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 Amendment
The Amendment filed 08/07/2026 has been entered. Claims 1-6 & 10-22 are pending in the application. Claims 17-20 are withdrawn. Claims 7-9 are cancelled. Claims 21-22 are entered as “New”.
Information Disclosure Statement
The 05/10/2023 IDS cited the entire book Ultrasonic Testing of Materials. However, only a few pages of the book were provided by Applicant. As such, Examiner did not consider the entire book, as cited in the IDS.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s).
The irrigation tube supplying irrigation fluid to the annular cavity; Figure 2 shows two structures as being Element 204; it appears the tube labeled as 204 attached to flue tube 268 should be labeled as 206, in accordance with instant application Paragraph 0040
No new matter should be entered.
The drawings are objected to because it appears the irrigation tube is labeled as Element 204 in Figure 2, when the feature should be labeled as Element 206 to be in line with instant application Paragraph 0040.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5-6, 10 & 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to Claim 5, applicant has failed to show possession of the claimed invention by failing to provide sufficient detail needed to understand what the invention is and how it works. Applicant claims a console configured to individually control the robotic system and the aspirator. This raises questions to what applicant had possession of, in that neither the specification nor the drawings, or a combination thereof, adequately describes how the console is capable of controlling the robotic system or the aspirator.
The function of controlling the robotic system and aspirator is performed via software, as evident at least in instant application Figure 4. MPEP 2161.01 states “the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.” However, the original disclosure fails to provide an algorithm, steps, or a procedure, for performing the control of either the robotic system or the aspirator. Additionally, one of ordinary skill in the art would not be able to inherently conclude based on the disclosure how the robotic system and the aspirator are individually controlled.
As such, the instant application fails to provide sufficient written description for the claimed control function.
As to Claim 10, applicant has failed to show possession of the claimed invention by failing to provide sufficient detail needed to understand what the invention is and how it works. Applicant claims the console is configured to selectively control supplying the irrigation fluid to the annular cavity and providing the vacuum to the horn via a foot pedal. This raises questions to what applicant had possession of, in that neither the specification nor the drawings, or a combination thereof, adequately describes how the console is capable of controlling the irrigation or the vacuum.
The function of controlling the irrigation and vacuum is performed via software, as evident at least in instant application Figure 4. MPEP 2161.01 states “the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.” However, the original disclosure fails to provide an algorithm, steps, or a procedure, for performing the control of either the irrigation or the vacuum, either by the claimed foot pedal or any other means. Additionally, one of ordinary skill in the art would not be able to inherently conclude based on the disclosure how the irrigation and vacuum are controlled via a foot pedal.
As such, the instant application fails to provide sufficient written description for the controlling the irrigation fluid or the vacuum, via the foot pedal or any means.
As to Claim 13, applicant has failed to show possession of the claimed invention by failing to provide sufficient detail needed to understand what the invention is and how it works. Applicant claims the console is configured to selectively control supplying the irrigation fluid to the aspirator and providing the suction to the aspirator via a foot pedal. This raises questions to what applicant had possession of, in that neither the specification nor the drawings, or a combination thereof, adequately describes how the console is capable of controlling the irrigation or the vacuum.
The function of controlling the irrigation and vacuum is performed via software, as evident at least in instant application Figure 4. MPEP 2161.01 states “the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.” However, the original disclosure fails to provide an algorithm, steps, or a procedure, for performing the control of either the irrigation or the vacuum, either by the claimed foot pedal or any other means. Additionally, one of ordinary skill in the art would not be able to inherently conclude based on the disclosure how the irrigation and vacuum are controlled via a foot pedal.
As such, the instant application fails to provide sufficient written description for the controlling the irrigation fluid or the vacuum, via the foot pedal or any means.
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 5-6, 10 & 13 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.
As to Claim 5, the limitation “a console configured to individually control the robotic system and the aspirator” is indefinite. As described in the 112(a) rejection above, how the console is capable of controlling the robotic system and the aspirator lacks written description. As such, it is not clear how the console is capable of controlling the robotic system and the aspirator in view of the specification, rendering the limitation indefinite.
As to Claim 10, the limitation “the console is configured to selectively control supplying the irrigation fluid to the annular cavity and providing the vacuum to the horn via a foot pedal” is indefinite. As described in the 112(a) rejection above, how the console is capable of controlling the irrigation and the vacuum lacks written description. As such, it is not clear how the console is capable of controlling the irrigation and the vacuum in view of the specification, rendering the limitation indefinite.
As to Claim 13, the limitation “the console…is configured to selectively control supplying the irrigation fluid to the aspirator and providing the suction to the aspirator via a foot pedal” is indefinite. As described in the 112(a) rejection above, how the console is capable of controlling the irrigation and the vacuum lacks written description. As such, it is not clear how the console is capable of controlling the irrigation and the vacuum in view of the specification, rendering the limitation indefinite.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6, 11 & 22 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto (U.S. PGPub 2022/0401166), in view of Parham (U.S. PGPub 2020/0085464).
As to Claim 1, Hashimoto teaches a surgical apparatus (100) comprising:
a robotic system (1) comprising:
a plurality of arm members (at least 12/12b/13/14), each of the plurality of arm members (at least 12/12b/13/14) being coupled to (as shown in Figure 1) each other (12/12b/13/14) via a respective joint (Paragraph 0060), and at least one arm member (14) of the plurality of arm members (at least 12/12b/13/14) including a first receiver (14a/15) and a second receiver (14b/9); and
a surgical tool (20) comprising:
a handpiece (the portion of 20 supporting surgical tool 20, as shown in Figure 1 and described in Paragraph 0057)…
wherein the handpiece (the portion of 20 supporting surgical tool 20, as shown in Figure 1 and described in Paragraph 0057) of the surgical tool (20) is received by (as shown in Figure 1 and described in Paragraph 0057) the first receiver (14a/15) of the at least one arm member (14) of the plurality of arm members (at least 12/12b/13/14) and the bottom (the bottom of surgical tool 20, as viewed in Figure 1) of the surgical tool (20) is received by (as shown in Figure 1) the second receiver (14b/9) of the at least one arm member (14) of the plurality of arm members (at least 12/12b/13/14), such that the surgical tool (20) remains axially aligned relative to (as shown in Figure 1) the at least one arm member (14) of the plurality of arm members (at least 12/12b/13/14) when the robotic system (1) is manipulated (as shown in Figure 1).
Hashimoto is silent on the specific function of the surgical tool, as claimed, so does not teach an aspirator comprising:
a handpiece;
a connector extending from the handpiece;
a horn the handpiece via the connector;
a flue coaxially disposed about the horn and coupled to the handpiece via the connector;
an annular cavity defined by a space between the horn and the flue when the flue is coaxially disposed about the horn; and
an irrigation tube for supplying irrigation fluid to the annular cavity…
wherein the connector of the handpiece further comprises a vent for ventilating the irrigation tube to atmosphere.
Parham describes a surgical tool, and teaches an aspirator (Figure 1) comprising:
a handpiece (120);
a connector (118) extending from (as shown in Figure 10) the handpiece (120);
a horn (140, which includes 216/136/144/152; see Paragraphs 0058/0059) coupled to (as shown in Figure 10) the handpiece (120) via (as shown in Figure 10) the connector (118);
a flue (116) coaxially disposed about (as shown in Figure 10) the horn (140) and coupled to (as shown in Figure 10) the handpiece (120) via (as shown in Figure 10) the connector (118);
an annular cavity (see Parham Figure 10 below) defined by (as shown in Parham Figure 10) a space (the volume creating the annular cavity, as shown in Parham Figure 10 below) between (as shown in Parham Figure 10) the horn (140) and the flue (116) when the flue (116) is coaxially disposed about (as shown in Parham Figure 10) the horn (140); and
an irrigation tube (110) for supplying irrigation fluid to (Paragraph 0156) the annular cavity (see Parham Figure 10 below)…
wherein the connector (118) of the handpiece (120) further comprises (as shown in Parham Figure 10) a vent (see Parham Figure 10 below) for ventilating (see end of paragraph for clarification) the irrigation tube (110) to atmosphere (the volume outside of the Parham aspirator shown in Parham Figure 1). One of ordinary skill in the art would conclude the Parham connector 118, as shown in Parham Figure 10, ends at the dashed lines shown in the Figure 7 rejection above, which may be broadly interpreted as a vent. This allows any fluid to continue moving through the annular cavity, eventually venting out the distal end --the left end of Parham 116, as viewed in Parham Figure 10-- of Parham flue 116 to atmosphere.
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Parham Figure 10, Modified by Examiner
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to use the aspirator, as taught by Parham, in place of the surgical tool, as taught by Hashimoto, “to percutaneously access and act upon target tissue while helping reduce collateral trauma (Paragraph 0026).”
As to Claim 2, Hashimoto, as modified, teaches all the limitations of Claim 1, and continues to teach the flue (Parham 116) further comprises a distal end (the left end of Parham 116, as viewed in Parham Figure 10) and a proximal end (the right end of Parham 116, as viewed in Parham Figure 10), and the distal end (the left end of Parham 116, as viewed in Parham Figure 10) of the flue (Parham 116) is received by (see end of paragraph for clarification) the second receiver (Hashimoto 14b/9). When modifying Parham into Hashimoto, one of ordinary skill in the art would be motivated to place the distal end of the Parham flue through Hashimoto second receiver 14b/9, since the Parham flue distal end is the end intended to contact the patient –see Parham Paragraph 0070—which is the equivalent of the side of the Hashimoto surgical tool contacting the patient –see Hashimoto Figure 1, where the patient is identified by Element P.
As to Claim 3, Hashimoto, as modified, teaches all the limitations of Claims 1-2, and continues to teach the horn (Parham 140) further includes a distal end (the left end of Parham 140/136, as viewed in Parham Figure 10) and a proximal end (the right end of Parham 140/152, as viewed in Parham Figure 10), and the distal end (the left end of Parham 140/136, as viewed in Parham Figure 10) of the horn (Parham 140) extends beyond (as shown in Parham Figure 10) the distal end (the left end of Parham 116, as viewed in Parham Figure 10) of the flue (Parham 116) and (see end of paragraph for clarification) the second receiver (Hashimoto 14b/9) when the flue (Parham 116) is received by (as described in the Claim 2 rejection above) the second receiver (Hashimoto 14b/9). Hashimoto Paragraph 0056 describes surgical tool 20 passing through Hashimoto second receiver portion 9 to reach the patient. As such, one of ordinary skill in the art would be motivated to do the same with the Parham horn distal end.
As to Claim 4, Hashimoto, as modified, teaches all the limitations of Claims 1-3, and continues to teach the handpiece (Parham 120) further comprises (as shown in Parham Figure 10) a transducer (Parham 154/156/158/160) that vibrates (Parham Paragraph 0096) the horn (Parham 140) at a predetermined frequency (the desired frequencies described in Parham Paragraph 0096) when the horn (Parham 140) is coupled to (as shown in Parham Figure 10) the connector (Parham 118) of the handpiece (Parham 120).
As to Claim 5, Hashimoto, as modified, teaches all the limitations of Claim 1, and continues to teach a console (Hashimoto 7; Parham 104) configured to individually control (Hashimoto Paragraph 0059; Parham Paragraph 0029) the robotic system (Hashimoto 1) and the aspirator (Parham Figure 1), wherein the irrigation tube (Parham 110) extends between (as shown in Parham Figure 1; see Parham Paragraph 0128) the aspirator (Parham Figure 1) and the console(Hashimoto 7; Parham 104).
As to Claim 6, Hashimoto, as modified, teaches all the limitations of Claims 1 & 5, and continues to teach an aspiration tube (Parham 108) for providing a vacuum to the horn (Parham 140), wherein the aspiration tube (Parham 108) extends between (as shown in Parham Figure 1; see Parham Paragraph 0128) the handpiece (Parham 120) of the aspirator (Parham Figure 1) and the console (Hashimoto 7; Parham 104).
As to Claim 11, Hashimoto, as modified, teaches all the limitations of Claim 1, and continues to teach of the plurality of arm members (Hashimoto 12/12b/13/14) are coupled to (as shown in Hashimoto Figure 1) each other (Hashimoto 12/12b/13/14) such that each of the plurality of arm members (Hashimoto 12/12b/13/14) are capable of three-dimensional movement (see end of paragraph for clarification). The Hashimoto arm below Hashimoto arm 12 in Hashimoto Figure 1 is capable of moving up and down, as indicated by the double arrows, which will also move Hashimoto arm 12 up and down (first dimension). Hashimoto arm 12 also rotates about the dashed line through the axis of the Hashimoto arm below Hashimoto 12, which moves the left end of Hashimoto arm 12 into and out of the page (second dimension) while moving the left end of Hashimoto arm 12 left and right due to rotation (third dimension).
As to Claim 22, Hashimoto, as modified, teaches all the limitations of Claim 1, and continues to teach the horn (Parham 140) comprises an ultrasonic horn (Paragraph 0165), and the handpiece (Parham 120) comprises an ultrasonic transducer (Parham Paragraph 0095).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto, in view of Parham, further in view of Broadwin (U.S. Patent 5,015,227).
As to Claim 10, Hashimoto, as modified, teaches all the limitations of Claims 1 & 5, and continues to teach the console (Hashimoto 7; Parham 104) is configured to selectively control supplying (Parham Paragraphs 0029/0138/0147) the irrigation fluid (the fluid in fluid flow F, described in Parham Paragraph 0147) to (via Parham 110) the annular cavity (see Parham Figure 10 in the Claim 1 rejection above) and providing the vacuum to (Parham Paragraph 0138) the horn (Parham 140).
Hashimoto, as modified, continues to teach controlling the robotic system 1 via a foot control (Paragraph 0067) the surgical tool 20 via a foot pedal (71/75), but does not explicitly teach controlling the irrigation and vacuum via a foot pedal.
Broadwin describes a similar aspirator, and teaches controlling the irrigation and vacuum via a foot pedal (Column 5, Lines 22-26).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to use a foot pedal, as taught by Broadwin, to control the irrigation and vacuum, as taught by Hashimoto, as modified, since the use of a foot pedal to control irrigation and vacuum is well-known (Broadwin Column 5, Lines 22-26), and would yield predictable results, i.e., easy control of the irrigation and vacuum while freeing up the hands.
Claims 12 & 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Solomon (U.S. PGPub 2007/0089557), in view of Parham.
As to Claim 12, Solomon teaches a surgical apparatus (100) comprising:
a robotic system (152) comprising:
a plurality of arm members (at least 542/543/544’), each of the plurality of arm members (at least 542/543/544’) being coupled to (as shown in Figure 5B) each other (542/543/544’) via a respective joint (Paragraphs 0049/0050), and at least one arm member(544’) of the plurality of arm members (at least 542/543/544’) including a first receiver (545’) and a second receiver (see Figure 5B below);
a surgical tool (101B) comprising:
a handpiece (see Figure 5B below);
a connector (see Figure 5B below) extending from (as shown in Figure 5B) the handpiece (see Figure 5B below), the handpiece (see Figure 5B below) being received by (as shown in Figure 5B) the first receiver (545’) such that the connector (see Figure 5B below) extends from (as shown in Figure 5B) the first receiver (545’)…
a power source (Paragraph 0056) that provides power to (Paragraph 0056) the plurality of arm members (at least 542/543/544’), the power source (Paragraph 0056) including a power supply (when considering Paragraphs 0056/0162, one of ordinary skill in the art would conclude the power source broadly includes a power supply in order to provide the necessary electricity to the disclosed apparatus).
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Solomon Figure 5B, Modified by Examiner
Solomon does not teach the surgical tool being an aspirator, as claimed, so does not teach an aspirator comprising:
a handpiece;
a connector…extending from the handpiece…
a horn coupled to the handpiece via the connector, the horn having a distal end, a proximal end, and a body extending therebetween;
a flue coaxially disposed about the horn and coupled to the handpiece via the connector, the flue having a distal end, a proximal end, and a body extending therebetween, the distal end of the flue being received by the second receiver such that the distal end of the horn extends beyond the distal end of the flue and the second receiver;
an annular cavity defined by a space between the horn and the flue when the flue is coaxially disposed about the horn; and
an irrigation tube for supplying irrigation fluid to the annular cavity; and
a console comprising:
an irrigation source that provides irrigation fluid to the aspirator via the irrigation tube, the irrigation source including a fluid supply and a fluid coupling, the fluid supply being coupled to the irrigation tube via the fluid coupling;
an aspiration source that provides suction to the aspirator via an aspiration tube, the aspiration source including a power supply and an electric lead; and
a power source that provides power to the aspirator…
wherein the connector further includes a vent for ventilating the irrigation tube to atmosphere when the irrigation source provides the irrigation fluid to the aspirator.
Parham describes a surgical tool, and teaches an aspirator (Figure 1) comprising:
a handpiece (120);
a connector (118)…extending from (as shown in Figure 10) the handpiece (120)…
a horn (140, which includes 216/136/144/152; see Paragraphs 0058/0059) coupled to (as shown in Figure 10) the handpiece (120) via the connector (as shown in Figure 10), the horn (140) having a distal end (the left end of 140/136, as viewed in Figure 10), a proximal end (the right end of 140/152, as viewed in Figure 10), and a body (the body comprised of 136/144/152, as shown in Figure 10) extending therebetween (as shown in Figure 10);
a flue (116) coaxially disposed about (as shown in Figure 10) the horn (140) and coupled to (as shown in Figure 10) the handpiece (120) via (as shown in Figure 10) the connector (118), the flue (116) having a distal end (the left end of 116, as viewed in Figure 10), a proximal end (the right end of 116, as viewed in Figure 10), and a body (116) extending therebetween (as shown in Figure 10)…
an annular cavity (see Parham Figure 10 in the Claim 1 rejection above) defined by (as shown in Parham Figure 10) a space (the volume creating the annular cavity, as shown in Parham Figure 10 below) between (as shown in Parham Figure 10) the horn (140) and the flue (116) when the flue (116) is coaxially disposed about (as shown in Parham Figure 10) the horn (140); and
an irrigation tube (110) for supplying irrigation fluid to (Paragraph 0156) the annular cavity (see Parham Figure 10 in the Claim 1 rejection above); and
a console (104) comprising:
an irrigation source (188; Paragraph 0147) that provides irrigation fluid (irrigant; Paragraph 0147) to the aspirator (Figure 1) via (as shown in Figure 11) the irrigation tube (110), the irrigation source (188) including a fluid supply (188; Paragraph 0147) and a fluid coupling (the point where 110 is coupled to 104, as shown in Figure 1), the fluid supply (188) being coupled to (Paragraphs 0147/0156) the irrigation tube (110) via the fluid coupling (the point where 110 is coupled to 104, as shown in Figure 1);
an aspiration source (186; Paragraph 0135) that provides suction to (Paragraph 0153) the aspirator (Figure 1) via (as shown in Figure 11) an aspiration tube (108), the aspiration source (186) including a power supply (212) and an electric lead (the lead from 178 to 186, as shown in Figure 11); and
a power source (182; Paragraph 0135) that provides power to (Paragraph 0144) the aspirator (Figure 1);
wherein the connector (118) further includes a vent (see Parham Figure 10 in the Claim 1 rejection above) for ventilating (see end of paragraph for clarification) the irrigation tube (110) to atmosphere (the volume outside of the aspirator shown in Figure 1) when (the vent shown in Figure 10 in the Claim 7 rejection above is always present, so one of ordinary skill in the art would conclude the vent allows for ventilation when irrigant is being used in the aspirator) the irrigation source (188) provides the irrigation fluid (irrigant; Paragraph 0147) to the aspirator (Figure 1). One of ordinary skill in the art would conclude the Parham connector 118, as shown in Parham Figure 10, ends at the dashed lines shown in the Figure 7 rejection above. This allows any fluid to continue moving through the annular cavity, eventually venting out the distal end --the left end of Parham 116, as viewed in Parham Figure 10-- of Parham flue 116.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to use the aspirator, as taught by Parham, in place of the surgical tool, as taught by Solomon, “to percutaneously access and act upon target tissue while helping reduce collateral trauma (Paragraph 0026).”
Modifying Parham into Solomon results in the distal end (the left end of Parham 116, as viewed in Parham Figure 10) of the flue (Parham 116) being received by the second receiver (see Solomon Figure 5B above) such that the distal end (the left end of Parham 140/136, as viewed in Parham Figure 10) of the horn (Parham 140) extends beyond (see end of paragraph for clarification) the distal end (the left end of Parham 116, as viewed in Parham Figure 10) of the flue (Parham 116) and the second receiver (see Solomon Figure 5B above).
Parham Figure 10 shows the distal end of the horn extending beyond the distal end of the flue at all times. As such, one of ordinary skill in the art would conclude the distal end of the horn extends beyond the distal end of the flue once the Parham aspirator is placed into the Solomon second receiver.
Solomon Figure 5B shows the distal end –the bottom end of 101B, as viewed in Solomon Figure 5B-- of surgical tool 101B extending beyond the Solomon second receiver. As such, one of ordinary skill in the art would also be motivated to place the distal end of the Parham horn beyond the Solomon second receiver once the Parham aspirator is modified into Solomon. Additionally, one of ordinary skill in the art would conclude the Parham horn has to extend past the Solomon second receiver in order to function as designed when operating on a patient.
As to Claim 14, Solomon, as modified, teaches all the limitations of Claim 12, and continues to teach the handpiece (Parham 120) further comprises (as shown in Parham Figure 10) a transducer (Parham 154/156/158/160) that vibrates (Parham Paragraph 0096) the horn (Parham 140) at a predetermined frequency (the desired frequencies described in Parham Paragraph 0096) when the horn (Parham 140) is coupled to (as shown in Parham Figure 10) the connector (Parham 118) of the handpiece (Parham 120).
As to Claim 15, Solomon, as modified, teaches all the limitations of Claim 12, and continues to teach each of the plurality of arm members (Solomon 542/543/544’) are coupled to (as shown in Solomon Figure 5B) each other (Solomon 542/543/544’) such that each of the plurality of arm members (Solomon 542/543/544’) are capable of three-dimensional movement (see end of paragraph for clarification). Solomon arm 541 is capable or rotating, providing two dimension (left-right, and up-down). Solomon arm 542 provides the third dimension (into and out of the page). Since Solomon arms 543/544’ movement is based on Solomon arm 541 movement, Solomon arms 543/544’ also have three dimensional movement.
As to Claim 16, Solomon, as modified, teaches all the limitations of Claim 12, and continues to teach the aspirator (Parham Figure 1) remains axially aligned relative to (as shown in Solomon Figure 5B) the at least one arm member (Solomon 544’) of the plurality of arm members (Solomon 542/543/544’) when the robotic system (Solomon 152) is manipulated (as shown in Solomon Figure 5B).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Solomon, in view of Parham, further in view of Broadwin.
As to Claim 13, Solomon, as modified, teaches all the limitations of Claim 12, and continues to teach the console (Solomon 150; Parham 104) comprises one or more control inputs (Solomon 151), and the console is configured to selectively control supplying (Parham Paragraphs 0029/0138/0147) the irrigation fluid (the fluid in fluid flow F, described in Parham Paragraph 0147) to the aspirator (Parham Figure 1) and providing the suction to (Parham Paragraph 0138) the aspirator (Parham Figure 1) via (Solomon Paragraph 0032) the one or more control inputs (Solomon 151).
Solomon, as modified, continues to teach controlling (Paragraph 0038) the robotic system and the surgical tool via a foot control (318), but does not explicitly teach controlling the irrigation and vacuum via a foot pedal.
Broadwin describes a similar aspirator, and teaches controlling the irrigation and vacuum via a foot pedal (Column 5, Lines 22-26).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to use a foot pedal, as taught by Broadwin, to control the irrigation and vacuum, as taught by Solomon, as modified, since the use of a foot pedal to control irrigation and vacuum is well-known (Broadwin Column 5, Lines 22-26), and would yield predictable results, i.e., easy control of the irrigation and vacuum while freeing up the hands.
Allowable Subject Matter
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As to Claim 21, the prior art of record teaches each of the limitations of Claim 1 but does not teach “the vent directly exposes the annular cavity to the atmosphere”. Therefore, the prior art of record fails to disclose each of the limitations of Claim 21. The closest art of record is Hashimoto, in view of Parham (cited above). However, Parham describes a vent which requires fluid to move through flue 116 before entering atmosphere, As such, the fluid does not move directly to atmosphere from the Parham vent. It would not be obvious to one of ordinary skill in the art to modify Hashimoto, in view of Parham without significant structural modification and without the benefit of hindsight. Therefore, this limitation, as claimed in Claim 21, is neither anticipated nor made obvious by the prior art of record.
Response to Arguments
Applicant's arguments filed 08/07/2026 have been fully considered but they are not fully persuasive.
Regarding the Drawing Objections, Applicant argues Elements 204/206 are properly labeled in Figure 2. Examiner disagrees. As described above, instant application Paragraph 0040 states irrigation tube 206 is attached to flue tube 268, not aspiration tube 204, as shown in Figure 2. Additionally, Element 204 is used to describe two different structures, i.e., the aspiration tube and the irrigation tube in Figure 2.
Regarding the 112(a) rejections for Claims 5-6, 10 & 13, Applicant only broadly argues the claims are fully supporting, citing instant application Paragraphs 0045-0063. Examiner disagrees.
As described above, the claims do not have sufficient support, since an algorithm or steps/procedure has not been provided describing the respective functions, as required by MPEP 2161.01.
Regarding sufficient support for the previous terms “irrigation source”, “aspiration source”, and “power source”, Examiner reconsidered the previous structure based on the disclosure, and has withdrawn the respective rejections regarding each of the terms.
The term irrigation source is comprised of a fluid supply, as stated in instant application Paragraph 0055. In light of the specification, one of ordinary skill in the art would conclude a fluid supply is a container with fluid, providing sufficient modifying structure for the irrigation source.
The term aspiration irrigation source is comprised of a vacuum, as stated in instant application Paragraph 0054, providing sufficient modifying structure for the irrigation source.
The term power source is comprised of a power supply, as stated in instant application Paragraph 0053 and shown in Figure 4. In light of the specification, one of ordinary skill in the art would conclude a fluid supply is a container with fluid, providing sufficient modifying structure for the irrigation source.
Regarding the 103 rejection for Claim 1, Applicant argues Parham does not teach “a vent for ventilating the irrigation tube to atmosphere”, stating the annotated Parham Figure 10 –now in Claim 1 above—does not show a vent, suggesting Examiner is relying on hindsight. Examiner disagrees.
It appears Applicant is relying on an unsupported narrow definition of the term “vent”. The dashed line in Parham Figure 10 above shows the point where handpiece 120 ends, which may be reasonably and broadly interpreted as a vent, since the opening at the end of handpieces 120 allows fluid to exit handpiece 120 into flue 116. Additionally, this interpretation has nothing to do with “hindsight” as argued by Applicant. This interpretation is merely a broad and reasonable interpretation, as explained immediately above and in the Claim 1 rejection above.
Regarding the 103 rejection for Claim 12, Applicant makes similar arguments as those presented for Claim 1. As such, Examiner relies on the response to arguments above for Claim 1. Applicant also argues Parham does not teach any of an irrigation source, and aspiration source, or a power source, where the irrigation source includes a fluid supply with a fluid coupling as claimed. Examiner disagrees.
Each of the disputed structures and functions are newly amended into Claim 12. As described in the Claim 12 rejection above, Parham describes each of the disputed structures and functions above.
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.
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/DAVID N BRANDT/ Primary Examiner, Art Unit 3783
