DETAILED ACTION
The following Office Action is in response to the Preliminary Amendment filed on January 24, 2024. Claims 1-14 are currently pending.
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 .
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.
Claim Objections
Claims 1 and 12 are objected to because of the following informalities:
Concerning claim 1, line 7 of the claim recites the phrase “wherein the two motorized drives includes a first drive”, wherein the word “includes” appears to be mistakenly used in place of the word “include”.
Line 19 of the claim recites the phrase “each comprise”, wherein the word “comprise” appears to be mistakenly used in place of the word “comprises”.
Concerning claim 12, line 3 of the claim recites the phrase “the fourth gear wheel freely rotatable”, wherein the phrase appears to be missing the word “is” between “the fourth gear wheel” and “freely rotatable”.
Appropriate correction is required.
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 1-14 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.
Concerning claim 1, line 5 of the claim recites the limitation of “the adjustment angles of the two motorized drives”. There is a lack of antecedent basis for this limitation in the claim.
Line 6 of the claim recites “the distal deflection mechanism”. The claim previously recites “a deflection mechanism at the distal end”, wherein it is indefinite as to whether “the distal deflection mechanism” refers to “the deflection mechanism at the distal end” or if it is a separate deflection mechanism altogether.
Line 20 of the claim recites the limitation of “the respective backward side”. There is a lack of antecedent basis for this limitation in the claim.
Concerning claims 4 and 5, line 2 of both claims recite the limitation of “the spindle”. However, a first spindle and a second spindle have been claimed, therein making it indefinite as to whether “the spindle” refers to the first spindle, the second spindle, or each spindle.
Concerning claim 6, lines 2 and 4 of the claim recite the limitation of “the traction mechanism plate”. However, a first traction mechanism plate and a second traction mechanism plate have been claimed, therein making it indefinite as to whether “the traction mechanism plate” refers to the first traction mechanism plate, the second traction mechanism plate, or each traction mechanism plate.
Line 5 of the claim recites the limitation of “the not closed traction mechanism”. There is a lack of antecedent basis for this limitation in the claim.
Concerning claim 8, line 8 of the claim recites the limitation of “the third gear wheel”. However, the claim recites that the second limitation may be in the alternative by claiming “and/or”, therein making it indefinite as to whether the scope of the claim must include a third gear wheel, or if a third gear wheel may be excluded from the scope of the claim.
Concerning claim 9, line 2 of the claim recites the limitation of “a shaft”. However, claim 1, the claim which claim 9 depends on, already claims a shaft, therein making it indefinite as to whether the shaft recited in this instance is the same shaft of claim 1 or if it is a different shaft.
Line 4 of the claim recites the limitation of “an instrument”. However, claim 1, the claim which claim 9 depends on, already claims “a surgical instrument”, therein making it indefinite as to whether the instrument recited in this instance is the same as the surgical instrument of claim 1 or if it is a different surgical instrument.
Line 6 of the claim recites the limitation of “a wobble plate”. However, claim 1, the claim which claim 9 depends on, already claims a wobble plate, therein making it indefinite as to whether the wobble plate in this instance is the same as the wobble plate of claim 1 or if it is a different wobble plate.
Line 6 of the claim recites “two drives”. However, claim 1, the claim which claim 9 depends on, already claims two motorized drives, therein making it indefinite as to whether the two drives are the same as the two motorized drives of claim 1 or if they are separate drives.
Concerning claim 11, line 9 of the claim recites the limitation of “the gimbal mount”. There is a lack of antecedent basis for this limitation in the claims.
Concerning claim 12, line 2 of the claim recites the limitation of “the fourth gear wheel”. There is a lack of antecedent basis for this limitation in the claims.
Concerning claim 13, line 4 of the claim recites the limitation “and in that the distal deflection mechanism of the tool tip able to be deflected consists of pivot members”. The phrasing of this limitation does not make sense and it cannot be determined what it is intended to say, and therefore is indefinite.
Concerning claim 14, line 2 of the claim recites the limitation of “the steering wires”. There is a lack of antecedent basis for this limitation in the claim.
Line 4 of the claim recites the limitation of “the main shaft”. There is a lack of antecedent basis for this limitation in the claim.
Claims 2-14 are further rejected for being dependent on indefinite claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Xu et al. reference (US 11,191,425) and Xu et al. reference (US 2019/0231331) teach surgical instruments including a wobble plate with geared motorized drives; the Rogers et al. reference (US 2008/0287963) and the Thissen et al. reference (US 2022/0061634) teach surgical instruments including deflection mechanisms including a wobble plate with motorized drives.
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/MARTIN T TON/Examiner, Art Unit 3771 1/24/2025