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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/22/2025 has been entered.
Response to Arguments
Applicant's arguments filed 7/25/25 have been fully considered but they are not persuasive. Regarding Ortmaier, applicant argues “the projector 18 is coupled to the robot arm A. The projector 18 is not coupled to a mounting portion of a teleoperational assembly”. The examiner respectfully disagrees. The examiner considers the flange (F, Fig. 1) to be the mounting portion, specifically the flange is interpreted as a mounting portion coupled to the first teleoperational arm, and therefore the visual projection (18) device is coupled to the mounting portion (F). Additionally, the primary reference (Kostrzewski) discloses a visual projection device (102) coupled to a mounting portion (forearm 114 or fastening device; Par 0071) which is in turn coupled to the robot arm (tool holder 106 or arm 104). Just because the prior art considers the flange (F) in Ortmaier and/or the forearm (114) or fastening device in Kostrzewski to be included as part of the robotic arm, as a whole, does not necessarily mean that the examiner has to interpret the robotic arm in the same manner, as the BRI of the claims does not preclude such an interpretation. Stated differently, the examiner considers the flange (F) of Ortmaier to be a separate element coupled to the end of the robotic arm. Similarly, the examiner considers the robotic arm to be the tool holding portion (106) and the forearm (114) to be the mounting portion coupled to the arm, or in a different interpretation the fastening apparatus to be a mounting portion coupled to arm (104). Any of these interpretations read on the BRI of the amended claims. Furthermore, applicant’s arguments relate solely to Ortmaier and do not consider what is taught by the primary reference Kostrzewski. MPEP 2145 states “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” and “One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.”
Alternatively, if applicant disagrees with the examiner’s interpretation related to the flange and/or forearm being interpreted as the mounting portion, then such a modification would be obvious as a mere rearrangement of parts or separation of parts; MPEP 2144.04. For example, it would be obvious to configure the device of Kostrzewski and Ortmaier to 1. Locate the visual projection device on a different part of the robot that is not the arm, e.g. the base or 2. To separate the flange or forearm from the robotic arm, so that it’s considered a separate/different element from the robotic arm. It is emphasized that applicant has no criticality, unexpected result or functional significance to the location of the visual projection device.
To further support/emphasize the examiner’s position, a new prior art reference (US 2008/0033410 to Rastegar) has been brought in to explicitly teach a mounting portion (extension structure 124; Figs. 3-4); see new 103 below.
It is also noted that applicant’s new terminology of a “mounting portion” creates new objections and 112 rejections, based on the lack of explanation in the specification; see below.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “mounting portion”.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “mounting portion” as recited in claims 48, 54 and 58, in particular the specific configurations and cooperations with the other claimed elements, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 48-58 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.
[Claim 48] First and foremost the term “mounting portion” is found nowhere in applicant’s specification. Therefore, the examiner must look to the drawings and other details in the specification for context as to what is meant by the newly claimed “mounting portion”. From Fig. 1B and Par 0039 it seems clear that the visual projection device (projector 60) is mounted to the orienting platform (53). So it stands to reason that the disclosed orientating platform is the claimed “mounting portion”, but this interpretation falls apart when considering dependent claims 54 and 58 which require both an orientating platform and a mounting portion, which is not supported at all by the specification. Therefore, the claimed “mounting portion” is broader than what applicant has possession of. If it is applicant’s intent that the mounting portion IS the orienting platform, then the claims should reflect this clearly, e.g. “a teleoperational assembly including an orientating platform and a first teleoperational arm coupled to the orienting platform; a visual projection device coupled to the orienting platform of the teleoperational assembly”
[Claims 54 and 58] The claim language in these claims seems to require two elements, a mounting portion and an orientating platform, however this is not supported by the specification; see discussion above.
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 48-58 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 48] MPEP 2173.03 states “A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty.”. Therefore, the breadth/scope of the newly claimed “mounting portion” is unclear; see explanation above in relation to the lack of explanation in the specification, as well as the explanation below related specifically to claims 54 and 58.
[Claims 54 and 58] As discussed above, it’s unclear what the distinction is between the mounting portion and the orienting platform, as the claims seemingly require two different elements or at least one broader/bigger element (mounting portion) that includes/comprises a specific/smaller element (orienting platform). Because the specification fails to disclose a mounting portion, it’s unclear if these are two different elements and if they are what is the distinction.
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.
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.
Claims 48-54 and 56-58 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0081753 to Kostrzewski in view of US 2010/0275719 to Ortmaier or, in the alternative, as being unpatentable over Kostrzewski and Ortmaier in view of US 2008/0033410 to Rastegar et al.
[Claim 48] Kostrzewski discloses a teleoperational system (Fig. 1) in a surgical environment comprising:
a teleoperational assembly (100) including a mounting portion (“fastening apparatus”; Par 0071. In a different interpretation, the forearm 114 is interpreted as the mounting portion) and a first teleoperational arm (arm 104 or tool holder 106) coupled to the mounting portion (the fastening device is clearly coupled to the arm and/or the tool holder is clearly coupled to the forearm);
a visual projection device (input device 102; disclosed as a display; at least Pars 0069 and 0079-080) coupled to the mounting portion of the teleoperational assembly (Par 0071. If applicant disagrees with this interpretation, see alternative 103 rejections below);
a sensor (tracking detector 208; Pars 0079-80); and
one or more processors (Par 0010) configured to:
receive first sensor information from the sensor (position/location of the patient and different components of the surgical robot; Pars 0079-80);
determine a first visual aid based upon the first sensor information (“a projected trajectory and/or proposed trajectory”);
operate the visual projection device to project the first visual aid into the surgical environment (“based on the patient and robot position, the display screen displays a projected trajectory and/or a proposed trajectory for the robotic arm of surgical robot 202 from its current location to a patient operation site”); and
operate the visual projection device to change the first visual aid to a second visual aid based on second sensor information received from the sensor (“By continuously monitoring the patient and robotic arm positions, using tracking detector 208, the surgical system can calculate updated trajectories and visually display these trajectories on display screen 210 to inform and guide surgeons and/or technicians in the operating room using the surgical robot.” This updated trajectory is a change from the first/original trajectory to a new trajectory, i.e. the display changes the first visual aid to a second visual aid based on the sensor information).
Kostrzewski fails to explicitly teach “operate the visual projection device to project the first visual aid onto an object in the surgical environment”. However, in the same field of endeavor, Ortmaier discloses a surgical robot that projects an image onto a patient undergoing a surgical procedure, including information normally displayed on a monitor/display during surgery (Abstract; Pars 0002-4 and 0036; Fig. 1-2). Therefore, it would have been obvious to one of ordinary skill in the art to modify the robotic system of Kostrzewski to additionally or alternatively project the same information displayed on the screen, e.g. the visual aid/projected trajectory, onto an object/patient in the surgical environment, as taught by Ortmaier, in order to allow for easier acquisition of visual information during robotic surgery.
If it is determined that Kostrzewski fails to explicitly teach a visual projection device coupled to the mounting portion, as claimed. The examiner contends that Ortmaier teaches such a feature. Specifically, the flange (F, Fig. 1) is considered a mounting portion coupled to a first teleoperation arm (A) and the visual projection device (18) is coupled to the flange (Fig. 1; Par 0032). Therefore, it would have been obvious to one of ordinary skill in the art to modify the device of Kostrzewski to include a mounting portion/flange, as taught by Ortmaier, in order to removable attach the visual projection device, as this is a known configuration for similar surgical robotic systems.
If it is determined that neither Kostrzewski or Ortmaier explicitly teach a visual projection device coupled to the mounting portion, as claimed, the examiner takes the position that such a design/configuration is obvious as a mere rearrangement of parts or separation of parts; MPEP 2144.04. For example, it would be obvious to configure the device of Kostrzewski and Ortmaier to 1. Locate the visual projection device on a different part of the robot that is not the arm, e.g. the base or orienting platform (see claim 54 below for more details) 2. To separate the flange or forearm from the robotic arm, so that it’s considered a separate/different element from the robotic arm. It is emphasized that applicant has no criticality, unexpected result or functional significance to the location of the visual projection device. Therefore, it would have been obvious to one of ordinary skill in the art to either move the visual projection device to a different portion of the robot, i.e. not the arm, or to separate the flange of Ortmaier OR the forearm of Kostrzewski from the robotic arm, making it a separate element, as these are obvious design/engineering considerations that amount to a mere rearrangement of part and/or a mere separation of parts. To emphasize/support this position of obviousness, Rastegar discloses a similar robotic surgical system (Figs. 3-4) including a visual projection device (camera and projector unit 121) coupled to a mounting portion (extension structure 124) which is coupled to the robotic arm (end-effector 122); Par 0083. Therefore, it would have been obvious to modify the device taught by Kostrzewski and Ortmaier to include a mounting portion/extension structure, as taught by Rastegar, in order to provide a sufficient distance and field of view for the visual projection device (Par 0083 of Rastegar)
[Claim 49] Kostrzewski discloses “The tracking detector may be a camera, a video camera, an infrared detector, field generator and sensors for electro-magnetic tracking or any other motion detecting apparatus” (Par 0080). The examiner interprets any one of these sensors as a depth sensor, as they are capable of detecting depth/distance.
[Claims 50-52] As discussed above, in relation to claim 49, the disclosed tracking detectors, e.g. a video camera, are capable of indicating a presence or absence of any object/obstruction, e.g. operating table, and providing a direction indicator, i.e. updated trajectory, based on the presence/absence of such an obstruction. MPEP 2114 states… "[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. If applicant disagrees with the examiner’s position, see alternative 103 below.
[Claim 53] There is no indication in that the visual projection device, i.e. display, changes the size or orientation of any of the visual aids/images as the display is physically moved. At the very least the display device is capable of performing the claimed function; MPEP 2114.
[Claim 54] Kostrzewski discloses an orienting platform (either of the elements denoted by the arrow in the annotated figure 1 below). Similarly, the base (S, Fig. 1) of Ortmaier could be considered the orienting platform. Additionally, the joint that connects the extension structure (124) to the visual projection device (121), as clearly seen in Fig. 4 of Rastegar could also be considered the orienting platform. Par 0068 of Kostrzewski states “if the robot is guiding surgical instruments, the user interface may be used for selecting trajectories along which to guide the instruments, planning trajectories”. The examiner takes the position that the selected trajectories of the robotic includes an orienting platform orientation mode and the second visual aid, i.e. updated trajectories, is an orienting platform orientation indicator that accounts for “the position of the patient and different components of the surgical robot 202” (including the orienting platform), and then “displays, for example, real time patient data and/or real time surgical robot trajectories”
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[Claim 56] As discussed above, the sensor detects the position/location of the patient and different components of the surgical robot to change the displayed trajectory. Clearly, the updated trajectory will change if/when the position/location of the patient/robot is detected, i.e. real time surgical robot trajectories (Pars 0079-80). This is considered operating the visual projection device based on a change in condition, i.e. change in position/location of the patient/robot.
[Claim 57] It is noted that this functional limitation is not tied to the processor, nor does it require any sort of automated response. All the claim requires is that the visual projection device is capable of directing the first visual aid/image toward the robotic arm in any situation/scenario, including responsive to the first second information indicating information about the first teleoperational arm. Kostrzewski discloses all of the necessary structure to be capable of performing the claimed function; MPEP 2114. For example, Kostrzewski discloses that the display can be releasably connected to any portion of the robotic surgical system (Pars 0086-88). Additionally or alternatively, the display (210) is directed at the surgical site/patient (204) and therefore directed at the robotic arm (202) when the robotic arm is performing the surgery/operation (moved via mobile cart; Par 0074).
[Claim 58] See explanation related to claim 54, above. The image/visual aid on the display screen (equivalent to 102) remains unchanged, at least in relation to the display device, when the orienting platform is rotated. Stated differently, if/when the orienting platform is rotated, the image on the screen/display does not change. It is noted that “when the orienting platform is rotated” is a contingent limitation. MPEP 2111.04 states “The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur”. Therefore, the prior art does not have to teach a platform that rotates, instead the prior art needs to teach a visual projection device where an image/first visual aid remains unchanged if/when the table rotates.
Claims 50-52 and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Kostrzewski and Ortmaier OR Kostrzewski and Ortmaier and Rastegar as applied to claim 48 above, and further in view of US 2016/0242585 to Moctezuma de la Barrera.
[Claims 50-52] Kostrzewski, Ortmaier and Rastegar are discussed above, but fail to explicitly teach changing the visual aid/image (from a first trajectory to a second/updated trajectory) based on the presence or absence of an obstacle. It is noted that the claims do not require an operating table, only sensor that can provide information that indicates the presence of one. In the same field of endeavor, Moctezuma de la Barrera discloses a surgical robot with a collision detector (120) to avoid physical objects in a surgical environment and providing a visual projection device/display (feedback generator 122), including arrows/directions as to how to avoid the collision (Pars 0080-89). It would have been obvious to one of ordinary skill in the art to modify the device of Kostrzewski, Ortmaier and Rastegar to include the collision detector of Moctezuma de la Barrera in order to avoid collisions between the surgical robot and physical objects within the surgical environment, as taught by Moctezuma de la Barrera.
[Claim 55] Kostrzewski, Ortmaier and Rastegar are discussed above, but fail to explicitly teach the second sensor information indicates a system error and wherein the second visual aid includes a warning or instructions for correcting the system error. However, in the same field of endeavor, Moctezuma de la Barrera discloses a surgical robot that includes detecting a system error and displaying a warning (Pars 0066-67). Therefore, it would have been obvious to one of ordinary skill in the art to modify the device of Kostrzewski, Ortmaier and Rastegar to include error detection and display of a warning (based on the error detection), as taught by Moctezuma de la Barrera, as a known way to “ensure accurate movement of the surgical tool to the desired positions and/or orientation”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lynsey C Eiseman whose telephone number is (571)270-7035. The examiner can normally be reached Monday-Thursday and alternating Fridays 7 to 4 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at 571-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796