DETAILED ACTION
This action is responsive to the Amendment filed on 03/11/2026. Claims 9, 11, 18, and 19 have been amended. Claims 1-20 are pending in the case. Claims 1, 15, and 19 are independent claims.
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: “drive circuit,” “communication circuit,” and “control circuit” in claims 1 and 19.
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 Objections
Claims 5 and 9-18 are objected to because of the following informalities:
Claim 5:
Line 3 recites “in response to the identification information” where “in response to accessing the identification information” was apparently intended.
Claim 9:
Line 1 recites “the first device,” which lacks proper antecedent basis.
Line 2 recites “the second device,” which lacks proper antecedent basis.
Line 5 improperly reintroduces the limitation “a first identification device” (antecedent basis for this limitation had already been established in lines 1-2 of the same claim).
Line 7 improperly reintroduces the limitation “a second identification device” (antecedent basis for this limitation had already been established in line 2 of the same claim).
Claim 11:
Line 3 recites “the first surgical device,” which lacks proper antecedent basis.
Lines 3-4 recite “the second surgical device,” which lacks proper antecedent basis.
Lines 4-5 recite “in response to the first identification information and the second identification information” where “in response to accessing the first identification information and the second identification information” was apparently intended.
Claim 15:
Line 5 recites “in response to the identification information” where “in response to accessing the identification information” was apparently intended.
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, 19, and 20 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 pre-AIA the applicant regards as the invention. See, for example:
Claims 1 and 19:
Claim limitation “control circuit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. In other words, even though other 112(f)-invoking terms would appear to be linked to corresponding structure in the original Specification (like “drive circuit” in ¶ 53 and “communication circuit” in ¶ 48), the same cannot be said for “control circuit” because: (i) the disclosure is devoid of any structure that performs the function in the claim, (ii) the structure described in the specification does not perform the entire function in the claim, or (iii) no association between the structure and the function can be found in the specification.
Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 14:
Line 1 recites the limitation “the accessory.” Doing so introduces clarity issues because up to that point, there had already been at least three different “accessory” variations (including “an interchangeable accessory” in claim 1, “a first accessory” in claim 9, and “a second accessory” in claim 9). Therefore, vaguely referring to “the accessory” without further specificity after introducing three more specific “accessory” varieties is indefinite because it is unclear which “accessory” is being referenced in claim 14.
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 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.
Claims 1-3 and 5-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berry et al. (US Patent Application Pub. No. 2015/0257814, hereinafter “Berry”).
As to independent claim 1, Berry shows a control console for at least one surgical device [¶ 47] comprising:
at least one drive circuit configured to control the surgical device via at least one interface port [at least one drive circuit configured to control the surgical device via at least one interface port/“connector” (¶ 54)];
a display device configured to display operating state information of the surgical device [a display 412 (¶ 54) is configured to display operating state information of the surgical device (¶¶ 57, 81, 84, & 113)];
a communication circuit configured to communicate with an identification device of an interchangeable accessory of the surgical device [a communication circuit (¶ 119) is configured to communicate with an identification device of an interchangeable accessory/instrument of the surgical device (¶ 85)]; and
a control circuit [¶ 122] configured to:
access identification information of the interchangeable accessory from the identification device via the communication circuit [“Some electrosurgical instruments may be “smart” instruments that can provide information about the electrosurgical instrument. For instance, an electrosurgical instrument may include a device that stores information about the electrosurgical instrument. The device may be, for example, a printed circuit board, flash memory, EEPROM, or other type of non-volatile memory. The information may include, for example, instrument type information to identify the type of electrosurgical instrument that is coupled to a manipulator arm, what type of electrosurgical energy the instrument is configured to receive (e.g., bipolar or monopolar cutting & monopolar coagulating), and/or other information useful for an electrosurgical instrument. This identification information may be received and utilized to determine compatibility for the instrument so that the electrosurgical instrument may be properly controlled by the master control console.” (¶ 85)]; and
display the identification information on the display device, wherein the identification information comprises an identification symbol of the accessory [“According to an exemplary embodiment, a module for an electrosurgical instrument may include an indicator for when a smart instrument is connected to the module. The indicator may be in the form of, for example, a lightened area, a symbol, color, or other visual indication to easily inform a user that a connected instrument is a smart instrument. As shown in the exemplary embodiment of FIG. 6, module 460 may include a smart electrosurgical instrument indicator 480 that lightens or turns color when a connected electrosurgical instrument is a smart electrosurgical instrument.” (¶ 86)
For other “identification symbol” alternatives, see also the instrument “section” symbols (¶ 62) and/or instrument “mode” symbols (¶ 79).].
As to dependent claim 2, Berry further shows:
wherein the identification symbol comprises a graphic identifying the interchangeable accessory [the identification symbol comprises a graphic identifying the interchangeable accessory (figs. 4-12; ¶¶ 62, 73, 79, & 86)].
As to dependent claim 3, Berry further shows:
wherein the identification symbol comprises a color-coded identification card [the identification symbol comprises a color-coded identification rectangular shape resembling a card (figs. 4-12; ¶¶ 62, 66, 68, 73, 79, 86, & 114)].
As to dependent claim 5, Berry further shows:
control an operating configuration of the drive circuit of the surgical device via the interface port in response to the identification information [an operating configuration of the drive circuit of the surgical device may be controlled via the interface port in response accessing/receiving to the identification information (¶¶ 85-87)].
As to dependent claim 6, Berry further shows:
wherein the identification symbol is received from the identification device of the accessory [the identification symbol is received from the identification device of the accessory (¶¶ 85-86)].
As to dependent claim 7, Berry further shows:
wherein the identification symbol comprises at least one of a depiction of the accessory, a dimension of the accessory, and an operating range of the accessory [the identification symbol comprises at least one of a depiction of the accessory, a dimension of the accessory, and an operating range of the accessory (figs. 4-12; ¶¶ 62, 67, 73, 79, & 86)].
As to dependent claim 8, Berry further shows:
wherein the at least one control circuit is configured to control a plurality of surgical devices comprising a first device and a second device [the at least one control circuit is configured to control a plurality of surgical devices comprising a first device and a second device (¶¶ 57-63)].
As to dependent claim 9, Berry further shows:
wherein the first device comprises a first identification device and the second device comprises a second identification device, and wherein the controller is configured to: access first identification information of a first accessory in connection with the first device from a first identification device via the communication circuit; and access second identification information of a second accessory in connection with the second device from a second identification device via the communication circuit [each instrument/device/accessory comprises its own identification device, and corresponding identification information of each instrument/device/accessory may be accessed respectively (¶¶ 85-86)].
As to dependent claim 10, Berry further shows:
control the display device to display a first identification symbol of the first accessory in response to the connection of the first device to the control console and to display a second identification symbol of the second accessory in response to the connection of the second device to the control console [a corresponding symbol may be displayed for each individual accessory in response to their connection to the console (figs. 4-12; ¶¶ 62, 73, 79, & 86)].
As to dependent claim 11, Berry further shows:
independently control operating states of each of the first surgical device and the second surgical device via the at least one interface port in response to the first identification information and the second identification information [the operating states of each surgical device/accessory/instrument may be independently controlled via their corresponding ports/connectors in response to receiving their corresponding identification information (¶¶ 57-63 & 85-87)].
As to dependent claim 12, Berry further shows:
wherein the first identification information comprises a first operating configuration for the first surgical device in coordination with the first accessory, and the second identification information comprises a second operating configuration for the second surgical device in coordination with the second accessory [each identification information comprises a corresponding operating configuration for its respective accessory (¶¶ 57-63 & 85-87)].
As to dependent claim 13, Berry further shows:
wherein the at least one interface port comprises a first port located on the control console adjacent to a first side portion of the display device and a second port located on the control console adjacent to a second side portion of the display device, wherein the controller is further configured to control the display device to display a first identification symbol of the first accessory on the first side portion, and a second identification symbol of the second accessory on the second side portion [“According to an exemplary embodiment, visual indicators 430-434 may have a shape to assist with the function of visually coupling display screen sections 440-444 with connectors 420-424. For instance, visual indicators 430-434 may be in the shape of lines or bars that extend between associated display screen sections and connectors, as shown in the exemplary embodiment of FIG. 4. Further, the shape of visual indicators 430-434 may be selected so that the visual indicators 430-434 are aligned along a direction that visually couples display partitions with connectors. As shown in the exemplary embodiment of FIG. 4, visual indicators 430-434 may be in the shape of lines, bars, or other graphics that extend substantially along the same direction as a long axis 445 of display screen sections 440-444. Therefore, the alignment of visual indicators 430-434 may direct a user's gaze towards an associated connector 420-424 when the user is scanning the information and controls of display screen sections 440-444, whether scanning is in a lateral (horizontal) direction, a vertical direction, a radial direction, or other direction.
According to an exemplary embodiment, a user control interface 410 need not include visual indicators 430-434. For instance, a user control interface 410 may be arranged so that display partitions and connectors 420-424 are arranged immediately adjacent to one another. For instance, connectors 420-424 and display partitions may be arranged so that a user scanning along a display screen section 440-444 observes a connector 420-424 when the user's gaze leaves the area of the display 412, whether the direction of scanning is a lateral direction, a vertical direction, or a radial direction. According to an exemplary embodiment, no display screen section, connector, control, or other feature is located between the display screen sections 440-444 and the connectors 420-424 to reduce any confusion about which display screen section is aligned or otherwise associated with a particular connector.” (¶¶ 73-74)].
As to dependent claim 14, Berry further shows:
wherein the accessory is an interchangeable cutting tool for surgical operations comprising at least one of a shaver, a rasp, a burr, a dissector, a drill, a saber, a resector, and a blade [the accessory is an interchangeable cutting tool for surgical operations comprising at least one of a shaver, a rasp, a burr, a dissector, a drill, a saber, a resector, and a blade (¶¶ 04 & 48)].
As to independent claim 15, Berry shows a method for controlling a surgical device [¶ 08] comprising:
accessing identification information from an identification device of at least one interchangeable accessory [“Some electrosurgical instruments may be “smart” instruments that can provide information about the electrosurgical instrument. For instance, an electrosurgical instrument may include a device that stores information about the electrosurgical instrument. The device may be, for example, a printed circuit board, flash memory, EEPROM, or other type of non-volatile memory. The information may include, for example, instrument type information to identify the type of electrosurgical instrument that is coupled to a manipulator arm, what type of electrosurgical energy the instrument is configured to receive (e.g., bipolar or monopolar cutting & monopolar coagulating), and/or other information useful for an electrosurgical instrument. This identification information may be received and utilized to determine compatibility for the instrument so that the electrosurgical instrument may be properly controlled by the master control console.” (¶ 85)];
controlling an operating configuration of at least one surgical device in connection with the interchangeable accessory in response to the identification information [an operating configuration of at least one surgical device in connection with the interchangeable accessory in response to the identification information may be controlled (¶¶ 85-89)];
communicating a control instruction for an actuator of the at least one surgical device via a first port of a plurality of ports of a connection interface [a control instruction for an actuator (¶¶ 03 & 51-53) of the at least one surgical device via a first port of a plurality of ports of a connection interface (¶ 54)]; and
distinguishing the first port of the connection interface from the plurality of ports of the connection interface, wherein the first port is distinguished by displaying an identification symbol identifying the interchangeable accessory on a display screen [the first port is distinguished by displaying an identification symbol (¶ 86)/“section” graphic (¶ 62)/“mode” symbol (¶ 79) identifying the interchangeable accessory on a display screen (figs. 4-12)].
As to dependent claim 16, Berry further shows:
wherein the identification symbol is received from the identification device of the interchangeable accessory [the identification symbol is received from the identification device of the accessory (¶¶ 85-86)].
As to dependent claim 17, Berry further shows:
wherein the identification symbol is accessed as a picture stored in the identification device of an interchangeable accessory of the surgical device [the identification symbol is accessed as a picture stored in the identification device of an interchangeable accessory of the surgical device (figs. 4-12; ¶¶ 62, 73, 79, & 86)].
As to dependent claim 18, Berry further shows:
wherein the at least one surgical device comprises a first device in connection with a first interchangeable accessory via the first port and a second device in connection with a second interchangeable accessory via a second port of the plurality of ports [the surgical device may comprise multiple devices in connection with corresponding accessories/“instruments” via corresponding ports/“connectors” (¶¶ 54-55)]; and
the method further comprising: distinguishing the first port in connection with the first device from the second port of the plurality of ports in communication with the second device by: displaying a first identification symbol identifying the first interchangeable accessory on a first side portion of the display screen adjacent to the first port; and displaying a second identification symbol of the second interchangeable accessory of the second device on a second side portion of the display screen adjacent to the second port [“According to an exemplary embodiment, visual indicators 430-434 may have a shape to assist with the function of visually coupling display screen sections 440-444 with connectors 420-424. For instance, visual indicators 430-434 may be in the shape of lines or bars that extend between associated display screen sections and connectors, as shown in the exemplary embodiment of FIG. 4. Further, the shape of visual indicators 430-434 may be selected so that the visual indicators 430-434 are aligned along a direction that visually couples display partitions with connectors. As shown in the exemplary embodiment of FIG. 4, visual indicators 430-434 may be in the shape of lines, bars, or other graphics that extend substantially along the same direction as a long axis 445 of display screen sections 440-444. Therefore, the alignment of visual indicators 430-434 may direct a user's gaze towards an associated connector 420-424 when the user is scanning the information and controls of display screen sections 440-444, whether scanning is in a lateral (horizontal) direction, a vertical direction, a radial direction, or other direction.
According to an exemplary embodiment, a user control interface 410 need not include visual indicators 430-434. For instance, a user control interface 410 may be arranged so that display partitions and connectors 420-424 are arranged immediately adjacent to one another. For instance, connectors 420-424 and display partitions may be arranged so that a user scanning along a display screen section 440-444 observes a connector 420-424 when the user's gaze leaves the area of the display 412, whether the direction of scanning is a lateral direction, a vertical direction, or a radial direction. According to an exemplary embodiment, no display screen section, connector, control, or other feature is located between the display screen sections 440-444 and the connectors 420-424 to reduce any confusion about which display screen section is aligned or otherwise associated with a particular connector.” (¶¶ 73-74)].
As to independent claim 19, Berry shows a control console for a surgical device [¶ 47] comprising:
a display device comprising a first side portion and a second side portion [a display device has multiple side portions (fig. 4)];
a communication interface [¶ 119] comprising a first port disposed adjacent to the first side portion and a second port disposed adjacent to the second side portion, wherein the first port is configured to control a first surgical device and the second port is configured to control a second surgical device [“As shown in the exemplary embodiment of FIG. 3, the user control interface 410 of the ESU 400 may include a display 412, a power switch 414, and one or more instrument connectors or ports 420-424 (referred to as “connectors” below) configured to supply a flux to an instrument. Although the exemplary embodiment of FIG. 3 shows five connectors 420-424, ESU 400 may include other numbers of connectors. For example, an ESU may include one, two, three, four, five, or more connectors. Display 412 may provide a graphical user interface for a user to control and change settings for the ESU 400. {…}” (¶ 54) | See also fig. 4 and ¶¶ 62 & 74 for more context on the “adjacent” aspects of the ports relative to the side portions.];
at least one communication circuit [¶ 119] in communication with a first identification circuit of a first interchangeable accessory of the first surgical device and a second identification circuit of a second interchangeable accessory of the second surgical device, wherein the first identification circuit comprises first identifying information of the first interchangeable accessory and the second identification circuit comprises second identifying information of the second interchangeable accessory [“Some electrosurgical instruments may be “smart” instruments that can provide information about the electrosurgical instrument. For instance, an electrosurgical instrument may include a device that stores information about the electrosurgical instrument. The device may be, for example, a printed circuit board, flash memory, EEPROM, or other type of non-volatile memory. The information may include, for example, instrument type information to identify the type of electrosurgical instrument that is coupled to a manipulator arm, what type of electrosurgical energy the instrument is configured to receive (e.g., bipolar or monopolar cutting & monopolar coagulating), and/or other information useful for an electrosurgical instrument. This identification information may be received and utilized to determine compatibility for the instrument so that the electrosurgical instrument may be properly controlled by the master control console.” (¶ 85)]; and
a control circuit [¶ 122] configured to: access the first identification information and the second identification information via the at least one communication circuit; display a first identifying symbol on the first side portion of the display device based on the first identification information; and display a second identifying symbol on the second side portion of the display device based on the second identification information [“According to an exemplary embodiment, visual indicators 430-434 may have a shape to assist with the function of visually coupling display screen sections 440-444 with connectors 420-424. For instance, visual indicators 430-434 may be in the shape of lines or bars that extend between associated display screen sections and connectors, as shown in the exemplary embodiment of FIG. 4. Further, the shape of visual indicators 430-434 may be selected so that the visual indicators 430-434 are aligned along a direction that visually couples display partitions with connectors. As shown in the exemplary embodiment of FIG. 4, visual indicators 430-434 may be in the shape of lines, bars, or other graphics that extend substantially along the same direction as a long axis 445 of display screen sections 440-444. Therefore, the alignment of visual indicators 430-434 may direct a user's gaze towards an associated connector 420-424 when the user is scanning the information and controls of display screen sections 440-444, whether scanning is in a lateral (horizontal) direction, a vertical direction, a radial direction, or other direction.
According to an exemplary embodiment, a user control interface 410 need not include visual indicators 430-434. For instance, a user control interface 410 may be arranged so that display partitions and connectors 420-424 are arranged immediately adjacent to one another. For instance, connectors 420-424 and display partitions may be arranged so that a user scanning along a display screen section 440-444 observes a connector 420-424 when the user's gaze leaves the area of the display 412, whether the direction of scanning is a lateral direction, a vertical direction, or a radial direction. According to an exemplary embodiment, no display screen section, connector, control, or other feature is located between the display screen sections 440-444 and the connectors 420-424 to reduce any confusion about which display screen section is aligned or otherwise associated with a particular connector.” (¶¶ 73-74)
“According to an exemplary embodiment, a module for an electrosurgical instrument may include an indicator for when a smart instrument is connected to the module. The indicator may be in the form of, for example, a lightened area, a symbol, color, or other visual indication to easily inform a user that a connected instrument is a smart instrument. As shown in the exemplary embodiment of FIG. 6, module 460 may include a smart electrosurgical instrument indicator 480 that lightens or turns color when a connected electrosurgical instrument is a smart electrosurgical instrument.” (¶ 86)
For other “identification symbol” alternatives, see also the instrument “section” symbols (¶ 62) and/or instrument “mode” symbols (¶ 79).].
As to dependent claim 20, Berry further shows:
wherein the first identifying symbol is accessed in the first identifying information and the second identifying symbol is accessed in the second identifying information [the first identifying symbol is accessed in the first identifying information and the second identifying symbol is accessed in the second identifying information (figs. 4-12; ¶¶ 62, 73-74, 79, & 85-86)].
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Berry in view of Anderson et al. (US Patent Application Pub. No. 2019/0110862, hereinafter “Anderson”).
As to dependent claim 4, even though Berry is replete with examples of remotely operatable/handheld/teleoperated instruments (Berry: ¶¶ 03, 43, 47-51, 90-94, & 119). Nonetheless, Berry does not appear to explicitly recite a “a wireless transmitter” per se. In an analogous art, Anderson shows:
wherein the identification device comprises a wireless transmitter configured to communicate the identification information to the communication circuit from the interchangeable accessory [“Embodiments of the presently disclosed techniques and apparatuses may include a surgical machine that comprises a plurality of machine connectors disposed on its face, as well as a device detection mechanism (such as a radio-frequency identification (RFID) reader antenna, Bluetooth receiver, optical scanner, induction chip reader, etc.) comprising components located in proximity to the plurality of machine connectors. The device detection mechanism may be configured to detect information from compatible device information components (e.g., RFID tags, Bluetooth transmitters, bar codes, induction chips, etc.) when any of said compatible device information components is positioned within a predetermined range of the device detection mechanism. {…}” (Anderson: ¶ 10)
“Surgical machine 100 may also contain a device detection mechanism (e.g., an RFID reader). A typical RFID reader may include an RFID antenna, transceiver, microprocessor, power supply, and signal conditioning circuitry. The RFID reader may be installed in the surgical machine 100 so that the RFID reader is in proximity to connectors and illumination rings 130, 140. The phrase “in proximity” means that the device detection mechanism (e.g., the RFID reader) is close enough to the connectors, given the detection technology employed, to reliably detect the presence of a compatible device information component (e.g., a RFID tag) when a surgical tool's connector, containing that device information component, is brought towards any of the connectors 130, 140, before that tool's connector is plugged into one of the connectors 130, 140. Other device detection mechanisms are also contemplated. For example, a Bluetooth receiver, optical scanner, induction chip reader, etc. may be used instead of (or in addition to) an RFID reader to detect device information from a device information component on a surgical tool connector (e.g., via a compatible Bluetooth transmitter, bar code, induction chip, etc. on the tool connector). While “Bluetooth receiver” and “Bluetooth transmitter” are used herein, it is to be understood that a “Bluetooth transceiver” (which can receive and transmit Bluetooth communications) may also be used in place of “Bluetooth receiver” or “Bluetooth transmitter”.” (Anderson: ¶ 24)].
One of ordinary skill in the art, having the teachings of Berry and Anderson before them prior to the effective filing date of the claimed invention, would have been motivated to incorporate Anderson’s wireless techniques into Berry. The rationale for doing so would have been to improve the user experience by removing burdensome cables during sensitive surgeries and the fact that “[d]uring surgery, problems can arise if the wrong tool is connected to the machine” (Anderson: ¶ 06). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Berry and Anderson in order to obtain the invention as recited in claim 4.
Response to Arguments
Applicant’s arguments have been fully considered but they are not persuasive. Applicant argues:
“Interpretation under 35 U.S.C. § 112(f) is not warranted because the term "control circuit" is a definite structural term that would be recognized by one of ordinary skill in the electrical and computer arts. The term "circuit" is not a generic placeholder or nonce term-it is a well-understood structural term in the electrical and computer arts that connotes specific hardware configurations. When read in the context of claims 1 and 19 as a whole, the "control circuit" is recited in conjunction with other structural elements including "at least one drive circuit," "a display device," "a communication circuit," and "at least one interface port," all of which provide structural context for the claimed control circuit. While the scope of the term "control circuit" may be inclusive of several devices, such as controllers, microprocessors, microcontrollers, and ASICs, this breadth does not render the term a generic placeholder. A person of ordinary skill in the art would readily identify specific circuit configurations and hardware components that fall within the meaning of "control circuit," particularly when the claim is read as a whole as required.”
The Office respectfully disagrees. The term “control circuit” as currently claimed meets the 3-prong analysis as outlined in MPEP § 2181. In other words, “control circuit” as currently claimed: (A) uses a term (e.g. “circuit”) used as a substitute for "means" that is a generic placeholder for performing the claimed function; (B) the generic placeholder is modified by functional language, such as "configured to;" and (C) the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Applicant’s arguments are not persuasive because the metric is not to determine whether the invoking limitation is surrounded by or contextualized by other non-invoking structural elements, but rather whether the generic placeholder itself is not modified by sufficient structure, material, or acts for performing the claimed function.
“In the alternative, if interpretation under 35 U.S.C. § 112(f) is maintained, the specification clearly discloses corresponding exemplary structures. The specification discloses that "each of the processors, controllers, or other control units described herein may be implemented via one or more microprocessors, microcontrollers, application-specific integrated controllers (ASIC), or other circuitry configured to perform instructions, computations, and control various input/output signals that may provide for the operation of the system 10." As- Filed Specification, paragraph [0033]. These structural examples, in combination with their equivalents as included under 35 U.S.C. § 112(f) interpretation, effectively encompass the same scope as the broadest reasonable interpretation of the term "control circuit." Therefore, while interpretation under 35 U.S.C. § 112(f) is not warranted, even if such interpretation were maintained, it would not change the interpretation from the conventional standard of interpreting the term with its plain meaning as understood by a person of ordinary skill in the relevant art.”
The Office respectfully disagrees with Applicant’s opinion because none of the hardware examples that Applicant has named appears to have been explicitly associated to the claimed “control circuit” in the original Specification.
“ The specification expressly discloses several corresponding structures that would be readily identified as supporting the operation of the claimed "control circuit." For example, as described in the specification, "the controller 30 of the control console 16 may comprise a processor 70. The processor 70 may be operable to access information related to the operating configurations 18 or control configurations 34 of the surgical devices 12 and the interchangeable accessories 32 via one or more data sets or tables that may be stored in a memory 72." As-Filed Specification, paragraph [0030]. The controller 30 comprising processor 70 and memory 72 is one of several reasonable examples of a control circuit that is expressly disclosed as providing the functions recited in claims 1 and 19.
The specification further provides explicit structural examples, disclosing that "the processors 70, 80 discussed herein may be implemented as microprocessors, microcontrollers, application-specific integrated circuits (ASIC), or other circuitry configured to perform instructions, computations, and control various input/output signals to control the control system 10." As-Filed Specification, paragraph [0046]. Additionally, the specification states that "each of the processors, controllers, or other control units described herein may be implemented via one or more microprocessors, microcontrollers, application-specific integrated controllers (ASIC), or other circuitry configured to perform instructions, computations, and control various input/output signals that may provide for the operation of the system 10." As-Filed Specification, paragraph [0033]. The focus of the inquiry regarding the meaning of a claim should be what would be reasonable from the perspective of one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260, 94 USPQ2D 1640, 1644 (Fed. Cir. 2010); In re Buszard, 504 F.3d 1364, 84 USPQ2d 1749 (Fed. Cir. 2007). A person of ordinary skill in the art would readily identify the controller 30 comprising processor 70 and memory 72, as well as microprocessors, microcontrollers, ASICs, and several other examples presented in the detailed description, as corresponding structures capable of providing the operations of the claimed "control circuit." The rejection under 35 U.S.C. § 112(b) fails to apply the appropriate rules and standards for review under the MPEPE [sic] and the corresponding law. Accordingly, the terminology recited in the pending claim is clear, not only in the plain and ordinary meaning, but also as supported by various supporting examples provided in the application as filed. Accordingly, the rejection under 112(b) is without merit.”
The Office again respectfully disagrees with Applicant’s opinion because none of the hardware examples that Applicant has named appears to have been explicitly associated to the claimed “control circuit” as currently recited. In other words, it is not enough to name a list of sporadic/unconnected hardware examples throughout the Specification if the actual limitation that is still being pursued (i.e. “control circuit”) in the claims was not explicitly linked any of these hardware examples.
“With respect to claim 14, the office action has alleged that the claim is indefinite because line 1 recites "the accessory" after claim 9 introduces "a first accessory" and "a second accessory," creating ambiguity as to which accessory is being referenced. Claim 14 is amended in this response. Based on the amendments, the claim language is definite. Accordingly, withdrawal of the rejection is respectfully requested.”
The Office respectfully disagrees and notes for the record that despite Applicant’s assertions, no such amendments were made. Hence, the Office maintains the previously-presented rejection.
“Claims 5, 9, 11, 15, and 18 stand objected to for various informalities. With respect to claims 5 and 15, the Office Action has alleged that the phrase "in response to the identification information" should read "in response to accessing the identification information." Applicant respectfully submits that no amendment is necessary because claim 1, from which claim 5 depends, already recites "access identification information of the interchangeable accessory from the identification device via the communication circuit," and claim 15 similarly recites "accessing identification information from an identification device" prior to the objected-to phrase; accordingly, the phrase "in response to the identification information" clearly refers to the identification information that has been accessed, and adding "accessing" would create redundancy.”
The Office respectfully disagrees. In the context of these claims, omitting the word “accessing” would arguably imply that the contingent actions upon which each “in response to” limitation relies reacts to data/information per se (which does not to be an accurate description of the intended underlying functionality) instead of these actions being effects of “accessing” as a cause.
“With respect to claims 9, 11, and 18, these claims have been amended to address the objected-to informalities, including amending claim 9 to depend from claim 8 to provide proper antecedent basis for "the first device" and "the second device," correcting the article usage for the identification devices and accessories in claim 9, maintaining consistent terminology in claim 11, and correcting the antecedent basis issues in claim 18. {…}”
The Office respectfully disagrees and notes for the record that despite Applicant’s assertions, no such amendments were made. Hence, the Office maintains the previously-presented claim objections.
“ The rejection alleges that Berry discloses this limitation, citing Berry's smart instrument indicator 480 at paragraph [0086], as well as instrument "section" symbols at paragraph [0062] and instrument "mode" symbols at paragraph [0079]. However, this assertion is not in accordance with the disclosure. Berry paragraph [0085] discloses that smart instruments may include a device (e.g., printed circuit board, flash memory, EEPROM) that stores "instrument type information to identify the type of electrosurgical instrument" and "what type of electrosurgical energy the instrument is configured to receive." See Berry, paragraph [0085]. However, Berry does not disclose that this identification information includes an identification symbol of the accessory as recited in claim 1. Berry paragraph [0086] discloses that "module 460 may include a smart electrosurgical instrument indicator 480 that lightens or turns color when a connected electrosurgical instrument is a smart electrosurgical instrument." See Berry, paragraph [0086]. This indicator merely indicates that a smart instrument is connected-it does not constitute "identification information" that "comprises an identification symbol of the accessory" as required by claim 1. The smart instrument indicator 480 fails to disclose the recited identification symbol.
Claim 1 recites a control circuit configured to "access identification information of the interchangeable accessory from the identification device via the communication circuit" and "display the identification information on the display device, wherein the identification information comprises an identification symbol of the accessory." Berry fails to disclose identification information that is accessed from the identification device and that comprises an identification symbol of the accessory. The cited portions of Berry do not provide any disclosure of these recited features. Accordingly, Berry does not anticipate claim 1.”
The Office respectfully disagrees. First, Applicant’s arguments appear rely on the premise that the claims explicitly specify the location of the identification device via which the identification information. The Office respectfully disagrees with this apparent assumption, and maintains that the identification device appears to only be limited by the condition that it must be able to communicate with the communication circuit (regardless of where it is located). Moreover, the Office submits that Berry’s identification symbol (which conveys identification information from its corresponding accessory) does not exist in a vacuum, but rather directly portrays the identification information accessed from the identification device (see Berry: ¶¶ 62, 79, & 85-86).
“Additionally, claims 2 and 3 recite that the identification symbol comprises "a graphic identifying the interchangeable accessory" and "a color-coded identification card," respectively. The Office Action alleges these limitations are disclosed by Berry's figures 4-12 and paragraphs [0062], [0066], [0068], [0073], [0079], and [0086]. However, the cited passages of Berry failed to expressly or inherently disclose these features in addition to the deficiencies noted in reference to claim 1. Similar deficiencies are also present in the rejection of claims 6 and 7, which recite further features of the recited identification symbol. Accordingly, withdrawal of the rejection and favorable consideration of these claims is requested for these additional reasons.”
The Office respectfully disagrees with Applicant’s conclusory statements and maintains that the mappings to each of these dependent claims reasonably shows each limitation, respectively.
Therefore, the Office respectfully asserts that the cited art sufficiently teaches the limitations recited in the claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicants are reminded of the extension of time policy as set forth in 37 C.F.R. § 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 extension fee pursuant to 37 C.F.R. § 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 date of this final action.
It is noted that any citation to specific pages, columns, lines, or figures in the prior art references and any interpretation of the references should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. In re Heck, 699 F.2d 1331, 1332-33, 216 U.S.P.Q. 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 U.S.P.Q. 275, 277 (C.C.P.A. 1968)).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALVARO R CALDERON IV whose telephone number is (571) 272-1818. The examiner can normally be reached on Monday - Friday (8:30am - 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, Kieu Vu can be reached on (571) 272-4057. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALVARO R CALDERON IV/
Examiner, Art Unit 2171
/KIEU D VU/Supervisory Patent Examiner, Art Unit 2171
Prosecution Insights