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 .
Claim Rejections - 35 USC § 112(b)
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, 6, 7, and 12 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 1 recites the limitation "the upper side of the top plate" at line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the upper side of the top plate" at line 8-9. There is insufficient antecedent basis for this limitation in the claim.
Claims 6 and 12 include the term “high temperature plastic material” which is a relative term which renders the claim indefinite. The term “high temperature plastic material” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In particular, it is unclear to what degree of “high temperature” is required by the plastic material to meet the needs of the claims.
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.
(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.
Claims 1-3, 5, 7-9, 11, 13 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent No. 5,359,993 (“Slater”).
Claim 1
Slater discloses a temperature actuated mechanical counter, comprising: a top plate having one or more index features on an underside of the top plate (plate 40 engages cylindrical orifice 13) and a post extending from the underside of the top plate, the one or more index features circumferentially arranged about the post (anchor 17); a base having one or more base index features with angled end surfaces on an upper side of the base and a hollow post extending from the upper side of the top plate (base wheel 16 with teeth 30 in hollow post 13), the one or more base index features circumferentially arranged about the hollow post, the hollow post configured to couple to the post to fix the top plate relative to the base (Fig. 1); an index plate interposed between the top plate and the base and having numerical identifiers circumferentially arranged about the index plate adjacent corresponding openings or slots in the index plate (facets 26); and a deflectable plate attached to the index plate and configured to deflect at a first temperature and to revert to an undeflected state at a second temperature, wherein deflection of the deflectable plate causes the index plate to move relative to the top plate and the base so that the index plate rotates about an axis of the post to a new index location (deflectable plate 18, Fig. 1), and wherein the deflectable plate reverting to the undeflected state causes the index features of the top plate to engage the openings of the index plate to lock the new index location (col. 5, lns 15-40).
Claim 2
Slater discloses the counter of claim 1, further comprising a spring between the index plate and the base, the spring configured to apply a force on the index plate when the deflectable plate reverts to the undeflected state to move the index plate (spring 621).
Claim 3
Slater discloses the counter of claim 1, wherein the first temperature is above the second temperature (col. 5, lns 18-27; first temperature of sterilizing temperature and second temperature of cooling).
Claim 5
Slater discloses the counter of claim 1, wherein the deflectable plate is made of a bimetallic material (col. 5, ln 15; plate 18 is bimetallic).
Claim 7
Slater discloses a robotic surgical tool, comprising: a housing (housing 12); and a temperature actuated mechanical counter housed in the housing (counter 10), comprising: a top plate having one or more index features on an underside of the top plate (plate 40 engages cylindrical orifice 13) and a post extending from the underside of the top plate, the one or more index features circumferentially arranged about the post (anchor 17); a base having one or more base index features with angled end surfaces on an upper side of the base and a hollow post extending from the upper side of the top plate (base wheel 16 with teeth 30 in hollow post 13), the one or more base index features circumferentially arranged about the hollow post, the hollow post configured to couple to the post to fix the top plate relative to the base (Fig. 1); an index plate interposed between the top plate and the base and having numerical identifiers circumferentially arranged about the index plate adjacent corresponding openings or slots in the index plate (facets 26); and a deflectable plate attached to the index plate and configured to deflect at a first temperature and to revert to an undeflected state at a second temperature, wherein deflection of the deflectable plate causes the index plate to move relative to the top plate and the base so that the index plate rotates about an axis of the post to a new index location (deflectable plate 18, Fig. 1), and wherein the deflectable plate reverting to the undeflected state causes the index features of the top plate to engage the openings of the index plate to lock the new index location (col. 5, lns 15-40).
Claim 8
Slater discloses the robotic surgical tool of claim 7, further comprising a spring between the index plate and the base, the spring configured to apply a force on the index plate when the deflectable plate reverts to the undeflected state to move the index plate (spring 621).
Claim 9
Slater discloses the robotic surgical tool of claim 7, wherein the first temperature is above the second temperature (col. 5, lns 18-27; first temperature of sterilizing temperature and second temperature of cooling).
Claim 11
Slater discloses the robotic surgical tool of claim 7, wherein the deflectable plate is made of a bimetallic material (col. 5, ln 15; plate 18 is bimetallic).
Claim 13
Slater discloses the robotic surgical tool of claim 7, wherein the top plate and base are part of the housing (col. 4, ln 65-col. 5, 14; structure of the counter 10 and top and base parts part of housing).
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 4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,359,993 (“Slater”) in view of U.S. Patent Pub. 2009/0236550 (“Silva”).
Claim 4
Slater discloses the counter of claim 1.
Slater does not appear to explicitly disclose wherein the first temperature is below the second temperature.
Silva discloses a bimetallic element as a switch and identifies reversing the material layering reversing the temperature thresholds (paragraph [0053]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated, an oppositely oriented bimetallic element, as disclosed by Silva, into the device of Slater, such that the first temperature is below the second temperature, for the purpose of controlling the desired bimetallic element indicating range (Silva, paragraph [0053]).
Claim 10
Slater discloses the robotic surgical tool of claim 7.
Slater does not appear to explicitly disclose wherein the first temperature is below the second temperature.
Silva discloses a bimetallic element as a switch and identifies reversing the material layering reversing the temperature thresholds (paragraph [0053]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated, an oppositely oriented bimetallic element, as disclosed by Silva, into the device of Slater, such that the first temperature is below the second temperature, for the purpose of controlling the desired bimetallic element indicating range (Silva, paragraph [0053]).
Claims 6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,359,993 (“Slater”) in view of U.S. Patent No. 6,736,085 (“Esnouf”).
Claim 6
Slater discloses the counter of claim 1.
Slater discloses disposable instruments of less expensive materials being repeatedly autoclaved (col. 1, ln 52-col. 2, ln 12) but does not appear to explicitly disclose wherein the top plate, base and index plate are made of a high temperature plastic material.
Esnouf discloses a heat cycle indicating device for surgical instrument also having bimetallic indexing and made with a high temperature plastic material (col. 2, lns 46-67).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated using a high temperature plastic material, as disclosed by Esnouf, into the device of Slater, such that the top plate, base and index plate are made of a high temperature plastic material, for the purpose of indicating safety in reusing an autoclaved surgical device (Esnouf, col. 2, ln 46 – col. 3, ln 13).
Claim 12
Slater discloses the robotic surgical tool of claim 7.
Slater discloses disposable instruments of less expensive materials being repeatedly autoclaved (col. 1, ln 52-col. 2, ln 12) but does not appear to explicitly disclose wherein the top plate, base and index plate are made of a high temperature plastic material.
Esnouf discloses a heat cycle indicating device for surgical instrument also having bimetallic indexing and made with a high temperature plastic material (col. 2, lns 46-67).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated using a high temperature plastic material, as disclosed by Esnouf, into the device of Slater, such that the top plate, base and index plate are made of a high temperature plastic material, for the purpose of indicating safety in reusing an autoclaved surgical device (Esnouf, col. 2, ln 46 – col. 3, ln 13).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA S Y LIN whose telephone number is (571)270-7911. The examiner can normally be reached M-F 8-4, TW M,W.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Douglas X Rodriguez can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICA S LIN/Primary Examiner, Art Unit 2853