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 .
Status of Claims
Claims 1, 8, 15-30 are pending.
Claim Rejections - 35 USC § 112(a)
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 1, 8, 15-30 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.
Regarding Claim 1, the limitation “a transmission positioned between the probe and the instrument device manipulator, the transmission configured to transmit an output of the one or more motors to the probe” is confusing because claim 1 also requires the “one or more motors configured to engage with the probe”. That is, claim 1 requires the probe to be mechanically engaged with the motor. Placing a transmission between the probe and the motor, as required by claim 1, contradicts the other requirements of claim 1. There is no corresponding disclosure of a transmission being placed between the probe and the motor and also at the same time, the probe engaged with the motor. As such, claim 1 represents new matter. Claims 8, 15-30 depend from claim 1 and therefore also rejected by virtue of their dependency.
Regarding Claim 30, the disclosure does not provide for detecting “force sensors coupled with the probe and configured to detect compression of a tissue of the patient”. While the term “compression” is mentioned in par. 0194, there are no details how detection of compression can be performed or any disclosure of hardware (e.g. sensors) for performing this function. Force measurements seem to be used as control signals in par. 0102-0103 but do not mention any “compression” determination. As such, claim 30 includes new matter.
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, 8, 15-30 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.
Regarding Claim 1, the limitation “a transmission positioned between the probe and the instrument device manipulator, the transmission configured to transmit an output of the one or more motors to the probe” is confusing because claim 1 also requires the “one or more motors configured to engage with the probe”. That is, claim 1 requires the probe to be mechanically engaged with the motor. Placing a transmission between the probe and the motor, as required by claim 1, contradicts that requirement. There is no corresponding disclosure of a transmission being placed between the probe and the motor and also at the same time, the probe engaged with the motor. It appears to be an impossible configuration. As such, the scope of claim 1 cannot be understood. Claims 8, 15-30 depend from claim 1 and therefore also rejected by virtue of their dependency.
Double Patenting
US 11877818 would likely present a double patenting issue over the elected Species B (parallel transmission) embodiment (e.g. patent claims 14-18), but does not teach instant claim 1 in its current form. Double patenting will be re-evaluated as the claims are amended throughout prosecution.
Response to Arguments
Applicant's arguments filed March 19, 2026 have been fully considered but they are not persuasive.
Regarding the rejection under 35 USC 112(a) for lack of written description, Applicant argues claim 1 is supported by the original disclosure because the specification (par. 0164) teaches “Unless otherwise noted, the terms “connected to” and “coupled to” (and their derivatives), as used in the specification and claims, are to be construed as permitting both direct and indirect (i.e., via other elements or components) connection.” Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). This blanket statement does not clearly address the term “engage” or the situation “motors configured to engage with the probe”. Throughout the specification the meaning of “engage” is a direct mechanical coupling. For example, par. 0080 teaches a fixture inserted into a slot 506 to “engage” a magnet 508 to act as a direct coupling structure. In par. 0101, “driving engagement with the transmission 610” implicitly requires a mechanical coupling; par. 0107 “output shafts that provide a driving engagement to the instruments of the handpiece 600” is a mechanical drive directly coupled to the instrument. Merriam-Webster dictionary defines “engage” as “to interlock with : mesh; also : to cause (mechanical parts) to mesh; engage the clutch”. In the context of drive inputs from a motor, one of ordinary skill would interpret “engage” to require a direct mechanical connection. As such, the claim 1 limitation “one or more motors configured to engage with the probe…to provide rotational motion to the probe and….to provide linear motion to the probe” is a direct mechanical connection between the motors and probe, e.g. a motor drive shaft and the probe. The term “engage” by a motor is not redefined in the specification to mean anything other than its accepted term. As such, the rejection is maintained.
In efforts to advance prosecution, Applicant’s attention is directed towards the references that read on the elected embodiment:
US 20150080907 to Herrell teaches a removable transmission module that reads on the elected Species B (parallel transmission gearing, Figures 1, 2).
US 10136887 to Shelton teaches a removable transmission module that reads on the elected Species B (parallel transmission gearing, Figure 5).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA MARIE HOFFA whose telephone number is (571)270-7408. The examiner can normally be reached Monday - Friday 9:30 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Raymond can be reached at (571)270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANGELA M. HOFFA
Primary Examiner
Art Unit 3799
/Angela M Hoffa/Primary Examiner, Art Unit 3799
Prosecution Insights