DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-7 in the reply filed on 10/29/2025 is acknowledged.
Claims 8-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/29/2025.
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 Rejections - 35 USC § 102
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Draelos et al U.S 2019/0015167.
Claim 1: Draelos et al disclose an apparatus for performing a procedure on a portion of a body of a patient, the apparatus comprising: an imaging device configured to image the portion of the patient's body (see claim 7-Draelos “the image dataset comprises one of an optical coherenece tomography (OCT) image dataset, a magnetic resonance image (MRI) dataset, computed tomography (CT) image dataset, or an ultrasound image dataset”; a display configured to display the image of the portion of the patient's body to an operator (see figures 4-10,claim 1-Draelos “generate a virtual environment of the actual environment based on the image dataset”); a robotic unit configured to hold a tool at a given orientation with respect to the portion of the patient's body (see claim 1-Draelos “a robotic tool interface configured to control a robotic tool”
and at least one computer processor configured to: drive the display to display a virtual tool (see abstract, virtual tool 406, see claim 1-Draelos “control display of the virtual environment including a virtual tool controllable by a user for use to control the robotic tool within the actual environment”); overlaid upon the image of the portion of the patient's body such that at least a portion of the virtual tool coincides with a corresponding portion of the tool (see figures 6a-d, virtual tool 406, actual tool, for-example, forceps 400), and wherein at least one characteristic of the virtual tool differs from that of the tool, the at least one characteristic selected from the group consisting of: a shape of the virtual tool 406, a size of the virtual tool (the actual tool 400), and an orientation of the virtual tool (see abstract, it is noted that the control can maintain an orientation of display of the virtual tool with respect to the user); receive an input from an operator indicating that the portion of the virtual tool should be moved in a given manner (see claim 1-Draelos “receive user input for controlling the virtual tool to control the robotic tool”), and in response thereto, to drive the tool to move such that the corresponding portion of the tool moves with respect to the portion of the patient's body in a corresponding manner to the movement of the portion of the virtual tool (see claim 1-Draelos “receive user input for controlling the virtual tool to control the robotic tool”).
Claim 2: Draelos et al disclose wherein the portion of the virtual tool comprises a tip of the virtual tool, wherein the computer processor drives the display to display the virtual tool overlaid upon the image of the portion of the patient's body, such that at least the tip of the virtual tool coincides with a tip of the tool (it is noted that as the user can snap the tip of the virtual tool 406 to the desired position on the actual tool 400, see paragraphs 54,55).
Claim 3: Draelos et al disclose further comprising a control component, further comprising a control component, wherein the control component is configured to be moved by the operator, and wherein the computer processor is configured to receive movement of the control component as the input indicating that the portion of the virtual tool should be moved in the given manner (see Draelos discloses the use of a master input device, see paragraphs 42, 43).
Claim 4: Draelos et al disclose, wherein the computer processor is configured to: receive an input indicating that the computer processor should control movement of the tool in a real-tool mode, and in response thereto, drive the tool to move in a manner that directly correspond to inputs from the operator via the control component (it is noted that Draelos discloses that the hand and the tool motions are decoupled through the use of the virtual tool, see paragraphs 159, lines 2, lines 8-10).
Claim 5: Draelos et al disclose, wherein a second portion of the tool is controlled by the robotic unit such as to define a remote center of motion as the corresponding portion of the tool is moved (Draelos discloses the use of a remote center of motion, see paragraph 147, lines 10-12).
Claim 6: Draelos et al
disclose, wherein the portion of the virtual tool 406 comprises a tip of the virtual tool, wherein the computer processor drives the display to display the virtual tool overlaid upon the image of the portion of the patient's body, such that at least the tip of the virtual tool coincides with a tip of the tool, and wherein a second portion of the tool that is proximal to the tip of the tool is controlled by the robotic unit such as to define a remote center of motion as the tip of the tool is moved (it is noted that as the user can snap the tip of the virtual tool 406 to the desired position on the actual tool 400, see paragraphs 54,55).
Claim 7: Draelos et al disclose wherein the portion of the subject's body includes an eye of the subject's body, and wherein the second portion of the tool that is proximal to the tip of the tool is controlled by the robotic unit is kept within an incision region within a cornea of the subject as the tip of the tool is moved (Draelos discloses a robotic system for eye surgery, see fig. 4, paragraph 126).
Conclusion
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/VI X NGUYEN/Primary Examiner, Art Unit 3771