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 Arguments
Applicant’s arguments filed on 01/20/2026 have been fully considered but are moot in view of a new grounds of rejection. Nevertheless, to advance prosecution Examiner addresses the following argument.
Applicant argues that Applicant’s instant invention differs from Kincaid, citing the following differences: 1) Applicants’ main energy of deformation is stored in the spring, while Kincaid’s main energy of deformation is stored in the bendable section, 2) Applicant’s system is force controllable and shape controllable, while Kincaid’s system is not and 3) Applicant’s system generates elongation in the spring element, not the tip of the instrument, as described in Kincaid. Examiner notes that although such differences may exist between the instant invention and the invention described by Kincaid, patentable weight can only be given to features recited in the claims. For example, amended claim 1 does not require the endodevice be both “force controllable and shape controllable” or preclude the elasticity from being “implemented in the bendable section”.
Claim Rejections - 35 USC § 102/103
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 1-6, 9, 10, 12, 13 and 17-19 are rejected under 35 U.S.C. 102(a)(2)/103 as being unpatentable over Kincaid et al. (US 2020/0375682) [in view of Inoue (US 2017/0112519)].
In re claim 1, Kincaid discloses an endodevice with tension control (abstract; FIG. 1A, FIG. 1B), the endodevice comprising:
a back end unit (300), and
an endoscopic unit (structures to the left of 300) configured to be coupled to the back end unit,
wherein the endoscopic unit includes
an endoscopic coupling structure (FIG. 1A: cone shaped structure in between right end of 102 and 200),
a bendable rod element (100), and
a first tendon (FIG. 3: 110a) and a second tendon (110b) arranged to bend a first portion (103) of the bendable rod element and a second portion (102) of the bendable rod element relative to one another [0034],
wherein the back end unit includes
a back end coupling structure (cone shaped structure in between right end of 102 and 200) corresponding to the endoscopic coupling structure and including a first tendon coupler (point at which 110a exits the right end of 100) and a second tendon coupler (point at which 110b exits the right end of 100),
a *first spring element (spring of sensor 221; [0057]) having a first function end (left end closest to 231) and a second function end (right end closest to 311), and
a drive member (311) and
either a
second drive member (312) or
a holding member,
wherein
the first spring element is connectable at its first function end to the first tendon via the first tendon coupler (FIG. 3) and
the first spring element is connected to the drive member at its second function end (FIG. 3),
wherein the second drive member or the holding member is connectable to the second tendon via the second tendon coupler (FIG. 3)
wherein the back-end unit further comprises
a first sensor element (encoder portion of 221; [0057]) and
a second sensor element (231),
wherein
between the drive member and the second function end of the first spring element the first sensor element is arranged (FIG. 3) and
between the first function end of the first spring element and the first tendon coupler the second sensor element is arranged (FIG. 3; examiner notes black dot to the right of 110a indicates the position of the second sensor element 231),
wherein each of the first sensor element and the second sensor element is configured to generate a sensor signal ([0058]: the first sensor element 221 outputs signal “Fi” and the second sensor element 231 outputs signal “Xi”),
wherein the first sensor element, the second sensor element and the drive member are connected to a control unit (FIG. 3; [0058]), and
wherein the control unit is configured
to obtain sensor signals from the first sensor element and the second sensor element [0058] and
to compute a deflection of the first spring element on the basis of the sensor signals obtained from the first sensor element and the second sensor element ([0058]; both sensor signals (“Xi, Fi”) are used to determine response to applied force, i.e., deflection).
Regarding the limitation “spring element”, looking at FIG. 3 of Kincaid it is apparent that the sensor 221 includes a spring element, given that springs or spring like type elements are typically rendered as zigzags in conceptual drawings (as is the case in Applicant’s FIG. 3). As would be known by one of ordinary skill in the art, any encoder-based sensor (such as the sensor 221 described by Kincaid) would include both a spring element and an element for measuring position. However, in so far that this is not explicitly stated, Kincaid is alternatively rejected under 35 U.S.C. 103 as follows:
Inoue, like Kincaid, discloses endodevice (FIG. 1; [0023]: “manipulator 1…used in, for example, laproscopic surgery”) with a sensor element (11) that includes a spring element (10; [0028]: “plate spring”) and an element (13; [0028]: “magnetic sensor”) for measuring a displacement of the spring element [0036].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first sensing element of Kincaid to include both a spring element and a position element, as taught by Inoue. One would have been motivated to make this modification because sensors comprising both spring elements and position elements are known in the art, as evidenced by Inoue.
In re claim 2, Kincaid discloses wherein the back end unit comprises:
a second spring element (spring of sensor 222; [0057]) having a first function end (left end of spring closest to 232) and a second function end (right end of spring closest to 312),
a third sensor element (encoder portion of 222; [0057]), and
a fourth sensor element (232),
wherein
the second spring element is connectable at its first function end to the second tendon via the second tendon coupler (FIG. 3) and
the second spring element is connected to the drive or holding member at its second function end (FIG. 3),
wherein
between the drive or holding member and the second function end of the second spring element the third sensor element is arranged (FIG. 3) and
between the first function end of the second spring element and the second tendon coupler the fourth sensor element is arranged (FIG. 3; examiner notes that the black dot to the right of 110b indicates the position of the fourth sensor element 232),
wherein each of the third sensor element and the fourth sensor element is configured to generate a sensor signal ([0058]: “Fi”, “Xi”);
wherein the third sensor element the fourth sensor element and the drive or holding member are connected to the control unit [0058], and
wherein the control unit is configured
to obtain sensor signals from the third sensor element and the fourth sensor element and [0058];
to compute a deflection of the second spring element on the basis of the sensor signals obtained from the third sensor element and the fourth sensor element ([0058]; both sensor signals ([0058]; both sensor signals (“Xi, Fi”) are used to determine response to applied force, i.e., deflection)).
For substantially the same reasons as described above (In re claim 1; see specifically paragraph 7), it is apparent that the sensor 222 includes a spring element. However, in so far as this is not explicitly stated claim 2 is alternatively rejected under 35 U.S.C. § 103 as follows:
For substantially the same reasons as described above (In re claim 1; see specifically paragraph 9), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first sensing element of Kincaid to include both a spring element and a position element, as taught by Inoue.
In re claim 3, Kincaid discloses
wherein the first sensor element is associated to a first axis section driven by the drive member and the second sensor element is associated to a second axis section (FIG. 3; apparent as both sensor elements span across a section of a horizontal axis)
wherein the first spring element connects the first axis section and the second axis section (apparent as the first spring element is located between the first and second sensor element (see above In re claim 1)).
In re claim 4, Kincaid discloses wherein
the first sensor element is configured to measure a position of the first axis section ([0057, 0058]: 221, 222 “can be encoder based”)
the second sensor element is configured to measure a position of the second axis section [0057, 0058].
In re claim 5, Kincaid discloses
wherein the third sensor element is arranged on a third axis section and the fourth sensor element is arranged on a fourth axis section (FIG. 3; apparent as both the third and fourth sensor elements span across a section of the horizontal axis)
wherein the second spring element connects the third axis section and the fourth axis section (apparent as the second spring element is located between the third and fourth sensor element (see above In re claim 1)).
In re claim 6, Kincaid discloses
wherein the third axis section is driven by the drive or holding member (FIG. 3; apparent as the third sensor element (arranged on the third axis section) is driven by the drive member ),
wherein the third axis section is driven by the drive member via a coupling, or
wherein the third axis section is supported in a non-driven manner by the drive or holding member.
In re claim 9, Kincaid discloses wherein
the third sensor element is configured to measure a position of the third axis section ([0057, 0058]: 221, 222 “can be encoder based”) and
the fourth sensor element is configured to measure a position of the fourth axis section [0057, 0058].
In re claim 10, Kincaid discloses wherein the drive member comprises an electric motor (FIG. 3: 311 “linear motor”).
In re claim 12, Kincaid discloses wherein the second drive member or the holding member comprises an electric motor (FIG. 3: 312; [0051]: “DC motor”).
In re claim 13, Kincaid discloses wherein the second drive member or the holding member comprises a stationary supporting structure (312a; [0056]: “base”).
In re claim 17, Kincaid discloses
wherein the first sensor element, the second sensor element, the third sensor element and/or the fourth sensor element each comprise an encoder ([0057]: 221, 222, 232, 232 are “encoder based”).
In re claim 18, Kincaid discloses wherein the first tendon and the second tendon
are configured in the form of a human agonist and antagonist (FIG. 2C; [0043]) and
are attached to a tip portion of the endoscopic unit (FIG. 3).
In re claim 19, Kincaid discloses wherein the first tendon, and the second tendon are essentially non-expandable ([0039]: apparent as both “piano wire” and “stainless steel wire” have high structural stiffness).
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.
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.
Claims 11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kincaid et al. (US 2020/0375682) in view of Au et al. (US 2014/0128849).
In re claim 11, Kincaid does not disclose
wherein the drive or holding member comprises two winches coupled to one another.
Au discloses an analogous endodevice device capable of maintaining tension (abstract; FIG. 2). Au additionally discloses the endodevice having a backend unit (includes 230, 250) and an endoscopic unit (220). Au further discloses the backend unit having a drive member (250) coupled to a drive or holding member (230). Au discloses the drive or holding member being a winch (235; [0024]). Although Au names element 235 as a capstan, Examiner notes that the capstan can be considered a winch as it is falls under the plain definition of a winch (i.e., a device consisting of a rope, cable or chain winding around a horizontal rotating drum, turned by a crank or by a motor or other power source).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the drive or holding member taught by Kincaid to comprise a winch as disclosed by Au. One would have been motivated to make this modification because using a winch eliminates the need for a second drive motor, allowing the drive system to be simpler, lower cost, and more compact. (Au, [0020]).
Regarding the limitation “two winches coupled to one another”, one of ordinary skill in the art would have been capable of modifying the invention to include two winches coupled to one another because it would be considered a duplication of parts, as shown in re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
In re claim 14, the proposed combination yields
wherein the second drive or the holding member comprises a winch which is coupled to the drive member (see above In re claim 11).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kincaid et al. (US 2020/0375682) in view of Suzuki et al (US 2020/0281673).
In re claim 15, Kincaid is silent on wherein the first spring element and/or the second spring element comprise a non-linear spring characteristic curve.
Suzuki discloses a device (FIG. 3) that like Kincaid includes a back-end unit (310) and front-end unit (301, 101a, 101b) that is configured to come into contact with a patient’s skin [0087]. The device includes a spring element that can exhibit linear or non-linear characteristics [0078].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first spring element and/or the second spring element to comprise a non-linear spring characteristic curve, as taught by Suzuki. One would have been motivated to make this modification because they are known alternatives as evidenced by Suzuki. Moreover, one of ordinary skill in the art would have the ability to choose the type of spring characteristic curve, that is linear or nonlinear, that would best meet their needs.
Claims 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kincaid et al. (US 2020/0375682) in view of Prisco et al. (US 2010/0331820).
In re claim 16, Kincaid does not disclose
wherein the first spring element and/or the second spring element are in the form of a rotational spring.
Prisco discloses an analogous endodevice (FIG. 2A) with an endoscopic unit (right of 220), a back-end unit (220) and two tendons (230A, 230B). Prisco additionally discloses using a spring system (which includes a spring element (216)) to control tension in the two tendons (abstract). Prisco further discloses the spring element optionally being a rotational spring (FIG. 2B: 216B; [0023]: “torsion spring”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first spring element/ and or the second spring element to be in the form of a rotational spring, as taught by Prisco. One would have been motivated to make this modification because rotational springs are known in the art and the result of the modification (i.e., tension control), is reasonably predictable. Moreover, one of ordinary skill in the art would have the ability to choose the spring element that would best meet their needs.
Claims 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kincaid et al. (US 2020/0375682) in view of Brisson et al. (US 2020/0275984).
In re claim 20, Kincaid does not disclose
wherein the bendable rod element comprises a first link portion and a second link portion being connected to one another via a first joint element.
Brisson discloses an analogous endodevice (abstract; FIG. 6) with a bendable rod element that comprises a first link portion (left of 610-2) connected to a second link portion (right of 610-2) via a first joint element (610-2). Brisson further discloses a third link portion (left 610-1) being connected to the second link portion (right of 610-2) via a second joint element (610-1).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the bendable rod element of Kincaid to comprise a first link portion and a second link portion connected to one another via a first joint element, as taught by Brisson. One would have been motivated to make this modification because having a bendable rod element with a joint element adds an additional degree of freedom (Brisson, [0080]).
In re claim 21, the proposed combination yields
wherein the bendable rod element comprises a third link portion being connected to the second link portion via a second joint element (see above In re claim 20).
In re claim 22, the proposed combination yields
wherein the first link portion the second link portion and/or the third link portion are rigid (apparent that the first link portion (left 610-2),i.e. jawed tool, is rigid as it is used to perform precise surgical tasks; [0037]).
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Allen, IV (US 10,695,123) discloses a surgical instrument with a sensor assembly configured to sense a property of a spring indicative of an amount the spring has been compressed (abstract). As shown in FIG. 4, the sensor assembly measures at two positions: one to the left of the spring and one to the right of the spring.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVIA WALKER whose telephone number is (571)272-7052. The examiner can normally be reached M-F: 7-4pm CT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at (571)-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLIVIA WALKER/Examiner, Art Unit 3796
/DAVID HAMAOUI/SPE, Art Unit 3796
Prosecution Insights