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
Some of the previous objection of claims due to minor informalities have been withdrawn in light of applicant’s amendments made 1/30/2026. Some objections are maintained and additional objections are made in light of applicant’s amendments made 1/30/2026, as discussed below.
The previous rejection of claim(s) 1-11 over 35 U.S.C. 112(b) as being indefinite has not been fully overcome in light of the amendments made to claim(s) 1, 3-6 and 8-11 on 10/30/2026, as discussed below.
Applicant's arguments filed 1/30/2026 have been fully considered but they are not persuasive. Applicant argues the motor 36 of Grüner (US 2021/0038331 A1), i.e. the claimed third motorized drive, is not operatively coupled to the “wobble steering ring” which the examiner maps to Grüner’s steering ring 30 and/or disk 14 because the motor 36 is coupled to the main shaft 21, not the steering ring 30. However, operative coupling does not require direct coupling. Instead, operative coupling requires a connection to perform a function rather than a direct connection between the third of the three motorized drives and the wobble steering ring. Thus, as long as the rotation force imparted by the motor 36 of Grüner reaches the steering ring 30 and/or disk 14, then the two parts are “operatively coupled” as claimed.
In this case, the motor 36 of Grüner drives the serrated lock washer 22, which is non-rotatably arranged on the main shaft 21 ([0066]); thus, rotating the main shaft 21. The main shaft 21 is non-rotatably arranged on the disk 14 and steering ring 30 via a universal joint disk 28 ([0067]). Accordingly, rotation of the motor 36 imparts a rotational force to the disk 14 and steering ring 30 through the operative coupling of the serrated lock washer 22, main shaft 21, and universal joint disk 28. These pieces provide a direct mechanical link between the motor 36 and the disk 14, steering ring 30.
In response to applicant’s argument that Grüner utilizes an intermediate shaft and a gimbal mount to transmit rotation from a motor to a disk, rather than the claimed arrangement where the third motorized drive imparts rotational force directly to the wobble steering ring itself, it is noted that applicant’s own invention utilizes an intermediate drive shaft and gear assembly between the third motorized drive and the wobble steering ring to impart the rotational force “directly” to the wobble steering ring. For example, the third of the three motorized drives is understood by the specification to be the third motor 17”, which is operatively coupled to the wobble steering ring 14 to impart a rotation force to the wobble steering ring 14 via a common drive gear wheel 23 driven by the third motor ([0056]). When the third motor 17” rotates the common drive gear wheel 23, the gear wheels 25, 25’ are caused to rotate, which in turn causes each gear shaft 15, 15’ to be axially displaced and rotated ([0057]), causing force transmitters 16, 16’ to directly contact the wobble steering ring 14 and impart rotation thereto ([0055]). In other words, the third motor 17” is not directly connected to the wobble steering ring 14. Instead, the third motor 17” directly imparts a rotational force to the gear wheels 25, 25’, similar to third motor 36 and the serrated lock washer 22 of Grüner. While applicant has support for the wobble steering ring being controlled directly by means of the drive motors ([0019]), the direct means is understood by the specification to be the intermediate mechanical linkage i.e., operatively coupling between the third motor and the wobble steering ring, not a direct connection between the third motor and the wobble steering ring.
Because Grüner’s rotation is initiated by a motor 36 driving the main shaft 21, and a rotation of the main shaft 21 about the longitudinal axis 10 of the shaft 2 is transmitted to the disk 14 via the universal joint 28 ([0067]), the motor 36 ultimately rotates the disk 14 and steering ring 30 attached thereto. Accordingly, the wobble steering ring of Grüner is rotatable about the longitudinal axis of the shaft element while being controlled by a third motorized drive that imparts rotational force directly to the wobble steering ring as claimed.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “the axial longitudinal direction” in line 10 which should read “an axial longitudinal direction”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: Claim 1 recites “the adjustment angle of the third of the three motorized drives” in lines 17-18 which should read “an adjustment angle of the plurality of adjustment angles of the third of the three motorized drives”. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: Claim 3 recites “as effecting surface” in line 2 which should read “as an effecting surface”. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: Claim 3 recites “the respective contact point of the respective contact roller portion” in lines 10-11 which should read “the respective contact points of the respective contact roller portions. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: Claim 7 recites “the effecting portion” in lines 2 and 3 which should read “the effecting surface”. Appropriate correction is required.
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: deflection mechanism in claims 1 and 11 and fastening means in claim 9.
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 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 1-11 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.
Claim 1 recites “the shaft extending along a longitudinal axis” in line 3, “the longitudinal axis of the shaft” in line 6, “the longitudinal axis of the shaft element” in line 11 and “the longitudinal axis” in lines 15-16 and 17. It is unclear as to which longitudinal axis of the shaft and/or the shaft element “the longitudinal axis” of lines 15-16 and 17 refers to.
Claims 2-5 similarly recite “the longitudinal axis”. It is unclear as to which axis of the shaft and/or the shaft element “the longitudinal axis of claims 2-5 refers to.
Claim 5 recites the limitation "the drive portion" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the axial displacement path of the gear shaft" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. Additionally, it is unclear which of the two gear shafts “the gear shaft” refers to.
Claims 7-11 are rejected based on their dependency to rejected claim 1.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1-2 and 11 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Grüner (US 2021/0038331 A1).
Regarding claim 1, Grüner discloses a steering gear (Fig. 4a) for a surgical instrument (medical instrument 1; Fig. 1) having a shaft (shaft 2), at a distal end of which there is a deflection mechanism (joint mechanism 9; interpreted under 112(f) as pivot members connected via steering wires, which joint mechanism 9 includes; [0035]) for manipulating a tool (instrument tip 6), wherein the steering gear is arrangeable at a proximal end of the shaft (Figs. 1, 4a) extending along a longitudinal axis (longitudinal axis of 2), and the steering gear comprises: a shaft element (hollow main shaft 21; Fig. 4b) configured to be coupled to the shaft (2) and extend along the longitudinal axis of the shaft (longitudinal axis of 2; Fig. 4b); and a wobble steering ring (steering ring 30 and/or disk 14) which is operatively couplable to the deflection mechanism (9) for controlling the deflection of the tool (as the steering ring 30 enables rotation of the disk 14 to cause the instrument tip 6 to pivot; [0038]; [0054]) and which comprises a central axial through-opening (opening of 30) for a bearing device (bearing ring 32) which is secured in the axial longitudinal direction on the shaft element (21) of the steering gear (via screws 24; Fig. 4b) and rotatable about the longitudinal axis of the shaft element (as 32 is mounted to 14 which rotates about the longitudinal axis of the shaft element; [0054]), and three motorized drives (drive units 15, 16 and motor 36) and the steering gear provides an operative coupling of the three motorized drives (15, 16, 36) to the wobble steering ring (30) for transferring a plurality of adjustment angles of the three motorized drives to the wobble steering ring (as drive units 15, 16 actuate the disk 14 of steering ring 30; [0044]), wherein the wobble steering ring is spatially alignable in relation to two pivot axes running perpendicular to one another and to the longitudinal axis (two axes perpendicular to one another; [0051]) by way of at least one of the plurality of adjustment angles of two (15, 16) of the three motorized drives ([0051]-[0055]) and rotatable about the longitudinal axis by way of the adjustment angle of the third (36) of the three motorized drives ([0066]), wherein the third (36) of the three motorized drives is operatively coupled (via the serrated lock washer 22, main shaft 21, and universal joint disk 28) to the wobble steering ring (at 14) to impart a rotational force directly to the wobble steering ring (at 14; The motor 36 of Grüner drives the serrated lock washer 22, which is non-rotatably arranged on the main shaft 21 ([0066]); thus, rotating the main shaft 21. The main shaft 21 is non-rotatably arranged on the disk 14 and steering ring 30 via a universal joint disk 28 ([0067]). Accordingly, rotation of the motor 36 imparts a rotational force to the disk 14 and steering ring 30 through the operative coupling of the serrated lock washer 22, main shaft 21, and universal joint disk 28. These pieces provide a direct mechanical link between the motor 36 and the disk 14/steering ring 30 such that rotation initiated by the motor 36 ultimately rotates the disk 14 and steering ring 30 attached thereto.).
Regarding claim 2, Grüner discloses wherein the bearing device (32) of the wobble steering ring (30) rotatable with the shaft element (21) about the longitudinal axis is a gimbal-type bearing device (gimbal-mounted bearing; [0050]) which includes a universal joint plate (universal joint disk 28) which is arranged in the central axial through-opening (Fig. 4b) and includes four radial drilled through holes (holes through which bearing pins 27 and 29 fit) offset by 90 degrees from one another in each case (Fig. 4b; [0050]-[0051]), wherein a bearing pin (27, 29) is arranged in each radial drilled through hole, wherein two first bearing pins arranged coaxially with respect to one another in the drilled through holes are connected to the wobble steering ring (as pins 27 are connected to 30 via 14; [0050]) and two second bearing pins arranged coaxially with respect to one another in the drilled through holes offset by 90 degrees are connected to the shaft element (as pins 29 are connected to the third gearwheel 25 via which universal disk joint 28 is mounted to the main shaft 21; [0061]).
Regarding claim 11, Grüner discloses a surgical instrument (medical instrument 1) comprising: a shaft (shaft 2); a manipulation unit (actuating unit 4) arranged at a proximal end of the shaft (Fig. 1); and a tool (instrument 7) arranged at a distal end of the shaft with a tool tip (instrument tip 6) able to be deflected by means of a distal deflection mechanism (joint mechanism 9 consisting of pivoting members 11 and steering wires 12; [0035]; which is equivalent to the 112(f) interpretation as discussed above with respect to claim 1); and wherein the tool tip (6) able to be deflected is spatially alignable by way of a steering gear (drive 13; Figs. 4a-4b) as set forth in claim 1.
Allowable Subject Matter
Claims 3-10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Grüner discloses wherein the wobble steering ring (30) has a spherical disk-shaped outer lateral surface as an effecting surface (Figs. 4b-5). Grüner fails to disclose “the steering gear includes two longitudinally axially displaceable gear shafts, each with a contact roller portion with a force transmitter, wherein the gear shafts each have an axis of rotation which is parallel to the longitudinal axis and spans a center angle of 90 degrees with the longitudinal axis, and wherein the respective contact roller portion contacts the effecting surface of the wobble steering ring at a contact point, wherein the two pivot axes are each defined by a straight line which runs through the center of the spherical disk-shaped outer lateral surface located on the longitudinal axis and through the respective contact point of the respective contact roller portion with the effecting surface”, as recited in claim 3 because the gear shafts (gearwheels 18, 19) of Grüner are not longitudinal axially displaceable as they rotate around (common central axis 20; [0040]) and their axis of rotation is perpendicular, not parallel to the longitudinal axis (Fig. 5).
Thissen et al. (WO 2020/218920 A1) teaches two longitudinally displaceable gear shafts (actuators 124) which are parallel to the longitudinal axis (Figs. 3A-3B). However, Thissen fails to disclose the contact roller portions contacting the effecting surface as claimed.
Grüner fails to disclose wherein the wobble steering ring includes: a first end face which has a first funnel-shaped cutout, wherein drilled passage holes for leading through steering wires are present in a base of the first funnel-shaped cutout and wherein the central axial through-opening of the wobble steering ring extends through the base of the funnel; and a second end face which includes a second funnel-shaped cutout which has a smaller diameter than the first funnel-shaped cutout, wherein the central axial through-opening further extends through the funnel base of the second funnel-shaped cutout, as recited in claim 10. While the steering wires (12) extend through the steering ring (14) of Grüner, the steering ring lacks the funnel-shaped cutouts as claimed.
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 SARAH A LONG whose telephone number is (571)270-3865. The examiner can normally be reached Monday-Friday 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, Elizabeth Houston can be reached at (571)272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH A LONG/Primary Examiner, Art Unit 3771
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