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/Restrictions
Applicant’s election without traverse of Species N, which is drawn to Figs. 26-27 illustrating the fourteenth embodiment of a conduit selection device, in the reply filed on 08/04/2025 is acknowledged. Claims 3, 6, 10-11, and 17 are withdrawn as being directed to a non-elected species.
Response to Amendment
The amendment filed 12/10/2025 has been entered. In the present application, claims 1-21 are currently pending. Claims 3, 6, 10-11, and 17 are withdrawn. Claim 21 is newly added. Claims 1-18 have been amended. Claims 1-2, 4-5, 7-9, 12-16, and 18-21 are examined below.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the independent claim has been amended with new limitations. Independent claim 1 has been amended as follows: “An endoscope system, comprising: an endoscope including an operation portion, an insertion portion, and an endoscope conduit extending from the operation portion to the insertion portion, wherein an opening at a first end of the endoscope conduit is located at the operation portion; and a conduit switching device detachably mounted on the endoscope, wherein [[A]] the conduit switching device, includes: a body; an endoscope connection port configured to be mounted on the opening that is formed at the operation portion of the endoscope; a fluid supply port; a fluid suction port; a first conduit in the body and the fluid supply port; a second conduit in the body and the fluid suction port; a common conduit where the first conduit and the second conduit merge in the body and the endoscope connection port; and a switch including a movable member displaceably supported on the body and an operating member for operating the movable member, the switch being configured to be switched between a first state and a second state by displacing the movable member with respect to the body by an operation of the operating member thereby closing or opening at least one of the first conduit or the second conduit; wherein in the first state, the first conduit communicates with the common conduit, and the second conduit does not communicate with the common conduit, wherein in the second state, the first conduit does not communicate with the common conduit, and the second conduit communicates with the common conduit.
Such newly added limitations change the scope of the claims, renders the previous rejection moot, and requires a new ground of rejection. As such the previous grounds of rejection identified in the non-final office action date, 09/29/2025, have been withdrawn and a new grounds of rejection are presented below.
Please see section 35 U.S.C. §102 and 103 below for further explanation.
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 do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
movable member of claim 1, and
operating member of claim 1.
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 § 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 1-21 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.
Regarding Claim 1, the claim limitation “moveable member” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The term “movable” itself, does not define a structure within the limitation “movable member,” nor does the term describe the function of “the movable member” and how the “movable member” is displaced on the body. See MPEP 2181.
Also, regarding Claim 1, the claim limitation “operating member” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The term “operating” itself, does not define a structure within the limitation “operating member,” nor does the term describe the function of “the operating member” and how the “operating member” operates the movable member with an operation of closing or opening at least one of the first conduit or the second conduit. See MPEP 2181.
Therefore, claim 1 is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 2-21 are also rejected because of their dependency on rejected claim 1.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-5, 7-9, 12-15, and 18-21 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Millman et al. (US9216243), hereinafter Millman.
Regarding Claim 1, Millman discloses an endoscope system (Fig. 1 robotic surgical system 100), comprising:
an endoscope (Fig. 2A surgical manipulator 152) including an operation portion (Fig. 2A, 2B near end effector 158), an insertion portion (Fig. 5C hollow tube 504), and an endoscope conduit (see annotated Fig. 5C and 2B) extending from the operation portion Fig. 2A, 2B near end effector 158) to the insertion portion (Fig. 5C hollow tube 504), wherein an opening (see annotated Fig. 5C opening, [col.. 5 line 40-59] “The robotic surgical instrument includes an interface base, a hollow tube having a proximal end mounted to the interface base…”), at a first end of the endoscope conduit (see annotated Fig. 5C and 2B) is located at the operation portion (Fig. 2A, 2B near end effector 158); and
a conduit switching device (Figs. 2A-D, 4A-B, 5C surgical instrument 400,101A via surgical tool 500C) detachably mounted on ([col. 5 lines 40-59] “The robotic surgical instrument includes an interface base, a hollow tube having a proximal end mounted to the interface base, a three-way coupler having a first port coupled to the proximal end of the hollow tube, a first robotically controlled valve coupled to the interface base, and a second robotically controlled valve coupled to the interface base. The interface base can mechanically and electrically couple to an end of a robotic arm.”) the endoscope (Fig. 2A surgical manipulator 152),
wherein the conduit switching device (Figs. 2A-D, 4A-B, 5C surgical instrument 400,101A via surgical tool 500C), includes:
a body (Fig. 5C housing 501C);
an endoscope connection port (see annotated Fig. 5C) configured to be mounted on the opening (see annotated Fig. 5C opening, [col.. 5 line 40-59] “The robotic surgical instrument includes an interface base, a hollow tube having a proximal end mounted to the interface base…”) that is formed at the operation portion (Fig. 2A, 2B near end effector 158) of the endoscope (Fig. 2A surgical manipulator 152);
a fluid supply port (Fig. 5C near tube fittings 509A, irrigation, see annotated Fig. 5C);
a fluid suction port (Fig. 5C near tube fitting 509B, suction, see annotated Fig. 5C);
a first conduit (Fig. 5C conduit near hose 106A see annotated Fig. 5C) in the body (Fig. 5C housing 501C) and the fluid supply port (Fig. 5C near tube fittings 509A, see annotated Fig. 5C);
a second conduit (Fig. 5C near hose 509B, see annotated Fig. 5C) in the body (Fig. 5C housing 501C) and the fluid suction port (Fig. 5C near tube fitting 509B, suction, see annotated Fig. 5C);
a common conduit (Fig. 5C near tube 504, see annotated Fig. 5C) where the first conduit (Fig. 5C conduit near hose 106A see annotated Fig. 5C) and the second conduit (Fig. 5C near hose 509B, see annotated Fig. 5C) merge in the body (Fig. 5C housing 501C) and the endoscope connection port (see annotated Fig. 5C); and
a switch (Figs. 5C single four-way position valve 526 via valve actuation means illustrated in 10A, [col. 18 line 62- col. 19 line 32] “Various types of valves may be used as part of the flow control system 417 in the IAB robotic surgical instrument 400, 101A to control the flow of fluids to provide irrigation, aspiration, or blowing. For example, a linear motion type of valve (“linear valve”) may be used such as a spool-type valve, a trumpet-type valve, a piston-type valve, a poppet-type valve, or a sliding-plate-type valve. Alternatively, a rotational motion type of valve (“rotatable valve”) may be used such as a ball-type valve, a screw-type valve, a gate-type valve, a disc-type valve, a cock-type valve, a globe-type valve, or a rotary-plate-type valve. … FIGS. 6A-6C, 7A-7C, 8, 9 and 10A-10B illustrate some of the various types of valves, various types of actuation means, and various types of automatic return means that may be used to control the flow of fluids through the robotic surgical instrument and into the surgical site. It is understood that other types of valves, actuation means, and automatic return means may be used to provide flow control for a flow control system of an IAB robotic surgical tool.” And [col. 22 lines 22-49] “In FIG. 10A, a rotary pinch valve 1004A is illustrated to pinch closed a hose 1002 and can be rotated to release and open the hose 1002. …”) including a movable member (spring 606 [col. 19 lines 19-48] ) displaceably supported on the body (Fig. 5C housing 501C) and an operation member (rotating receiving element 418A[col. 19 lines 19-48]) for operation the movable member (spring 606 [col. 19 lines 19-48] ), the switch being configured to be switched between a first state (fluid flow [col. Col. 18 lines 14-29]) and a second state (suction flow [col. Col. 18 lines 14-29]) by displacing the movable member (spring 606 [col. 19 lines 19-48] ) with respect to the body by an operation of the operating member ([col. 19-lines 19-48] “…the valves used in the flow control system may be automatically returned to a closed position so that no fluid flows through the IAB robotic surgical tool when it is dismounted from the robotic arm or when the modular valve assembly is not mounted in the housing of the tool. That is, the valves may be spring loaded by a spring to return to a closed or fully off position when they are not actuated… the rotatable receiving element 418A is rotated, a shaft of the rotatable valve rotates to a different position in order to open or close the valve and control the flow of fluids. For actuation, the rotatable receiving element 418A couples to the rotatable driver 234 of the adapter 228 in the robotic arm. The pins 422A-422B of the rotatable receiving element 418A couple into the respective openings 240A-240B of the adapter 228. A coil spring 606 may be used to return the rotatable valve 604A to a closed or shut off position when the robotic surgical tool 101A is dismounted from the robotic arm.”) thereby closing or opening at least one of the first conduit (Fig. 5C conduit near hose 106A see annotated Fig. 5C) or the second conduit (Fig. 5C near hose 509B, see annotated Fig. 5C);
wherein in the first state (fluid flow), the first conduit (Fig. 5C conduit near hose 106A see annotated Fig. 5C) in communicates with the common conduit (Fig. 5C near tube 504, see annotated Fig. 5C), and the second conduit (Fig. 5C near hose 509B, see annotated Fig. 5C) does not communicate with the common conduit (Fig. 5C near tube 504, [col. Col. 18 lines 14-29] “The four-way valve 526 has four positions of operation. In a closed position, the valve is completely shut off so that no fluid flows through the hollow tube 504. In a second position suction/blowing are shut off, the first port and the second port of the valve couple together such that the surgical site may be irrigated by a liquid flowing through valve 526 and into the hollow tube 504. In a third position irrigation/suction are shut off, the first port and the third port of the valve couple together such that a pressurized gas may flow through valve 516 and out through the tip of the hollow tube 504 to blow a surgical site with a pressurized gas. In a fourth position irrigation/blowing are shut off, the first port and the fourth port of the valve couple together such that a vacuum may provide suction through the valve 516 and the hollow tube 504 to a surgical site to remove fluids and solids transported therein at the tip of the hollow tube 504.”);
wherein in the second state (suction flow), the first conduit (Fig. 5C near hose 106A, see annotated Fig. 5C) does not communicate with the common conduit (Fig. 5C near tube 504, see annotated Fig. 5C), and the second conduit (Fig. 5C near hose 509B, see annotated Fig. 5C) communicates with the common conduit (Fig. 5C near tube 504, , see annotated Fig. 5C, [col. Col. 18 lines 14-29])
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Regarding Claim 2, Millman discloses the endoscope system according to claim 1, wherein the switch (Figs. 5C single four-way position valve 526 via valve actuation means illustrated in 10A, [col. 18 line 62- col. 19 line 32] And [col. 22 lines 22-49]) is further configured to be switched to a third state (gas flow [col. Col. 18 lines 14-29]), and wherein, in the third state (gas flow [col. Col. 18 lines 14-29]), the first conduit (Fig. 5C near hose 106A, see annotated Fig. 5C) does not communicate with the common conduit (Fig. 5C near tube 504, see annotated Fig. 5C).
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Regarding Claim 4, Millman discloses the endoscope system according to claim 1, wherein in the first state (fluid flow), the second conduit suctions(Fig. 5C near hose 509B, see annotated Fig. 5C) from an outside (Figs. 1-5C hose 106B extends outside of housing 501C of the body (Fig. 5C housing 501C).
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Regarding Claim 5, Millman discloses the endoscope system according to claim 4, wherein the switch (Figs. 5C single four-way position valve 526 via valve actuation means illustrated in 10A, [col. 18 line 62- col. 19 line 32]) includes:
a porting body (Fig. 6A rotatable diver 234 ) slidably movable relative to the body (Fig. 5C housing 501C) between a first position (first rotating position of diver 234) and a second position (second rotating position of driver 234), and an input controller (Fig. 2d adapter 228) configured to receive an external force and to translate the external force to the porting body (Fig. 6A rotatable diver 234 ) to switch the porting body(Fig. 6A rotatable diver 234 ) between the first position (first rotating position of diver 234) and the second position (second rotating position of driver 234) ,([col. 19-lines 19-48] “…the valves used in the flow control system may be automatically returned to a closed position so that no fluid flows through the IAB robotic surgical tool when it is dismounted from the robotic arm or when the modular valve assembly is not mounted in the housing of the tool. That is, the valves may be spring loaded by a spring to return to a closed or fully off position when they are not actuated… In FIG. 6A, the rotatable receiving element 418A is directly coupled to the rotatable valve 604A. As the rotatable receiving element 418A is rotated, a shaft of the rotatable valve rotates to a different position in order to open or close the valve and control the flow of fluids. For actuation, the rotatable receiving element 418A couples to the rotatable driver 234 of the adapter 228 in the robotic arm. The pins 422A-422B of the rotatable receiving element 418A couple into the respective openings 240A-240B of the adapter 228. A coil spring 606 may be used to return the rotatable valve 604A to a closed or shut off position when the robotic surgical tool 101A is dismounted from the robotic arm.”)
Regarding Claim 7, Millman discloses the endoscope system according to claim 1, wherein the switch (Figs. 5C single four-way position valve 526 via valve actuation means illustrated in 10A, [col. 18 line 62- col. 19 line 32] And [col. 22 lines 22-49]) is further configured to be switched to a third state (gas flow [col. Col. 18 lines 14-29]), and wherein, in the third state (gas flow [col. Col. 18 lines 14-29]):the first conduit (Fig. 5C near hose 106A) does not communicate with the common conduit (Fig. 5C near tube 504), the second conduit does not be communication with the common conduit (Fig. 5C near tube 504), and the second conduit (Fig. 5C near hose 509B) suctions from outside (Figs. 1-5C hose 106B extends outside of housing 501C) of the body (Fig. 5C housing 501C).
Regarding Claim 8, Millman discloses the endoscope system according to claim 1, further comprising a sensor, wherein the sensor is configured to: detect one of the first state and the second state, generate a first signal when the first state is detected, and generate a second signal when the second state is detected, wherein the first signal actuates a suction device, and wherein the second signal prevents actuation of the suction device ([col. 2 line 16-20] “FIG. 3B with sensors to sense gripping and rotation of the handle to control robotic surgical tools, including an irrigation/aspiration/blowing robotic surgical tool.” And [col. 13 line 50 – col. 14 line 9 ] “…a roll sensor senses the roll motion of the touch sensitive handle 325 and generates control signals in response thereto to control the robotic surgical tools 101. The control of IAB robotic surgical tools 101A using the roll motion of the touch sensitive handle 325 is discussed below with reference to FIG. 16A.” and [col. 30 line 57 – 32 line 63] “The flow control system of the IAB robotic surgical instrument may be controlled by the operator O seated at the robotic surgical master control console 150 in a number of ways. For example, master axes of movement in a control handle that is normally used for controlling a wristed robotic surgical instrument may be used to activate irrigation, aspiration, and or blowing through an IAB robotic surgical instrument over a surgical site. As previously discussed, one or a combination of both the rotational motion of the touch sensitive handle 325 and the squeezing motion of the grips 350A,350B may be used to control the flow of fluids through the IAB robotic surgical tools. For example, the rotational motion of the touch sensitive handle 325 may be used for the control of irrigation while the squeezing motion of the grips 350A,350B may be used for controlling suction in a surgical site.”).
Regarding Claim 9, Millman discloses the endoscope system according to claim 1, further comprising: a sensor ([col. 2 line 16-20], and a processor (microprocessors [col. 12 lines 6-60] “The computer 151 may include one or microprocessors 302 to execute instructions and a storage device 304 to store software with executable instructions that may be used to generate control signals to control the robotic surgical system 100. The master control console 150 generates the control signals to control the fluid flows through the embodiments of the IAB robotic surgical instruments into and out of a surgical site. … The computer 151 with its microprocessors 302 interprets movements and actuation of the touch sensitive handles 325 (and other inputs from the operator O or other personnel) to generate control signals to control the robotic surgical instruments 101 in the surgical worksite.”, wherein the sensor is configured to: detect one of the first state and the second state, generate a first signal when the first state is detected, and generate a second signal when the second state is detected, and wherein the processor is configured to: receive one of the first signal or the second signal from the sensor, and actuate the suction device to perform suction when the first signal is received and stop the suction device to prevent suction when the second signal is received. ([col. 2 line 16-20] “FIG. 3B with sensors to sense gripping and rotation of the handle to control robotic surgical tools, including an irrigation/aspiration/blowing robotic surgical tool.” And [col. 13 line 50 – col. 14 line 9 ] “…a roll sensor senses the roll motion of the touch sensitive handle 325 and generates control signals in response thereto to control the robotic surgical tools 101. The control of IAB robotic surgical tools 101A using the roll motion of the touch sensitive handle 325 is discussed below with reference to FIG. 16A.” and [col. 30 line 57 – 32 line 63] “The flow control system of the IAB robotic surgical instrument may be controlled by the operator O seated at the robotic surgical master control console 150 in a number of ways. For example, master axes of movement in a control handle that is normally used for controlling a wristed robotic surgical instrument may be used to activate irrigation, aspiration, and or blowing through an IAB robotic surgical instrument over a surgical site. As previously discussed, one or a combination of both the rotational motion of the touch sensitive handle 325 and the squeezing motion of the grips 350A,350B may be used to control the flow of fluids through the IAB robotic surgical tools. For example, the rotational motion of the touch sensitive handle 325 may be used for the control of irrigation while the squeezing motion of the grips 350A,350B may be used for controlling suction in a surgical site.”).
Regarding Claim 12, Millman discloses the endoscope system according to claim 1, wherein the switch (Figs. 5C single four-way position valve 526 via valve actuation means illustrated in 10A, [col. 18 line 62- col. 19 line 32] is configured to in the first state (fluid flow), compress the second conduit (Fig. 5C near hose 509B) without compressing the first conduit (Fig. 5C near hose 106A) [col. Col. 18 lines 14-29], and in the second state (suction flow [col. Col. 18 lines 14-29]), compress the first conduit (Fig. 5C near hose 106A) without compressing the second conduit (Fig. 5C near hose 509B) [col. Col. 18 lines 14-29].
Regarding Claim 13, Millman discloses the endoscope system according to claim 1, wherein the switch (Figs. 5C single four-way position valve 526 via valve actuation means illustrated in 10A, [col. 18 line 62- col. 19 line 32]) includes a rotor (Fig. 6A rotatable driver 234) rotatable about an rotation axis (Fig. 6a axis of shaft 602) with respect to the body (Fig. 5C housing 501C)to switch between the first state and the second state ,([col. 19-lines 19-48] “…the valves used in the flow control system may be automatically returned to a closed position so that no fluid flows through the IAB robotic surgical tool when it is dismounted from the robotic arm or when the modular valve assembly is not mounted in the housing of the tool. That is, the valves may be spring loaded by a spring to return to a closed or fully off position when they are not actuated… In FIG. 6A, the rotatable receiving element 418A is directly coupled to the rotatable valve 604A. As the rotatable receiving element 418A is rotated, a shaft of the rotatable valve rotates to a different position in order to open or close the valve and control the flow of fluids. For actuation, the rotatable receiving element 418A couples to the rotatable driver 234 of the adapter 228 in the robotic arm. The pins 422A-422B of the rotatable receiving element 418A couple into the respective openings 240A-240B of the adapter 228. A coil spring 606 may be used to return the rotatable valve 604A to a closed or shut off position when the robotic surgical tool 101A is dismounted from the robotic arm.”).
Regarding Claim 14, Millman discloses the endoscope system according to claim 13, wherein the rotor (Fig. 6A rotatable driver 234) includes a plate (Fig. 6A rotatable receiving element 418a) and a protrusion (Fig. 6a valve 604a) extending from the plate (Fig. 6A rotatable receiving element 418a), and wherein the protrusion (Fig. 6a valve 604a) is configured to: in the first state (fluid flow), compress ([col. 19-lines 19-48]) the second conduit (Fig. 5C near hose 509B) [col. Col. 18 lines 14-29], and in the second state (suction flow [col. Col. 18 lines 14-29]), compress ([col. 19-lines 19-48]) the first conduit (Fig. 5C near hose 106A).
Regarding Claim 15, Millman discloses the endoscope system according to claim 1, wherein the switch (Figs. 5C single four-way position valve 526 via valve actuation means illustrated in 10A, [col. 18 line 62- col. 19 line 32]) further includes a first conduit switching plate and a second conduit switching plate, wherein the first conduit switching plate has a first communication hole, wherein the second conduit switching plate has a second communication hole, wherein, in the first state, the first conduit communicates with the common conduit via the first hole, and wherein, in the second state, the second conduit communicates with the second common conduit via the second hole ,([col. 19-lines 19-48] “…the valves used in the flow control system may be automatically returned to a closed position so that no fluid flows through the IAB robotic surgical tool when it is dismounted from the robotic arm or when the modular valve assembly is not mounted in the housing of the tool. That is, the valves may be spring loaded by a spring to return to a closed or fully off position when they are not actuated… In FIG. 6A, the rotatable receiving element 418A is directly coupled to the rotatable valve 604A. As the rotatable receiving element 418A is rotated, a shaft of the rotatable valve rotates to a different position in order to open or close the valve and control the flow of fluids. For actuation, the rotatable receiving element 418A couples to the rotatable driver 234 of the adapter 228 in the robotic arm. The pins 422A-422B of the rotatable receiving element 418A couple into the respective openings 240A-240B of the adapter 228. A coil spring 606 may be used to return the rotatable valve 604A to a closed or shut off position when the robotic surgical tool 101A is dismounted from the robotic arm.”).
Regarding Claim 18, Millman discloses the endoscope system (Fig. 1) according to claim 1, further comprising:
a suction device (Fig. 1 vacuum pump 102B) provided outside the endoscope (Fig. 2A surgical manipulator 152).
Regarding Claim 19 , Millman discloses the endoscope system according to claim 18, wherein the endoscope (IAB robotic surgical instrument 400, 101A) is connected to the endoscope connection port (Fig. 4A conduit of hollow tube 404) of the conduit switching device with the endoscope conduit (Fig. 4A conduit of hollow tube 404) in communication with common conduit (Fig. 5C near tube 504).
Regarding Claim 20, Millman discloses the endoscope system according to claim 18, wherein the endoscope (IAB robotic surgical instrument 400, 101A) is a single-use endoscope ([col. 15 lines 10-11] “In yet another embodiment of the invention, the entire IAB robotic surgical instrument 400 is disposable.”).
Regarding Claim 21, Millman discloses the endoscope system according to claim 1, wherein the conduit switching device includes a connection portion comprising a Luer connector, and wherein the connection portion is detachably mounted on the endoscope via the Luer connector. ([col. 15 lines 54-64] “A first end of the one or more tube fittings 410A-410C may respectively couple to the one or more hoses 106A-106C, respectively. The one or more tube fittings 410A-410C may be barb fittings, luer fittings, or other types of hose or tube fittings. A second end of the one or more tube fittings 410A-410C couples to a flow control system 417 within the mountable housing 401. In some embodiments of the invention, the one or more hoses 106A-106C may directly couple to the flow control system without the one or more tube fittings 410A-410C. The end of the hollow tube 404 opposite the tip 406, also couples to the flow control system 417.”)
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 16 is rejected under 35 U.S.C. 103 as being unpatentable over Millman in view of Michael Edward Todd (US2009/0270791).
Regarding Claim 16, Millman discloses the conduit switching device according to claim 1, further comprising a third conduit (Fig. 5C near hose 106C),wherein the third conduit (Fig. 5C near hose 106C) communicates between the second conduit (Fig. 5C near hose 509B) and an outside of the body (Fig. 5C housing 501C), wherein the switching mechanism is configured to: prevent the second conduit (Fig. 5C near hose 509B) from suctioning fluid from the common conduit (Fig. 5C near tube 504) [col. Col. 18 lines 14-29], and in the second state, suction fluid from the common conduit (Fig. 5C near tube 504) via the second conduit (Fig. 5C near hose 509B), and prevent the third conduit (Fig. 5C near hose 106C) from suctioning fluid from the outside of the body (Fig. 5C housing 501C) [col. Col. 18 lines 14-29] but fails to explicitly state that the switching mechanism is configured to: in the first state, suction fluid from the outside of the body via the third conduit because Millman’s third conduit is used to facility pressurized gas to the surgical site.
However Todd in the same field of endeavor teaches the switching mechanism (the peristaltic pump) is configured to: in the first state, suction fluid from the outside of the body via the third conduit ([0113] “The console also has a docking station for the surgical cassette. Through an identification sensing mechanism, the console detects the cassette/card to activate the peristaltic pump which engages the aspiration tubing lines of the cassette. The cassette has two aspiration lines attached to the pump to provide a back-up in the event one line becomes clogged or kinked.”
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify Millman with the teachings of Todd to replace the third conduit near hose 509C of a pressurized gas source with a secondary suction sources as taught by Todd for the benefit of providing “…a back-up [suction line] in the event one line becomes clogged or kinked” [Todd – [0113].
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure:
Onoda et al. (US2009/0287047);
Kenji Yamane (US2011/0208003);
Michael Edward Todd (US2009/0270791);
David D. Blight (US2008/0154185);
Kobayashi et al. (US5697888);
Nagashige Takahashi (US5027791);
Opie et al. (US4852551); and
Shigeru Nakajima (US4800869)
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E MONAHAN whose telephone number is (571)272-7330. The examiner can normally be reached Monday - Friday, 8am - 5pm.
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/MEGAN ELIZABETH MONAHAN/Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795