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 Group I (claims 1-18) in the reply filed on December 3, 2025 is acknowledged. Claims 1-18 have been examined on the merits in this office action and claims 19 and 20 are withdrawn from further consideration.
Specification
The disclosure is objected to because of the following informalities: on page 1, para [0001], the status of the copending application which has issued as a US patent must be updated.
Appropriate correction is required.
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 1-11, 13 and 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11723739.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the only difference between the claims of the present application and the patented claims is that the patented claims include more elements and are thus more specific. Thus, the invention of the patented claims is in effect a “species” of the “generic” invention of the claims of the present application. It has been held that the generic invention is “anticipated” by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the claims of the present application are anticipated by the patented claims, they are not patentably distinct from the patented claims.
Pending claims 1 and 2 are anticipated by patented claim 1.
Pending claims 3-11 are respectively anticipated by each of patented claims 2-10.
Pending claims 13 and 16 are respectively anticipated by each of patented claims 2 or 3; or respectively by each of patented claims 12 or 13.
Pending claims 17 and 18 are respectively anticipated by each of patented claims 6 and 7.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 13 and 16-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Claim 13 recites a generic processor that is used to perform a comparison and a calculation This judicial exception is not integrated into a practical application because the recited elements do not improve the functioning of a computer or any other technology or technical field according to MPEP 2106.04(d)(1) and 2106.05(a). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed apparatus, a generic processor, merely performs calculations and comparisons, i.e., automating mental tasks.
Dependent claims 16-18, recite with more specificity data for evaluation, judgment and opinion (see MPEP 2106.04(a)(2)(III)). While the claims recite steps that appear to be extra solution activity where data to be analyzed is obtained by the abstract process, they do not recite a practical application that would amount to significantly more as a whole.
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 1-18 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.
In claims 1 and 13, the recitation “a tip force at the joint” renders the claim vague and indefinite because it is inconsistent with Applicant’s disclosure which describes the tip force to be the force estimated at the distal end or tip of the surgical tool (para [00204]). For examination, the tip force is considered to be the force estimated at the tip of the surgical tool. Further, it is unclear how the motor is related to the joint (neither of which are positively recited in the claims).
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 9, 10 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Prisco (US 7843158).
Regarding claims 1 and 13, Prisco discloses processing or controller components for operation of a joint of a tool in a surgical robotic system, the system including: one or more processing components (processors) configured to: perform a comparison of a tip force at the end of a tool to a predetermined threshold (threshold value); calculate an admittance control compensation term (value of velocity limiting function) in response to the comparison of the tip force and the predetermined threshold; and modify an initial command for a motor (motor controlled joints) based on the admittance control compensation term.
Regarding claims 9, 12, 14 and 15, Prisco discloses the one or more processors configured to receive sensor data (“sense motor torques which are used to drive joints to desired joint positions,” col. 6, lines 14-18) for a current position of the motor for the joint of the tool, wherein the command for the motor is based, in part, on the sensor data (Fig. 11, col. 4, lines 35-67, col. 5, lines 7-67, col. 6, lines 1-38).
Regarding claim 10, Prisco discloses the command for the motor based on the admittance control compensation term improves safety at the tip of the tool (col. 3, lines 1-13).
Allowable Subject Matter
Non application of prior art to claims 2-8, 11 and 16-18 indicates allowable subject matter provided the double-patenting rejections and the rejections under 35 USC 112(b) are overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anu Ramana whose telephone number is (571)272-4718. The examiner can normally be reached 8:00 am-5:00 pm.
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February 25, 2026
/Anu Ramana/Primary Examiner, Art Unit 3775