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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/13/2025, 8/14/2025, 11/19/2025, 2/2/2026, 4/10/2026, and 7/6/2026 are being considered by the examiner.
Applicant should note that the large number of references in the attached IDS from 5/3/2024 have been considered by the examiner in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. See MPEP 609.05(b). Applicant is requested to point out any particular reference in the IDS which they believe may be of particular relevance to the instant claimed invention in response to this office action.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 17 is objected to because of the following informalities:
In claim 17, line 6, “(the second latch” should be –the second latch--.
Appropriate correction is required.
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: “first latch mechanism” and “second latch mechanism” in claim 5.
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.
Based on Applicant’s specification, the latch mechanism appears to be deformable latch arms and a locking surface as shown in figures 7A-C, 8A-D, and 9A-H and described in paragraphs [0055]-[0071].
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 1-18 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.
Claim 1 recites the limitation “an instrument carriage” in line 4. It is not clear if this is a new instance or refers to the instrument carriage mentioned in line 1 of the claim.
Claim 1 recites the limitation “a medical instrument” in line 6. It is not clear if this is a new instance or refers to the medical instrument mentioned in line 1 of the claim.
Claim 1 recites the limitations “engaging of the carriage latch arm” and “disengaging of the carriage latch arm” in lines 14 and 15. It is not clear if these are supposed to be new instances or refer to the engaging and disengaging steps in lines 4 and 8 respectively.
Claim 1 recites the limitations “engaging of the instrument latch arm” and “disengaging of the instrument latch arm” in lines 14 and 15. It is not clear if these are supposed to be new instances or refer to the engaging and disengaging steps in lines 6 and 11 respectively.
Claims 2-4 inherit the deficiencies of claim 1 and are likewise rejected.
Claim 3 recites the limitation “a medical instrument” in line 6. It is not clear if this is a new instance or refers to the medical instrument mentioned in line 1 of claim 1.
Claim 4 recites the limitation "the presence" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation “an instrument carriage” in line 3. It is not clear if this is a new instance or refers to the instrument carriage mentioned in line 1 of the claim.
Claim 5 recites the limitation “a surgical instrument” in line 5 and “surgical instrument” in line 7. It is not clear if these are new instances or refer to the surgical instrument mentioned in line 1 of the claim.
Claims 6-18 inherit the deficiencies of claim 5 and are likewise rejected.
Claim 17 recites the limitation “a centerline” in line 6. It is not clear if this is a new instance or refers to the centerline mentioned in line 3 of the present claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-4 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 15-18 of U.S. Patent No. 11,944,403. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of U.S. Patent No. 11,944,403 discloses a species that anticipates the current genus claim.
Claim 1 discloses the same steps present in claims 1 and 15 of U.S. Patent No. 11,944,403. The mapping of the claims are as follows:
Present Claim
U.S. Patent No. 11,944,403
1. A method for latching an instrument sterile adapter to an instrument carriage and to a
medical instrument and then unlatching the instrument sterile adapter from the medical
instrument and the instrument carriage, the method comprising:
latching the instrument sterile adapter to an instrument carriage by engaging a
carriage latch arm of the sterile adapter with the instrument carriage;
latching the instrument sterile adapter to a medical instrument by engaging an
instrument latch arm of the sterile adaptor with the medical instrument;
unlatching the instrument sterile adapter from the medical instrument by disengaging
the instrument latch arm from the medical instrument; and
unlatching the instrument sterile adapter from the instrument carriage by
disengaging the carriage latch arm from the instrument carriage;
wherein a connecting member connects the carriage latch arm and the instrument
latch arm to the instrument sterile adapter;
wherein the connecting member elastically deforms during engaging of the carriage
latch arm with the instrument carriage and during disengaging of the carriage
latch arm from the instrument carriage; and
wherein the instrument latch arm elastically deforms during engaging the instrument latch arm with the medical instrument and during disengaging the instrument latch arm from the medical instrument.
1. An instrument sterile adapter comprising:
a plate portion
a latch structure comprising:
a carriage latch arm connected to an extending away from a first side of the
plate portion, the carriage latch arm engageable with an instrument carriage to latch the instrument sterile adapter to the instrument carriage, and
an instrument latch arm connected to and extending away from a second side of the plate portion, opposite the first side, the instrument latch arm engageable with a medical instrument to latch the instrument sterile adapter to the medical instrument, and
a connecting member connecting the carriage latch arm and the instrument latch arm to the plate portion of the instrument sterile adapter;
wherein in an engaged state of the carriage latch arm with the instrument carriage and in an engaged state of the instrument latch arm with the medical instrument, the carriage latch arm is not disengageable from the instrument carriage.
15. A method for latching the instrument sterile adapter of claim 1 to the instrument carriage and to the medical instrument and then unlatching the instrument sterile adapter from the medical instrument and the instrument carriage, the method comprising:
latching the instrument sterile adapter to the instrument carriage by engaging the
carriage latch arm of the instrument sterile adapter with the instrument carriage;
latching the instrument sterile adapter to the medical instrument by engaging the
instrument latch arm of the instrument sterile adapter with the medical instrument;
unlatching the instrument sterile adapter from the medical instrument by disengaging
the instrument latch arm from the medical instrument; and
unlatching the instrument sterile adapter from the instrument carriage by disengaging the carriage latch arm from the instrument carriage;
wherein the connecting member of the instrument sterile adapter elastically deforms
during the engaging of the carriage latch arm with the instrument carriage and during the disengaging of the carriage latch arm from the instrument carriage;
and
wherein the instrument latch arm elastically deforms during the engaging the instrument latch arm with the medical instrument and during the disengaging the instrument latch arm from the medical instrument.
The key difference between the two is that claims 1 of the present application and claims 1 and 15 of U.S. Patent No. 11,944,403 directed towards the use of a specific instrument sterile adapter while the present claim uses a generic instrument sterile adapter. As noted in the table above the steps of the present claim are present in claim 15 of U.S. Patent No. 11,944,403. The difference is the connecting member limitation (the italicized section) of the present claim is not present in claim 15 of U.S. Patent No. 11,944,403. However, that limitation is present in the device limitation of claim 1 of U.S. Patent No. 11,944,403 which claim 15 is dependent on, which also discloses more device specifics, thus making species claim 15 of U.S. Patent No. 11,944,403 anticipate the present genus claim.
Claims 2-4 recite the same steps as claims 16-18 with the same dependency chain and are thus rejected as being anticipated by the species claims of U.S. Patent No. 11,944,403.
Conclusion
The examiner notes that, though no art has been applied against claims 1-18 at this time, they are not presently allowable. The question of prior art will be revisited upon resolution of the numerous issues noted above.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The closest prior art round are US 2008/0140088, US 2014/0001234, US 8529582, US 2013/0325034, US 2010/0170519, and US 6,331,181 which discloses various sterile adaptors for coupling medical instruments to carriages but does not disclose or suggest a method that uses a device with a combination components that comprises a latch structure including a carriage latch arm engageable with an instrument carriage to latch the instrument sterile adapter to the instrument carriage, an instrument latch arm engageable with a medical instrument to latch the instrument sterile adapter to the medical instrument, and a connecting member that connects the carriage latch arm and the instrument to the instrument sterile adapter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA DARYL DEANON LANNU whose telephone number is (571)270-1986. The examiner can normally be reached Monday-Thursday 8 AM - 5 PM, Friday 8 AM -12 PM.
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, Charles Marmor can be reached at (571) 272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA DARYL D LANNU/Examiner, Art Unit 3791
/CARRIE R DORNA/Primary Examiner, Art Unit 3791
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