory ([0071]) comprising processor-executable instructions that, when executed by the processor, enable the processor to:
transmit commands to a mount assembly so as to position an optical localizer held by the mount assembly where there is line of sight between the optical localizer and an optical tracking device ([0034]-[0035], [0043], [0050]-[0051], FIGS. 3, 5, 8, the mount assembly of the optical localizer/camera can have any suitable configuration to move, orient, and support the camera into a desired position as it is part of the surgical robot under control of the computer 504), wherein the commands further comprise repositioning ([0092] when the light of sight of the optical localizer/camera is partially obstructed, tracking or navigating must be paused and the camera system modified/repositioned via commands to restore line of sight to the markers on the dynamic reference base/optical tracking device (DRB)) that cause the mount assembly to reposition the optical localizer along a predetermined path when line of sight between the optical localizer and the optical tracking device is lost and until line of sight between the optical localizer and the optical tracking device is reestablished ([0034], [0037]-[0038] the mount assembly is configured to control the translation and orientation including to correct/reposition the optical localizer if the optical localizer strays/is lost from the selected, preplanned trajectory/path).
The movable arm carrying the optical localizer included in the mount assembly disclosed by Forsyth is not explicitly disclose as having a servomotor configured to move the movable arm, nor is the processor disclosed by Forsyth that discloses the use the optical localizer to define a navigation space and determine a position of the optical tracking device and a position of an end effector attached to a robotic arm as explicitly disclosed as being within the navigation space relative to a second optical tracking device different from the optical tracking device.
However, in the same field of endeavor, Otto teaches a movable arm with a plurality of joints along the movable arm, each one of the plurality of joints including a servomotor configured to actuate the arm at the plurality of joints to move the optical localizer ([0042] the adjustable arm of the camera may be position controlled by motorized joints in two or more degrees of freedom), and
wherein the processor executes instructions ([0011], [0028], [0047], FIG. 3, one or more processors for executing instructions) to use the optical localizer to define a navigation space ([0011], [0028], [0047], FIG. 3, the one processes execute instructions to provide his own position within the field of view that includes a range of acceptable positions for tracking devices relative to the position of the camera/localizer) and determine a position of the optical tracking device and a position of an end effector (FIG. 1, surgical instrument 104) attached to a robotic arm ([0025], [0045], FIG. 1, robotic arm 102) within the navigation space relative to a second optical tracking device ([0025], [0045], the optical tracking devices of Staunton are incorporated by reference as the tracking devices disclosed by Otto, therefore, the tracking device seen at the base of the robotic arm in FIG. 1 of Otto, corresponds to the tracking device 52B located at the base of the robotic arm in FIGS. 1, 3 of Staunton which illustrates the tracking device 52 being located at the base and within the navigation space as detected by the optical localizer 44,) different from the optical tracking device ([0029], tracking device 100 affixed to end effector 104 in FIG. 1 of Otto being separate and different from the second optical tracking device attached to the base of 102 in FIG. 1 of Otto, which correspond to second optical tracking device 52B attached to the base of 14 which are separate and different from the optical tracking device 52A attached to end effector 20 as illustrated in FIGS. 1. 3 of Staunton, which are incorporated by reference in Otto).
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the surgical navigation system disclosed by Forsyth with a movable arm having a plurality of joints including a servomotor configured to actuate the arm at the plurality of joints and the processor executed step of using the optical localizer to define a navigation space and determine a position of the optical tracking device and a position of an end effector attached to a robotic arm within the navigation space relative to a second optical tracking device different from the optical tracking device as taught by Otto in order to provide the camera with a field of view that is free from obstruction and a fixed reference coordinate system for the other components of the robotic arm so that the known relationship data for the end effector and its corresponding tracker may be derived from calibration information ([0033], [0042]-[0043], [0068] of Otto) relating to the to the base of the robotic arm and its corresponding fixed second optical tracking device (see [0026], [0058] of Staunton).
It should be noted, that the limitations of “actuating one or more servomotors of the mount assembly”, “to position an optical localizer”, “an optical localizer held by the mount assembly” and “where there is line of sight between the optical localizer and an optical tracking device” are considered functional limitations of the device; the manner of operating the device does not differentiate an apparatus/device claim from the prior art; See "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Therefore, the device of Forsyth as modified, would be capable of performing all the functions as recited.
Regarding claims 9 and 25, Forsyth, substantially discloses all the limitations of the claimed invention, specifically, Forsyth discloses wherein the repositioning commands for repositioning the optical localizer comprise commands to move the optical localizer along the predetermined path ([0034], [0037]-[0038], claim 1, the mount assembly is configured to control the translation and orientation including to correct/reposition the optical localizer if the optical localizer strays/is lost from the selected, preplanned/predetermined trajectory/path from the dynamic reference base), via the movable arm ([0092] when the light of sight of the optical localizer/camera is partially obstructed, tracking or navigating must be paused and the camera system modified to restore line of sight to the markers on the dynamic reference base/optical tracking device (DRB)), relative to a last known position of the optical localizer where line of sight was present between the optical localizer and the optical tracking device ([0100]-[0101] system continuously updates the last valid location of the DRB relative to the robot base and stores this location in system memory for later usage so that the last known DRB location in the coordinate system of the robot can be recalled from the memory storage device).
It should be noted, that the limitations of “comprise commands to move the optical localizer along the predetermined path, via the movable arm” and “repositioning the optical localizer” are considered functional limitations of the device; the manner of operating the device does not differentiate an apparatus/device claim from the prior art; See "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Therefore, the device of Forsyth as modified, would be capable of performing all the functions as recited.
Regarding claims 21 and 26, Forsyth, substantially discloses all the limitations of the claimed invention, specifically, Forsyth discloses wherein the last known position is determined, at least in part, based on a speed of movement of the optical tracking device ([0177]-[0178] the tracker includes an orientation sensor is a the gravity sensor which is configured to measure gravity (acceleration)/speed along three axes, the x-axis, y-axis, and z-axis, and an accelerometer is used as the gravity sensor).
It should be noted, that the limitations of “the last known position is determined” and “based on a speed of movement of the optical tracking device” are considered functional limitations of the device; the manner of operating the device does not differentiate an apparatus/device claim from the prior art; See "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Therefore, the device of Forsyth as modified, would be capable of performing all the functions as recited.
Regarding claim 31, Forsyth, in view of Otto, substantially discloses all the limitations of the claimed invention, specifically, in another embodiment, Forsyth discloses wherein the mount assembly having an arm including one or more corresponding joints, the one or more corresponding joints of the arms of the mount assembly cause the arm of the mount assembly to move ([0098] robot system is equipped with encoders on each axis that precisely monitor the positions of each linkage of the robot arm, the amount of movement on each joint as monitored by the rotational encoders) to move the optical localizer up, down, left, right, towards the optical tracking device, and away from the optical tracking device (([0034]-[0035], [0043], [0050]-[0051], FIGS. 3, 5, the mount assembly of the optical localizer/camera can have any suitable configuration to move, orient, and support the camera into a desired position as it is part of the surgical robot under control of the computer, with the camera having any configuration being able to be moved and oriented as desired reading on the limitation of moving the optical localizer “up, down, left, right, towards the optical tracking device”); and specifically, Otto discloses wherein the one or more servomotors cause the one or more corresponding joints of the mount assembly to move ([0042] the adjustable arm of the camera may be position controlled by motorized joints in two or more degrees of freedom).
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the surgical navigation system disclosed by Forsyth with the mount assembly having an arm including one or more corresponding joints, the one or more corresponding joints of the arms of the mount assembly cause the arm of the mount assembly to move as taught by the other embodiment of Forsyth in order to utilize the reference points in the tracking coordinate system from kinematic information provides an additional transformation calculation ([0098] of Forsyth) and with the one or more servomotors cause the one or more corresponding joints of the mount assembly to move as taught by Otto in order to provide the camera with a field of view that is free from obstruction ([0042]-[0043] of Otto).
It should be noted, that the limitations of “the one or more servomotors cause one or more corresponding joints of the mount assembly to move” is considered a functional limitation of the device; the manner of operating the device does not differentiate an apparatus/device claim from the prior art; See "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Therefore, the device of Forsyth as modified, would be capable of performing all the functions as recited.
Regarding claim 32, Forsyth, substantially discloses all the limitations of the claimed invention, specifically, Forsyth discloses wherein the robotic arm includes an end effector (112), the optical tracking device is mounted proximate to the end effector (see tracking device 116 with markers 116 is mounted to the distal end of 112 in FIG. 2).
Claim(s) 22 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Forsyth, in view of Otto and Staunton, as applied to claims 9 and 25 above, further in view of Mintz et al. (US20170084027, hereafter “Mintz”).
Regarding claims 22 and 27, Forsyth, substantially discloses all the limitations of the claimed invention, but does not explicitly disclose wherein the last known position is determined, at least in part, based on an elapsed time since line of sight was present between the optical localizer and the optical tracking device.
However, in solving the same problem, Mintz teaches wherein the last known position is determined, at least in part, based on an elapsed time since line of sight was present between the optical localizer and the optical tracking device ([0088]-[0100] image data, an EM data, a robot data, and a 3D model data are relied upon as the image data includes one or more image frames captured by the imaging device at the instrument tip as well as information such as frame rates or timestamps that allow a determination of the time elapsed between pairs of frames and the robot data is data related to physical movement of the medical instrument or part of the medical instrument, EM data includes data from EM sensors and the EM tracking system, with the 3D model data from 2D CT scans of the above information).
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the surgical navigation system and system disclosed by Forsyth with the last known position being determined, at least in part, based on an elapsed time since line of sight was present between the optical localizer and the optical tracking device taught by Mintz in order to determine the registration transformation may be a subset of data chosen by a moving window, so that the registration may change over time, which gives the ability to account for changes in the relative coordinates of the EM and 3D models ([0089] of Mintz).
It should be noted, that the limitations of “the last known position is determined” and “an elapsed time since line of sight was present between the optical localizer and the optical tracking device” are considered functional limitations of the device; the manner of operating the device does not differentiate an apparatus/device claim from the prior art; See "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Therefore, the device of Forsyth as modified, would be capable of performing all the functions as recited.
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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/A.S./Examiner, Art Unit 3798
/KEITH RAYMOND/Supervisory Patent Examiner, Art Unit 3798
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