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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim 14 is 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 14 recites the limitation "the instrument guide sleeve" in line 3. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, this limitation will be construed as referring to the instrument holder outlined in claim 1.
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.
Claims 1-6, 8, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura (2019/0090953).
Regarding claim 1, Nakamura discloses a positioning device (1; see at least figures 3a-3e and 6) for positioning a medical instrument relative to a patient (see the title of the publication and at least paragraphs [0033] and [0058]), wherein the positioning device has a patient fastening member (10) which is specified to fasten the positioning device to the patient (see at least paragraph [0033]), and has an instrument holder (40) which is specified to hold the medical instrument (see at least paragraph [0058]), wherein the patient fastening member has a patient holding surface for bearing on the patient characterized in that the instrument holder is connected to the patient fastening member via a rotary mechanism (20) by way of which the instrument holder is mounted in an axis orthogonal to the patient holding surface so as to be rotatable relative to the patient fastening member (see at least figures 3a-3e).
Regarding claim 2, the instrument holder is coupled to the patient fastening member via a pivoting mechanism (30) by way of which the angular position of the instrument holder is adjustable in relation to the patient holding surface (see at least paragraphs [0033] and [0058]).
Regarding claim 3, the pivoting mechanism, conjointly with the instrument holder, by way of the rotary mechanism is able to be twisted about the axis orthogonal to the patient holding surface relative to the patient fastening member (see at least paragraphs [0033] and [0058]).
Regarding claim 4, the instrument holder is coupled to the patient fastening member via a displacement mechanism (30) by way of which the instrument holder is displaceable in one or a plurality of directions in a plane parallel to the patient holding surface or in a spherically or cylindrically curved path (see figure 6 and at least paragraphs [0033] and [0058]).
Regarding claim 5, the rotary mechanism by way of the displacement mechanism is displaceable in one or a plurality of directions in the plane parallel to the patient holding surface (see at least paragraphs [0033] and [0058]).
Regarding claim 6, the pivoting mechanism by way of the displacement mechanism is displaceable in one or a plurality of directions in the plane parallel to the patient holding surface (see at least paragraphs [0033] and [0058]).
Regarding claim 8, the positioning device has an instrument advancing mechanism by way of which the instrument holder is displaceable along a holding axle of the positioning device relative to the patient fastening member, the rotary mechanism, the pivoting mechanism and/or the displacement mechanism (see figure 6 and at least paragraphs [0033] and [0058]).
Regarding claim 13, integrated in at least one component of the positioning device is a transmitter and/or receiver coil for generating and receiving fields arising during the magnetic resonance tomography (see at least paragraph [0027]).
Regarding claim 14, the patient fastening member and/or the instrument holder have/has a plurality of marker elements (223) which are/is identifiable during magnetic resonance tomography examinations and/or computer tomography examinations (see at least paragraph [0027]).
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 7 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (2019/0090953).
Regarding claim 7, Nakamura discloses the invention substantially as described above with respect to at least claim 1 and further discloses a releasable connection (see at least paragraph [0026]), but fails to disclose the connection is a bayonet connection. However, Examiner here contends that the use of bayonet connections in surgical instruments is well known, and therefore Examiner concludes it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the releasable connection of Nakamura a bayonet connection because this type of connection is common and known in the art.
Regarding claims 9-12, Nakamura discloses the invention substantially as described above with respect to at least claim 1, but fails to disclose the cable pull mechanism, control, and motors outlined in these claims. However, Examiner here contends that the use of these mechanisms to control movement and positioning of surgical instruments is well known, and therefore Examiner concludes it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used these claimed structures to control movement of the Nakamura positioning device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the attached PTO-892 for a general showing of the state of the art of medical instrument positioning systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN J SEVERSON whose telephone number is (571)272-3142. The examiner can normally be reached Monday-Friday 6:00-2:00 central.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan J. Severson/Primary Examiner, Art Unit 3771