FIRST NON-FINAL REJECTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 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: the void is configured and sized to receive surgical or non-surgical instrumentation in claim 9, cantilever beams are configured to be mechanically grounded to an instrument housing in claim 23, and the electrical circuit is configured and disposed to measure and transmit an electrical signal that is proportional to a force on at least one of the first surface and the second surface in claim 30.
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 Rejections - 35 USC § 112
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.
Claim 23 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 23 describes “cantilever beams are configured to be mechanically grounded to an instrument housing”, however the disclosure does not clearly describes how the cantilever beams are mechanically ground to an instrument housing. The disclosure is silent by way of descriptions, examples, or drawings as to what element or elements mechanically ground the cantilever beams to an instrument housing.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-6, 8-31, and 33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. U.S. Patent Application Publication 2004/0045372.
With respect to claims 1, 6, 11, 28, and 30, Liu teaches a substrate that forms a three-dimensional, 3D, body disposed about a central z-axis of an r, θ, z-cylindrical coordinate system (monolithic mounting part 30, figure 6), the 3D body having a first surface, an second surface, and a sidewall disposed parallel to the z-axis disposed between the first and second surfaces (interpreted as the two faces of the monolithic mounting part 30 and the side of the part that is between the faces, figure 6), wherein the sidewall at least partially encloses a central void (port 38) in the 3D body that extends from and through the first surface to and through the second surface (figure 6); an electrical circuit disposed on either one of the first surface or the second surface, the electrical circuit comprising at least one strain gauge, and a plurality of electrical terminals electrically connected to the at least one strain gauge (strain gauges are mounted on the flat surfaces of the second portions 32 as well as the connecting webs 34 and the strain gauges have solder pads for electrical connections, paragraphs 54 and 64, figure 6); wherein the sidewall comprises four strain focusing features (ports 39, figure 6); wherein the at least one strain gauge is disposed proximate to the at least one strain focusing feature (strain gauges are mounted on the flat surfaces of the second portions 32 as well as the connecting webs 34, figure 6), and wherein: the electrical circuit is configured and disposed to measure and transmit an electrical signal that is proportional to a force on at least one of the first surface and the second surface (paragraph 54).
With respect to claims 2 and 10, Liu teaches wherein: the at least one strain gauge comprises a plurality of strain gauges disposed and configured to resolve forces along three axes of an orthogonal x-y-z coordinate system (strain gauges are mounted on the flat surfaces of the second portions 32, therefore there is at least four strain gauges, figure 6).
With respect to claim 3, Liu teaches wherein: the plurality of electrical terminals comprises at least two input terminals and at least two output terminals (interpreted as the connections 52 to solder pads of the strain gauges 28, figure 10a).
With respect to claim 4, Liu teaches wherein: the electrical circuit forms at least one of: a quarter Wheatstone bridge; a half Wheatstone bridge; or, a full Wheatstone bridge (paragraphs 59-60).
With respect to claim 5, Liu teaches wherein: the first surface, the second surface, or both the first surface and the second surface comprises a planar surface disposed perpendicular to the central z-axis of the 3D body (figure 6).
With respect to claim 8, Liu teaches wherein: the void comprises a plurality of side channels in the 3D body (interpreted as the “channels” in the part 30 where the strain relief portions 33 are located, figure 6).
With respect to claim 9, Liu teaches wherein: the void is configured and sized to receive surgical or non-surgical instrumentation (interpreted as the void 38).
With respect to claims 12 and 13, Liu teaches wherein: the sidewall comprises circumferentially alternating regions of a first sidewall portion and a second sidewall portion, the first sidewall portion being thicker than the second sidewall portion in the radial direction relative to the z-axis (interpreted as the “channels” in the part 30 where the strain relief portions 33 are located and the thicker areas where the second portions 32 are located, figure 6 ), wherein: respective ones of the at least one strain focusing feature are disposed on a corresponding one of the first sidewall portion (ports 39 are located adjacent the second potions 32, figure 6).
With respect to claim 14, Liu teaches wherein: the sidewall comprises four of the first sidewall portion, and four of the second sidewall portion (figure 6).
With respect to claims 15-17, Liu teaches wherein: the at least one strain focusing feature comprises at least one through-cut in the sidewall that forms a cantilever beam that may deflect perpendicular to the z-axis (interpreted as the ports 39 that are holes in the side of the part 30 as part of the connecting webs 34 and second portions 32, figure 6).
With respect to claims 18 and 20, Liu teaches wherein: each one of the plurality of electrical terminals is electrically connected to the electrical circuit in a low strain area of the first surface or the second surface of the 3D body and the low strain area is proximate a midway point between the proximal end and the distal end of the cantilever beam (strain gauges are mounted on the flat surfaces of the second portions 32 as well as the connecting webs 34, figure 6).
With respect to claim 19, Liu teaches wherein: each cantilever beam of a corresponding one of the at least one strain focusing feature has a fixed proximal end and a movable distal end (interpreted as ports 39 being formed as part of the connecting webs 34 and second portions 32 and having fixed portions and being movable, figure 6).
With respect to claim 21, Liu teaches wherein: adjacently disposed ones of the cantilever beams around a circumference of the sidewall have either their proximal ends adjacent to each other or their distal ends adjacent to each other (the interpreted beams of the part 30 are adjacent each other, figure 6).
With respect to claim 22, Liu teaches wherein: the force sensor comprises a double bending force sensor wherein adjacently disposed ones of the cantilever beams having their proximal ends disposed adjacent to each other form back-to-back cantilever beams to form the double bending force sensor (the interpreted beams of the part 30 are adjacent each other and forming a double bending force sensor, figure 6).
With respect to claim 23, Liu teaches wherein: the second sidewall portion between neighboring distal ends of adjacently disposed cantilever beams are configured to be mechanically grounded to an instrument housing (interpreted as the part 30 having portions that are configured to be connected/grounded to a housing, figure 6).
With respect to claims 24 and 25, Liu teaches wherein: each one of the at least one strain gauge is disposed in a high strain area of the first surface or the second surface of the 3D body and the high strain area comprises an area proximate at least one of the proximal and the distal end of a corresponding cantilever beam (strain gauges are mounted on the flat surfaces of the second portions 32 as well as the connecting webs 34, figure 6).
With respect to claim 26, Liu teaches wherein: the at least one through-cut in the sidewall forms a flexible bridge in the sidewall, the flexible bridge having two fixed ends that are part of the sidewall (interpreted as the ports 39 making the part 30 flexible around the second portions 32 and being fixed on the ends, figure 6).
With respect to claim 27, Liu teaches wherein: the at least one strain gauge comprises eight strain gauges (there are two strain gauges on each second portion, paragraph 4).
With respect to claim 29, Liu teaches wherein: the at least one strain focusing feature comprises one strain focusing feature for every two adjacently disposed ones of the at least one strain gauge (ports 39 adjacent the second portions 32, figure 2).
With respect to claim 31, Liu teaches wherein: the electrical circuit is configured and disposed such that axial loads in the z-direction are detectable, and non-axial loads are cancelled out (interpreted as the position of the strain gauges on the second portions 32 and connecting webs 34, figure 6).
With respect to claim 33, Liu teaches wherein: the electrical circuit is protected by a moisture resistant seal having structure such that (interpreted as the sensor housing 58 that seals the part, figure 11): in a first instance prior to exposure of the force sensor to an autoclave cycle, the electrical circuit is productive of a first output voltage on output terminals of the plurality of electrical terminals in response to a first input voltage on input terminals of the plurality of electrical terminals; and in a second instance subsequent to exposure of the force sensor to at least 10 autoclave cycles, the electrical circuit is productive of a second output voltage on the output terminals in response to a second input voltage on the input terminals, the second input voltage being equal to the first input voltage, and the second output voltage being equal to or greater than 0.85 times the first output voltage and equal to or less than 1.15 times the first output voltage, alternatively the second output voltage being equal to or greater than 0.95 times the first output voltage and equal to or less than 1.05 times the first output voltage (the claim language after “first instance” describes a function of the claimed moisture resistant seal before and after an autoclave cycle which is a process, thereby the claimed apparatus may be interpreted as not having to go through said process because "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, MPEP 2114 II).
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 (i.e., changing from AIA to pre-AIA ) 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 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(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. U.S. Patent Application Publication 2004/0045372 in view of Govari U.S. Patent Application Publication 2014/0024970.
With respect to claim 7, Liu teaches the claimed invention except wherein: the void comprises a plurality of through holes in the 3D body.
Govari teaches catheter with a strain gauge sensor wherein a pressure sensing assembly 140 installed in distal end 24 of insertion tube 26, temperature-compensating gauges 142 are assumed to be mounted on a block 144, which has a thermal mass that is typically approximately the same as that of sensor tube 42 and block 144 comprises one or more apertures 146, which may be used to allow passage of elements such as cabling through sensor tube 42 (paragraphs 71-72).
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the sensor part of Liu with the plurality of through holes in the sensor block as taught by Govari in order to provide more apertures for cabling and connections.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. U.S. Patent Application Publication 2004/0045372 in view of Matich et al. U.S. Patent Application Publication 2020/0033211.
With respect to claim 32, Liu teaches the claimed invention except wherein: the at least one strain focusing feature in the side wall of the 3D body comprises a cantilever profile that undulates to form a cantilever beam having a fixed proximal end portion, a movable distal end portion, and an intermediate portion disposed between the proximal and distal end portions, wherein the intermediate portion is narrower in width than either the proximal end portion or the distal end portion, as observed in a side view of the 3D body.
Matich teaches a sensor arrangement for force and torque measurement where a first contact structure 110 and second contact structure having a first flexure joint 111 and thinned section 332 between (figures 4-6), and the first flexure joint 111 and the second flexure joint 121 are formed by thinned sections, so that relative bending is possible between the first contact structure 110 and the first sensor element 131 and between the second contact structure 120 and the first sensor element 131 at these sections.
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the sensor body Liu with the arrangement of Matich in order to increase accuracy (paragraph 14).
Conclusion
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FREDDIE KIRKLAND III
Primary Examiner
Art Unit 2855
/Freddie Kirkland III/Primary Examiner, Art Unit 2855 8/17/2026
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