DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Invention 2, claims 3-14,16-17 in the reply filed on 10/13/2025 is acknowledged.
Claims 1-2,15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/13/2025.
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.
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.
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.
Claim(s) 3-11, 14, 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Marchese U.S 2021/0015578.
Claim 3: Marchese disclose an end-effector system 100 for a surgical, microsurgical or super-microsurgical robot arm, wherein the end-effector system at least comprises: the end-effector 100; a sterile drape 200 configured to cover the end-effector, and a surgical instrument adapter (see figures 20a,b, paragraphs 58,61) which is configured to slide onto the draped; first 130a and second movable fingers130b of the end-effector, wherein the surgical instrument adapter includes a clip (a circular clip 206) to at least one surgical instrument 102 to hold the at least one surgical instrument in a predefined orientation with respect to the end-effector, and wherein the surgical instrument adapter is configured to transmit a movement of a tip portion of the first and second movable fingers of the end-effector to the at least one surgical instrument to manipulate the at least one surgical instrument (see paragraphs 58, 60). Note that at times during the course of a surgical procedure, it may become necessary for a surgical assistant or other operating room employee to reposition the manipulator. This may be done by applying a manual force to the robotic arm and physically moving the robotic arm to the desired orientation or position. This may be a purely manual activity as with the prior art system, or it may be a power assisted activity. In either case, it would be advantages to notify the user about forces on the instrument when the user is performing a manually driven motion. Typically, to move the manipulator when it is not being actively teleoperated from the surgeon console, the user takes an action (e.g. simultaneously depresses two buttons on the manipulator) to unlock the manipulator so s/he can manually move the end effector of the manipulator to a desired position (see paragraphs 85); For example, touching in two points spaced apart could unlock the degrees of freedom to allow manipulation or manual movement of the manipulator about its joints. Swiping could change between menus or tell the machine to go to a specific state (draping, etc). Gesture interaction with the display could also be used to cause the system to place the manipulator in a state for, and/or cause activation of the manipulator's actuators to configure the manipulator in a position or orientation suitable for executing different tasks (docking an instrument, exchanging instruments, calibration, homing, storage, draping, etc, see paragraph 89). Alternatively, it would have been obvious that the above description of Marchese’s device shows the instrument adapter which is locked in place by means of a locking mechanism. Thus, claim 3 is unpatentable over Marchese.
Claims 4-6: Marchese disclose wherein the locking mechanism is configured to switch between a first, unlocked state, and a second, locked state to secure the surgical instrument adapter in place onto the first and second movable fingers of the end-effector. wherein a spring force generates from the sterile drape as a consequence of compression exerted by the locking mechanism being brought into the second, locked state, which cooperates to maintain the locking mechanism in place. wherein a spring force generates from the surgical instrument adapter as a consequence of compression exerted by the locking mechanism being brought into the second, locked state, which cooperates to maintain the locking mechanism in place (see paragraphs 85, 89).
Claims 7-9: Marchese disclose wherein wherein a spring force generates from the sterile drape as a consequence of elongation of the sterile drape 200 determined by the locking mechanism (see paragraphs 85,89) being brought into the second, locked state, which cooperates to maintain the locking mechanism in place; the surgical instrument adapter is configured to hold an additional surgical instrument. wherein the surgical instrument adapter is configured to maintain alignment between a longitudinal axis of the at least one surgical instrument and a rolling axis of the end-effector during surgery (see paragraph 49).
Claims 10-11: Marchese disclose wherein the surgical instrument adapter is configured to hold the at least one surgical instrument 102 in a position where the longitudinal axis of the at least one surgical instrument is offset by a predefined angle with respect to the rolling axis of the end-effector during surgery; wherein the sterile drape 200 includes a sealing interface (see figures 20a,b, paragraph 64) configured for connection with respect to other parts of the robot arm or with respect to the sterile drape covering the robot arm.
Claims 14, 16, 17: Marchese disclose a surgical, microsurgical or super-microsurgical robot arm including the end-effector (see paragraph 39); wherein said additional surgical instrument includes scissors (see fig. 27); wherein the sealing interface includes a circular or circumferential lip (circular lip 206).
Allowable Subject Matter
Claims 12-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/VI X NGUYEN/Primary Examiner, Art Unit 3771
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