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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 29, 2026 has been entered.
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.
Claims 1, 8, 15-16, 18-19, 20-26, 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20150080907 to Herrell.
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Regarding Claim 1, Herrell teaches a system of treating a patient, said system comprising:
a probe (100, Figure 4) sized for insertion into the patient and configured to treat the patient (endoscopic surgical tube 106,100 Fig. 1, 4 is configured with surgical instruments 150,170, 150,160, e.g. grippers 154, laser 152, Figure 8);
an instrument device manipulator (300, Figure 4) configured to couple to the probe (motor pack 300, Fig. 1, 4 with manipulator arm 30 couples to the transmission 200 with quick release latch 232, Fig. 10, par. 0043 and annotated figure above), the instrument device manipulator comprising one or more motors (motors 302, Figure 9 which are connected to the probe via the transmission, par. 0047-0049), the one or more motors comprising a first motor configured to provide rotational motion to the probe (motors 302 align with rotation shafts 224 via couplings 230,236, Figure 10, par. 0046, which impart rotational motion to the probe) and a second motor configured to provide linear motion to the probe (motors 302 align with drive screws 218 via couplings 230,236, Figure 10, par. 0046, which impart linear/translational motion to the probe);
a transmission positioned between the probe and the instrument device manipulator (transmission 200, Fig. 1, 4 selectively couples to the probe via adapter 250, par. 0055), the instrument device manipulator configured to engage the transmission (rotation shafts 224 with female couplers 230,234 as in Fig. 10, also bearings 228 that receive drive screws 218), and the transmission configured to transmit an output of the one or more motors to the probe (concentric tube manipulators 150, Fig. 4 with outer tubes 162, 172 and inner tubes 174, 164, 166 as in Fig. 5, each tube can translate axially and/or rotate as in par. 0032 and they act as output drive shafts for the tools at the distal end of the probe 100; tube carriers 210 are moved longitudinally/linearly along a rail in order to insert and retract the surgical instrument probe components 150,160,170, par. 0036-0038; specifically in par. 0042, “each tube carrier 210 is configured to impart translational movement of its associated manipulator tube via rotation of the associated drive screw 218, and to impart rotational movement of its associated manipulator tube via rotation of the associated rotation shaft 224”);
wherein the probe is configured to receive the output and is further configured to at least one or more of rotate, translate, or articulate responsive to the output (assembled as shown in Fig. 4, 10 in order to move the probe in nine degrees of freedom, par. 0042, 0044).
Regarding Claim 8, Herrell further teaches wherein the transmission is configured to provide electrical communication between the instrument device manipulator and the probe (separate ports for optics/light cabling…could also be included, par. 0057, the robot 20 can be connected via cables 312 to a robot interface PC 60, par. 0026).).
Regarding Claim 15, 18-19, Herrell further teaches wherein the transmission comprises a driving gear or driving pulley on a driving shaft (drive shaft 224) and a driven gear or driven pulley on a driven shaft (gear train 226, par. 0041), and wherein the driving shaft and the driven shaft are substantially parallel to one another (par. 0041 gear train 226 is describing a parallel arrangement, shown in Figure 7). Examiner notes that the option of drive pulley/driven pulley is not required to anticipate the claim.
Regarding Claim 16, Herrell further teaches wherein the driving gear and the driven gear comprise spur gears (shown in Figure 7, element 226 is a spur gear).
Regarding Claim 20, Herrell further teaches wherein the probe further comprises a coupling configured to releasably couple the probe to the transmission (the tube is “connectable to and removable from” the transmission, par. 0056, and may include a removable adapter 250, par. 0055, Figure 2).
Regarding Claim 21, Herrell further teaches wherein the coupling provides a locking engagement (the adapter 250 is shown with the tube docked into it and attached to the transmission, which is a locking engagement, Figure 2).
Regarding Claim 22, Herrell further teaches wherein the transmission is at least partially enclosed in a housing (it has an end plate 204 and housing 206, so it is “at least partially enclosed”, Figure 2).
Regarding Claim 23, Herrell further teaches wherein the housing comprises one or more apertures to allow at least one of one or more inputs or one or more outputs to extend therethrough to couple the transmission to the instrument device manipulator or the probe (as shown in Figure 10, couplings 230 extend from apertures in the transmission to connect to the instrument device manipulator).
Regarding Claim 24, Herrell further teaches wherein the transmission is configured to be decoupled from the instrument device manipulator (decoupled via quick connect latch going from Figure 3 to Figure 4).
Regarding Claim 25, Herrell further teaches wherein the transmission is configured to receive input from the first motor of the one or more motors of the instrument device manipulator and cause rotational motion of the probe (motors 302 align with rotation shafts 224 via couplings 230,236, Figure 10, par. 0046, which impart rotational motion to the probe).
Regarding Claim 26, Herrell further teaches wherein the first motor comprises two or more motors, and wherein the transmission is configured to receive input from the two or more motors and cause rotational motion of the probe (motors 302 align with rotation shafts 224 via couplings 230,236, Figure 10, par. 0046, which impart rotational motion to the probe).
Regarding Claim 29, Herrell further teaches wherein two motors of the two or more motors are configured to rotate in opposite directions at the same speed (the motors are capable of rotating in opposite directions at the desired speed in order to control the movement of the probe in the desired direction, par. 0038).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim is rejected under 35 U.S.C. 103 as being unpatentable over US 20150080907 to Herrell in view of US 11007024 to Lambrecht.
Regarding Claim 17, Herrell does not teach wherein the driving gear and the driven gear comprise helicoidal gears. Instead, Herrell teaches spur gears (element 226, Figure 7).
Lambrecht teaches a geared transmission for actuating a medical instrument. Within the gearing, spur gears are selected for lower torque needs (220, Figure 4A) while helicoidal gears are selected for higher torque needs (420, Figure 4A, col. 6, lines 48-52).
As such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize helicoidal gears in the system of Herrell especially when torque needs are higher, such as controlling grip mechanism as in Lambrehct (col. 6, lines 48-67). Lambrecht also teaches the operational equivalence of gearings (spur, helicoidal, bevel gears) and another motivation to choose helicoidal is less slippage (col. 7, lines 6-34).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over US 20150080907 to Herrell in view of US 20200405403 to Shelton.
Regarding Claim 27, Herrell does not teach wherein the transmission further comprises a clutch configured to selectively engage output from the two or more motors to the probe.
Shelton teaches an instrument driving device wherein a clutch mechanism is utilized in order to selectively engage and disengage the number of drive outputs desired to drive the probe (end effector) (par. 0938-0939, Figures 134-135).
Therefore one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide clutches with the motors of Herrell in order to provide selective engagement/disengagement between the motors and the drive outputs to achieve the desired drive characteristics for the probe.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over US 20150080907 to Herrell in view of US 20140257333 to Blumenkranz.
Regarding Claim 28, Herrell further teaches wherein the motors are capable of rotating in opposite directions at the desired speed in order to control the movement of the probe in the desired direction (par. 0038). Herrell does not teach wherein the transmission further comprises a torsional shock spring configured to absorb at least one torsional stress as the probe is caused to change rotational direction.
Blumenkranz teaches a robotic surgical instrument with transmission comprising a torsional shock spring configured to absorb at least one torsional stress as the transmission changes rotational direction of a controlled surgical instrument in order to prevent any slack (par. 0098, Figure 13a, 13b torsion spring 762, 764).
As such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide torsional springs in the system of Herrell in order to prevent slack when making changes in direction, as taught by Blumenkranz.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over US 20150080907 to Herrell in view of US 20100036245 to Yu.
Regarding Claim 30, Herrell does not teach one or more force sensors coupled with the probe and one or more computing devices configured to detect compression of a tissue of the patient based on signals form the one or more force sensors.
Similar to Herrell and Applicant's field of invention, Yu teaches an elongated surgical
instrument held by a motorized robot arm (Figure 3, par. 0025). Yu further teaches wherein one or more force sensors are coupled with the probe (force sensors 233, 197, par. 0118) and one or more computing devices are configured to detect compression of a tissue of the patient with the probe (detection of compression force/torques and application of a closed-loop automatic control, par. 0118; "insertion force" and "transverse forces and torques" are considered to be compression forces exerted by the tissues in response to the probe insertion).
One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the force sensors of Yu on the probe of Shelton in order to provide measurement of insertion forces, for improved closed-loop control of the device as taught by Yu (par. 0118).
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.
Claims 1, 8, 15-30 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11877818. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims are narrower in scope than the instant claims and therefore necessarily anticipate the claimed invention. In particular, the patent claims 14-18 specifically anticipate the parallel gearing arrangement of the elected species and patent claim 1 is generic.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 8, 15-30 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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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ANGELA M. HOFFA
Primary Examiner
Art Unit 3799
/Angela M Hoffa/Primary Examiner, Art Unit 3799
Prosecution Insights