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 .
Drawings
The drawings were received on October 28, 2025. These drawings are accepted.
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 1-6 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 Claims 1-6, there are many inconsistencies with the language used to define the robot hardware, e.g. “robot”, “series robot”, “robot arm”, “environmental sensor”, etc and antecedent basis is not maintained.
Regarding Claim 1, 8, “link of the surgery” is not understood. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “link” in claim 1 is used by the claim to mean “step,” while the accepted meaning is “connection.” The term is indefinite because the specification does not clearly redefine the term.
In Claim 1, starting at Step 3, “the selected optimal pose scheme” lacks antecedent basis.
In Claim 1, there are references to “the cameras”, “the left or right camera”, “the camera on either side of the positioning sensor”. However, these elements have not been positively defined. These components appear to lack antecedent basis and it is not clear how to construe the claim in light of this arrangement – e.g. is it required that there be two cameras each on either side of a positioning sensor? Since this is a tracking system contingent on understanding the arrangement of the elements in a frame of reference, the scope of the claim cannot be understood.
In Claim 2, antecedent basis is not maintained with “optimal measurement viewing angles”. “Optimal” should be deleted to maintain antecedent basis with claim 1.
In Claim 3, it is not understood what is meant by “the surgical link”. Even if this is meant to be surgical “steps”, a step has not been defined, i.e. “the surgical link” lacks antecedent basis.
In Claim 4, lines 8 and 10, “certain positional relationship” is unclear because it is not understood what makes it “certain”. What is this positional relationship? Are these two mentions of “certain positional relationship” meant to be referring to the same thing?
Regarding Claim 4, “according to claims 1 to 3” is confusing. Should this read “according to claim 3”?
The same issues as in claim 4 are present in claim 6.
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 1, 2, 4, and 5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Statutory category: Yes – The claim recites steps and is therefore a process.
Step 2A, Prong 1, Judicial Exception: Yes - The claims recite mathematical concepts of a multi-objective optimization, including Formulas 1-12 and constraint criteria in claim 1, Formulas 13-14 in claim 2, and Formula 15 in claim 3. (See Thales Visionix Inc. v. US, 850 F. 3d 1343 (2017) wherein the courts found that mathematical equations for determining the relative position of a moving object to a moving reference frame are considered abstract).
Further, there are steps that are performed in the mind or by hand and so the claims are also directed towards mental processes, including claim 1 “selecting, according [to] a preference of a user, a pose scheme of the robot in each link of the surgery” and “planning the path of the robot from the current pose to the pose scheme”. These steps are recited at a high level of generality and are processes performed by a human or capable of being performed in the human mind.
Step 2A, Prong 2, Integrated into Practical Application: No – The claims recite additional elements:
Claim 1 includes the additional elements of:
“a control host, a series robot having multi degrees of freedom, a positioning sensor, and an environment perception sensor, wherein the positioning sensor and/or the environment perception sensor are connected to a flange of the robot”: these elements are recited at a high level of generality and are general components of any generic robot for collecting data and controlling the robot. They do not impose any meaningful limits on practicing the abstract idea. For example, the tracking hardware is not limited to any specific modality or context,
“inputting position parameters of positioning tools and setting parameters”: This step is recited at a high level of generality and amounts to mere data gathering, which is a form of insignificant extra-solution activity, and
“the aforementioned mathematical formulas are all run on computers”: this element is merely a requirement to apply the mathematical formulas on a generic computer, which does not take the claimed invention out of the abstract idea category.
Claim 2 does not have additional elements.
Claim 3 includes the step of moving the robot (Step 3.8) in accordance with the optimal pose scheme as determined by using the mathematical formulas, which is determined to be a practical application of the abstract idea. Therefore Claim 3 is eligible.
Claims 4-5 includes additional elements “one or more positioning tools”, the positioning tools have “markers” which can be the shape features listed in claim 5 “a round hole, a hemisphere, a boss or a cone” or in claim 4 reflecting light (e.g. balls with high reflectivity coating), emitting (e.g. LED lamp), or patterned (e.g. QR code, gray code). This hardware is recited at a high level of generality and does not serve to integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. For example, the tracking hardware is not limited to any specific modality or context. The tracking hardware is also not limited to any specific structural arrangement, e.g. a specific arrangement of markers.
Claims 6-7 are dependent on Claim 3 and therefore eligible.
Step 2B, Inventive Concept: No – The additional elements in claims 1, 2, 4, and 5, as discussed with respect to Step 2A Prong Two, are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The data collection in claim 1 is routine data collection to input unspecified parameters and recited at a high level of generality. The hardware in claims 1, 4 and 5 is considered well-understood, routine, conventional activity in the field of surgical robotic tracking. All surgical robotic tracking systems have sensors, controller, robot/manipulator, and end-effector, of which are the components recited in the claim at a high level of generality. As such, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Overall, there is no inventive concept in the claims 1, 2, 4, and 5, and thus they are ineligible.
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 1-2, 4-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of patent number 12446980. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims are narrower in scope than the instant claims and therefore necessarily anticipate the claimed invention. In particular, patent claims 1+2 are using the same mathematical formulas represented in instant claim 1 for the purpose of surgical navigation.
Response to Arguments
Applicant's arguments filed October 28, 2025 have been fully considered but they are not persuasive.
Regarding rejections under 112(b), Applicant argues “link of surgery” is understood to mean “step of surgery” to one of ordinary skill in the art. While examiner thanks for the clarification, it is disagreed that one of ordinary skill would interpret it as such. In the robotic arts, “link” is more commonly applied to mean the connections between the robot arm parts, i.e. linkages. As such, it is an especially confusing term in this context. Examiner proposes to amend to “step” which is the accepted term for one of ordinary skill.
Regarding the rejection of double patenting, Applicant argues that the double patenting rejection is improper because the instant claim 1 includes details of multi-objective decision of a pose of a robot and planning of a path of the robot, whereas 18268315 does not. However, the 18268315 claims 1-2 include all the same mathematical formulas for the multi-objective decision and are directed towards “surgical navigation” which implies path planning to a target. It is agreed 18268315 does not conflict with instant claim 3, as the details of the path planning are not represented in 18268315. As such, examiner withdraws the rejection under double patenting for claims 3, 6-7. Examiner notes that the application 18268315 matured into patent 12446980. A terminal disclaimer can be filed to overcome the double patenting rejection or by incorporating details of claim 3 into claim 1.
Regarding the rejection under USC 101, Applicant argues the claims as amended overcome the 101 issue because claim 1 now requires “the computer performs the steps to control a robot arm for patient surgery” and “the aforementioned mathematical formulas are all run on computers”. However, the claim does not require any steps of controlling the robot arm. Specifically, step 3 only plans, no execution steps exist.to actually cause the robot to move. Further, applying steps on a computer is not sufficient to take an abstract idea out of the abstract idea category. There is additional confusion because one of the steps specifically requires to be performed by a human, i.e. step 2 “selecting, according to a preference of a user…”.
Many issues that were raised under USC 112(b) and objections were overcome by the amendments. However, several issues with regard to antecedent basis under USC 112(b) and USC 101 remain. Examiner attempted to telephone Applicant to resolve all the remaining issues and left a voicemail, but Applicant did not return the phone call. Examiner invites Applicant to telephone for interview to resolve the remaining issues.
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 ANGELA MARIE HOFFA whose telephone number is (571)270-7408. The examiner can normally be reached Monday - Friday 9:30 am - 6:00 pm.
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, Keith Raymond can be reached at (571)270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ANGELA M. HOFFA
Primary Examiner
Art Unit 3799
/Angela M Hoffa/Primary Examiner, Art Unit 3799
Prosecution Insights