DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Claim Objections
Claim 26 is objected to because of the following informalities: line 2 should be amended to - comprises a garage alike structure in order to store the [[micro-robot]] microrobot-. Appropriate correction is required.
Claims 31-33 are objected to because of the following informalities: line 1 should be amended to –[[System]] The system according to claim 16-. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16-33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 16:
The claim limitation “wherein the microrobot is configured to navigate inside the target body part in an autonomous way, independently from the flexible elongated element” (emphasis added by the examiner) in the final line of the claim is new matter. There is nothing in the original disclosure that indicated the microrobot is able to navigate autonomously and independently of the flexible elongated element. The drawing show the microrobot (12) and its connection (via 16) with the elongated element (20) but the specification or the figures do not indicate that they are able to operate independently or autonomously from each other. For this reason, this limitation is rejected as new matter.
Claims 17-33 are rejected due to their dependence on claim 16.
Allowable Subject Matter
Claims 28-30 could not be indicated as allowable at this time due to their dependence on claim 16 which has been rejected under 35 USC 112(a).
Response to Arguments
Applicant’s arguments, see remarks, filed 6/18/2026, with respect to the non-final office action filed 2/18/2026 have been fully considered and are persuasive.
Regarding the claim objection:
The applicant’s amendments to the claims have addressed most of the previous claim objections and for this reason most of the previous rejections have been withdrawn. However, some of the rejections were not addressed and they have been maintained. Further, there are new objections based on the amendments to the claims.
Regarding the 35 USC 112(b) claim rejections:
The applicant’s amendments to the claims have addressed the previous claim rejections and for this reason they have been withdrawn.
Regarding the 35 USC 102 rejections:
The applicant’s amendments to the claims have overcome the previous claim rejections and for this reason they have been withdrawn. However, these claims are now rejected under 35 USC 112(a) as indicated above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WESLEY HARRIS whose telephone number is (571)272-3665. The examiner can normally be reached M to F, 9am-5pm.
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, Michael Tsai can be reached on (571) 270-5246. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WESLEY G HARRIS/Examiner, Art Unit 3783
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