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
This Office action is in response to the applicant’s communication filed on 12/16/2025. Each argument and/or amendment directed towards a maintained rejection is addressed below. Rejections/objections not repeated herein have been withdrawn.
Applicant’s arguments, see page 7, with respect to Applicant’s claim amendments made in view of the previous 112 rejections have been fully considered and are persuasive. The previous 112 rejections have been withdrawn.
Applicant's arguments, see pages 7-8, alleging that the embodiments of Figures 4 and 10 are completely separate systems have been fully considered but they are not persuasive. It is the Examiner’s position that the embodiment of Figure 4 was never used in the previous rejections therefore making Applicant’s arguments moot. The previous rejections specifically cited to the embodiment of Figs. 3A-3B, 8A-8F and 10. Figures 3A-3B comprise a first embodiment (see [0090]), Figs. 8A-8F expressly depict the embodiment of Figs. 3A-3B in use during a tibial surgical procedure (see [0095]), and Fig. 10 depicts a proximal holding arm usable to attach the embodiment of Figs. 3A-3B to the surgical table during a surgical procedure (see Abstract and claim 1; [0189]-[0192]). For at least these reasons, Applicant’s arguments are not persuasive.
Applicant's arguments, see page 8, alleging that Schers fails to disclose “the plurality of arm sections are connected to each other by the at least one motorized joint and the plurality of non-motorized joints” have been fully considered but they are not persuasive. It is the Examiner’s position that Schers expressly discloses such a configuration as expressly shown in Figs. 3A-3B, 8A-8F and 10. The robotic arm expressly extends between the distally-disposed saw instrument and proximally extends to the robotic arm’s attachment to the surgical table, wherein the robotic arm comprises a plurality of arm sections between the distal and proximal ends of the robotic arm and comprises both a plurality of motorized joints ([0165]-[0166]; [0186]; [0235]; actuation unit 4 expressly comprises at least 1 or 2 motorized degrees of freedom) and a plurality of non-motorized joints ([0189]-[0191]; [0198]; respective arm section between non-motorized/passive pivot links 51 expressly shown in Fig. 10) disposed therebetween. For at least these reasons, Applicant’s arguments are not persuasive.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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: “braking mechanism” in claims 1, 7 and 15.
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 § 102
Claim(s) 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schers et al. (US 2021/0068845) (i.e., having 371(c) date of November 4, 2020).
Schers discloses (see Figs. 2-3B, 8A-8F and 10) a surgical system and method for cutting an anatomical structure according to at least one target plane comprising the following claim limitations:
(claim 1) A robotic arm assembly (100, Fig. 10) comprising a plurality of arm sections (24a-24b, Figs. 8A-8F; and respective arm portions between pivot links 51, Fig. 10); at least one motorized joint ([0165]-[0166]; [0186]; [0235]; actuation unit 4 expressly comprises at least 1 or 2 motorized degrees of freedom), wherein each motorized joint comprises an actuation unit (4) configured to (i.e., capable of) move the motorized joint in order to control the movement of an adjacent arm section connected thereto ([0165]-[0166]; [0186]; [0235]); a plurality of non-motorized joints (i.e., respective arm portions between pivot links 51, Fig. 10; [0189]-[0191]; [0198]), wherein each of the plurality of non-motorized joints is configured to (i.e., capable of) control the movement of the adjacent arm section without the actuation unit (4) (as shown in Fig. 10; see claim 1; [0189]-[0193]; [0198]; holding arm 5 expressly claimed and disclosed as a passively/manually movable armature); and a braking mechanism associated with one or more of the plurality of non-motorized joints, the braking mechanism configured to (i.e., capable of) arrest movement of the adjacent arm section connected to the one or more of the plurality of non-motorized joints ([0189]-[0191]; [0194]; [0198]; non-motorized arms of holding arm 5 expressly brakable/lockable by a variety of disclosed mechanisms); wherein the plurality of arm sections are connected to each other by the at least one motorized joint (i.e., actuation unit 4 expressly comprises at least 1 or 2 motorized degrees of freedom) and the plurality of non-motorized joints ([0189]-[0191]; [0198]; respective arm section between non-motorized/passive pivot links 51 expressly shown in Fig. 10) (i.e., the robotic arm extending between the distally-disposed saw instrument and proximal attachment point of the arm to the surgical table comprises both a plurality of motorized joints and a plurality of non-motorized joints), the at least one motorized joint and the plurality of non-motorized joints collectively are configured to (i.e., capable of) provide six degrees of freedom ([0054]; [0165]-[0166]; [0180]; [0186]; [0198]; motorized joint expressly may comprise 1 to 5 motorized degrees of freedom and up to six non-motorized degrees of freedom are expressly disclosed), and a number of the at least one motorized joint number is less than a number of the plurality of non-motorized joints ([0165]-[0166]; [0186]; 1 to 5 motorized degrees of freedom; and [0198]; six non-motorized degrees of freedom expressly disclosed);
(claims 2 and 8) further comprising an end effector (22, Figs. 3A-3B) disposed at a distal end thereof (as shown in Figs. 3A-3B);
(claims 3 and 9) wherein the end effector (22) is configured to (i.e., capable of) make planar cuts in an orthopedic surgical procedure (as expressly shown in Figs. 8A-8F; [0157]);
(claims 4, 10 and 17) wherein the braking mechanism is configured to (i.e., capable of) simultaneously lock two or more of the plurality of non-motorized joints ([0191]; holding arm 5 comprising multiple pivot links 51 is expressly brakable/lockable with the actuation of a single button, single foot switch, or single remote button);
(claims 5, 11 and 18) wherein the braking mechanism is associated with one of the at least one motorized joint (106-108, Fig. 33; [0146]-[0156]; [0187]; [0337]; [0376]; control unit expressly commands motorized joints of the actuation unit 4 to move and then brake at a position in alignment with the target plane); and the braking mechanism is configured to (i.e., capable of) brake the motorized joint with which it is associated and the one or more of the plurality of non-motorized joints of adjacent arm sections ([0191]; [0194]; non-motorized joints of the holding arm 5 are also expressly braked as the robotic device aligns with its target position);
(claims 6, 12 and 19) wherein the braking mechanism comprises a motor that is coupled to and configured to actuate a mechanical braking assembly ([0191]; braking system expressly may comprise an electric motor);
(claim 7) A surgical system comprising a robotic arm assembly (100, Fig. 10) comprising a plurality of arm sections (24a-24b, Figs. 8A-8F; and respective arm portions between pivot links 51, Fig. 10); at least one motorized joint ([0165]-[0166]; [0186]; [0235]; a actuation unit 4 expressly comprises at least 1 or 2 motorized degrees of freedom), wherein each motorized joint comprises an actuation unit (4, Figs. 3A-3B) configured to (i.e., capable of) move the motorized joint in order to control the movement of an adjacent arm section connected thereto ([0165]-[0166]; [0186]; [0235]); a plurality of non-motorized joints (i.e., respective arm portions between pivot links 51, Fig. 10; [0189]-[0191]; [0198]), wherein each of the plurality of non-motorized joints is configured to (i.e., capable of) control the movement of the adjacent arm section without the actuation unit (4) (as shown in Fig. 10; see claim 1; [0189]-[0193]; [0198]; holding arm 5 expressly claimed and disclosed as a passively/manually movable armature); and a braking mechanism associated with one or more of the plurality of non-motorized joints, the braking mechanism configured to (i.e., capable of) arrest movement of the adjacent arm section connected to the one or more of the plurality of non-motorized joints ([0189]-[0191]; [0194]; [0198]; non-motorized arms of holding arm 5 expressly brakable/lockable by a variety of disclosed mechanisms); wherein the plurality of arm sections are connected to each other by the at least one motorized joint (i.e., actuation unit 4 expressly comprises at least 1 or 2 motorized degrees of freedom) and the plurality of non-motorized joints ([0189]-[0191]; [0198]; respective arm section between non-motorized/passive pivot links 51 expressly shown in Fig. 10) (i.e., the robotic arm extending between the distally-disposed saw instrument and proximal attachment point of the arm to the surgical table comprises both a plurality of motorized joints and a plurality of non-motorized joints), the at least one motorized joint and the plurality of non-motorized joints collectively are configured to (i.e., capable of) provide six degrees of freedom ([0054]; [0165]-[0166]; [0180]; [0186]; [0198]; motorized joint expressly may comprise 1 to 5 motorized degrees of freedom and up to six non-motorized degrees of freedom are expressly disclosed), and a number of the at least one motorized joint number is less than a number of the plurality of non-motorized joints ([0165]-[0166]; [0186]; 1 to 5 motorized degrees of freedom; and [0198]; six non-motorized degrees of freedom expressly disclosed); a tracking system (200, Fig. 2) configured to (i.e., capable of) identify a pose of the robotic arm assembly (see Abstract and claim 1; [0134]; [0137]; [0148]; [0154]; [0156]; [0229]-[0237]; use of a tracking unit expressly incorporated into the robotic device is expressly disclosed); and a computer system (300, Fig. 2) coupled to the tracking system and the braking mechanism ([0132]; [0137]; [0148]; [0154]; [0156]; [0181]; [0229]-[0234]; [0281]; use of a control unit/computer system expressly incorporated into the robotic device is expressly disclosed), the computer system (300) comprising a processor configured to (i.e., capable of) control the braking mechanism based on the pose of the robotic arm assembly (100) (see Abstract and claim 1; [0068]; [0132]-[0134]; [0137]-[0140]; [0146]; [0181]; [0194]; [0281]; computer/control unit expressly configured to determine the pose of the cutting plane with respect to the target plane and to control the arm so as to bring the cutting plane into alignment with the target plane via braking and other compensation steps);
(claim 13) wherein the processor is further configured to (i.e., capable of) receive, from the tracking system, the pose of the robotic arm assembly (105, Fig. 33) (see Abstract and claim 1; [0038]; [0134]; [0136]; [0146]; [0231]; [0235]; [0239]; [0246]; [0281]-[0282]; [0375]); determine whether the received pose corresponds to a predetermined pose for the robotic arm assembly (106-107, Fig. 33) (see Abstract and claim 1; [0039]-[0046]; [0134]; [0146]; [0281]; [0283]-[0287]; [0376]); and selectively control the braking mechanism based on the determination whether the received pose corresponds to the predetermined pose (108, Fig. 33) (see Abstract; [0047]-[0048]; [0134]; [0281]; [0288]; [0378]);
(claims 14 and 20) wherein the tracking system is configured to (i.e., capable of) identify an optical tracker disposed on at least one of the plurality of arm sections (see claim 2; [0056]; [0126]; [0138]; [0233]-[0234]; [0247]; [0343]; optical tracker expressly may be attached to the mobile arm segments of the actuation unit);
(claim 15) A method of controlling a robotic arm assembly (100, Fig. 10), the robotic arm assembly (100) comprising a plurality of arm sections (24a-24b, Figs. 8A-8F; and respective arm portions between pivot links 51, Fig. 10), at least one motorized joint ([0165]-[0166]; [0186]; [0235]; a actuation unit 4 expressly comprises at least 1 or 2 motorized degrees of freedom), wherein each motorized joint comprises an actuation unit (4, Figs. 3A-3B) configured to (i.e., capable of) move the motorized joint in order to control the movement of an adjacent arm section connected thereto ([0165]-[0166]; [0186]; [0235]), a plurality of non-motorized joints (i.e., respective arm portions between pivot links 51, Fig. 10; [0189]-[0191]; [0198]), wherein each of the plurality of non-motorized joints is configured to (i.e., capable of) control the movement of the adjacent arm section without the actuation unit (4) (as shown in Fig. 10; see claim 1; [0189]-[0193]; [0198]; holding arm 5 expressly claimed and disclosed as a passively/manually movable armature), and a braking mechanism associated with one or more of the plurality of non-motorized joints, the braking mechanism configured to (i.e., capable of) arrest movement of the adjacent arm section connected to the one or more of the plurality of non-motorized joints ([0189]-[0191]; [0194]; [0198]; non-motorized arms of holding arm 5 expressly brakable/lockable by a variety of disclosed mechanisms), wherein the plurality of arm sections are connected to each other by the at least one motorized joint (i.e., actuation unit 4 expressly comprises at least 1 or 2 motorized degrees of freedom) and the plurality of non-motorized joints ([0189]-[0191]; [0198]; respective arm section between non-motorized/passive pivot links 51 expressly shown in Fig. 10) (i.e., the robotic arm extending between the distally-disposed saw instrument and proximal attachment point of the arm to the surgical table comprises both a plurality of motorized joints and a plurality of non-motorized joints), wherein the at least one motorized joint and the plurality of non-motorized joints collectively are configured to (i.e., capable of) provide six degrees of freedom ([0054]; [0165]-[0166]; [0180]; [0186]; [0198]; motorized joint expressly may comprise 1 to 5 motorized degrees of freedom and up to six non-motorized degrees of freedom are expressly disclosed), and wherein a number of the at least one motorized joint number is less than a number of the plurality of non-motorized joints ([0165]-[0166]; [0186]; 1 to 5 motorized degrees of freedom; and [0198]; six non-motorized degrees of freedom expressly disclosed), the method comprising: receiving, from a tracking system, a pose of the robotic arm assembly (105, Fig. 33) (see Abstract and claim 1; [0038]; [0134]; [0136]; [0146]; [0231]; [0235]; [0239]; [0246]; [0281]-[0282]; [0375]); determining whether the received pose corresponds to a predetermined pose for the robotic arm assembly (106-107, Fig. 33) (see Abstract and claim 1; [0039]-[0046]; [0134]; [0146]; [0281]; [0283]-[0287]; [0376]); and selectively controlling the braking mechanism based on the determination whether the received pose corresponds to the predetermined pose (108, Fig. 33) (see Abstract; [0047]-[0048]; [0134]; [0281]; [0288]; [0378]); and
(claim 16) wherein the robotic arm assembly further comprises an end effector (22, Figs. 3A-3B) disposed at a distal end thereof (as shown in Figs. 3A-3B), the end effector (22) configured to (i.e., capable of) make planar cuts in an orthopedic surgical procedure ((as expressly shown in Figs. 8A-8F; [0157])).
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 Robert Lynch whose telephone number is (571)270-3952. The examiner can normally be reached on Monday-Friday (9:00AM-6:00PM, with alternate Fridays off).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Elizabeth Houston, at (571) 272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT A LYNCH/Primary Examiner, Art Unit 3771
Prosecution Insights