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 .
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.
Notice of Amendment
In response to the amendment(s) filed on 7/13/26, amended claim(s) 1-4 and 18-21, canceled claim(s) 5-17, and new claim(s) 23-24 is/are acknowledged. The following new and/or reiterated ground(s) of rejection is/are set forth:
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.
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: “a catheter robot support,” in claims 1 and 23-24, which has no corresponding structure.
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 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.
Claim(s) 1-4, 18-21, and 23-24 is/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.
For claim 1, the claim language “a catheter robot support” 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, at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, there is a lack of evidence that Applicant had possession of the claimed subject matter since there is no description of the structure(s) that correspond to the claimed subject matter. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter deleted from the claim(s).
For claim 23, the claim language “a catheter robot support” 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, at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, there is a lack of evidence that Applicant had possession of the claimed subject matter since there is no description of the structure(s) that correspond to the claimed subject matter. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter deleted from the claim(s).
For claim 24, the claim language “a catheter robot support” 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, at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, there is a lack of evidence that Applicant had possession of the claimed subject matter since there is no description of the structure(s) that correspond to the claimed subject matter. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter deleted from the claim(s).
Dependent claim(s) 2-4 and 18-21 fail to cure the deficiencies of independent claim 1, thus claim(s) 1-4, 18-21, and 23-24 is/are rejected under 35 U.S.C. 112(a).
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.
Claim(s) 1-4, 18-21, and 23-24 is/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.
For claim 1, the claim language “a catheter robot support” is ambiguous. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, the metes and bounds of the claim language cannot be ascertained since it is unknown what structure(s) are covered by the claim language and what structure(s) are not. The claim is examined as meaning any structure capable of performing the recited function.
For claim 19, the claim term “the other” (line 3) lacks antecedent basis. The claim is examined as this being a newly introduced claim term.
For claim 23, the claim language “a catheter robot support” is ambiguous. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, the metes and bounds of the claim language cannot be ascertained since it is unknown what structure(s) are covered by the claim language and what structure(s) are not. The claim is examined as meaning any structure capable of performing the recited function.
For claim 24, the claim language “a catheter robot support” is ambiguous. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, the metes and bounds of the claim language cannot be ascertained since it is unknown what structure(s) are covered by the claim language and what structure(s) are not. The claim is examined as meaning any structure capable of performing the recited function.
Dependent claim(s) 2-4 and 18-21 fail to cure the ambiguity of independent claim 1, thus claim(s) 1-4, 18-21, and 23-24 is/are rejected under 35 U.S.C. 112(b).
Response to Arguments
Applicant’s arguments filed 7/13/26 have been fully considered.
With respect to the objections to the claims, Applicant’s amendments and arguments are persuasive and thus the objections are withdrawn.
With respect to the 112 rejections, most of the rejections are withdrawn in view of Applicant’s amendments and arguments. However, the ones that are maintained are because there is no corresponding structure for the claimed “support.” The specification just repeats the word “support” and gives a reference numeral (i.e., 14) to it. Also, Fig. 1 just shows a rectangle and a rectangle is not corresponding structure.
With respect to the 102/103 rejections, Applicant’s amendments and arguments and persuasive and thus the rejections are withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Robertson can be reached at (571) 272-5001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
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