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 Objections
Claims 8-13 are objected to because of the following informalities: Claims 8 and 11 begin the first indentation with a capital letter. These not being the first word in the claim, they should not be capitalized. Appropriate correction is required. Dependent claims 9-10 and 12-13 are objected to because of their dependency.
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: “elastic member” in claim 3 (disclosed as rubber or a spring).
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 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 11-13 are 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 11 is unclear because the claim has been drafted as an apparatus (“a processor”) and described using only method terms (“performs”). The claim does not include a standard transitional phrase (comprising, consisting essentially of, or consisting of), and no structure for the claim has been set forth. The Examiner assumes that this is a processor configured to perform the claimed function.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 11-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) calculating a ratio.
The limitation of determining the amount of use of each icon over a predetermined period of time, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. Other than reciting “a processor”, nothing in the claim precludes the step from practically being performed in the mind. Calculating a ratio is a simple mathematical concept. Therefore, as drafted, the claim covers performance of the limitation in the mind but for the recitation of a generic computer component such that it falls in the Mental Processes grouping of abstract ideas.
This judicial exception is not integrated into a practical application because the claim is limited to the processor and does not include additional features of a system. The processor in all aspects is recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception to a generic computer component. The “controlling” limitation does not include how the processor takes the ratio to control the medical manipulator. Simply controlling something based on something without describing how this is done does not constitute integrating the abstract idea into a practical application.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim is limited to the processor. Claims 1 and 8 include a bending portion, an interface, an actuator, and the relationship between the bending amounts as claimed. Claim 11 does not require such elements. While there is some similar language, Claim 11 does not require those additional elements such that the claim is directed to a generic processor configured to perform an abstract idea. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 8, and 11 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Kawai et al. (US 2004/0138530).
Regarding Claim 1, Kawai discloses:
A medical manipulator system comprising: a medical manipulator comprising
a bending portion (2) capable of being bent;
an actuator (9) configured to bend the bending portion;
a controller (10/11) comprising an interface (joystick shown in Fig. 1) to which a bending manipulation for bending the bending portion is input, and configured to detect a movement amount from an origin of the interface (see Paragraph 0072 discussing how the control device 11 is connected to the joystick to read the operation amount of the joystick), the interface being capable of moving at least in a first direction away from the origin and a second direction returning to the origin (the joystick can move around its pivot as is known in the art); and
a processor (see Paragraph 0192 indicating that the control device can include a microcomputer) communicatively connected to the controller and configured to control the actuator on the basis of the bending manipulation,
wherein the processor
calculates displacement of a bending amount of the bending portion for a reference bending amount to be taken by the bending portion when the interface is located at the origin and compares a first bending amount that is displacement of the bending amount calculated on the basis of a driving amount of the actuator with a second bending amount that is displacement of the bending amount calculated on the basis of the movement amount of the interface (see Paragraph 0072 describing how the operation amount of the joystick includes a target value R and also includes an encoder 14 for measuring the position of the motor),
calculates a ratio of the second bending amount to the movement amount of the interface so that a difference between the first bending amount and the second bending amount is eliminated (see Paragraph 0072-0076 discussing using a correction table to compensate for slack in the wire so that the operation amount of the joystick and the bend angle of the distal bending section coincide with each other), and
causes the actuator to be driven on the basis of the ratio (see Paragraph 0072 discussing causing the motor to follow the control signal without delay, and Paragraph 0073 discussing using the correction table to compensate characteristics in a predetermined range of the neutral reference position).
Regarding Claim 8, Kawai discloses:
A control method of a medical manipulator controlling a bending operation of a medical manipulator, comprising:
In displacement of a bending amount of a bending portion for a reference bending amount to be taken by the bending portion when an interface provided in a controller is located at an origin (see Paragraph 0072 describing how the operation amount of the joystick includes a target value R and also includes an encoder 14 for measuring the position of the motor), comparing a first bending amount that is displacement of the bending amount calculated on the basis of a driving amount of an actuator configured to bend the bending portion of the medical manipulator with a second bending amount that is displacement of the bending amount calculated on the basis of a movement amount of the interface from the origin (see Paragraph 0072-0076 discussing using a correction table to compensate for slack in the wire so that the operation amount of the joystick and the bend angle of the distal bending section coincide with each other); and
controlling the medical manipulator on the basis of a ratio of the second bending amount to the movement amount of the interface calculated so that a difference between the first bending amount and the second bending amount is eliminated (see Paragraph 0072 discussing causing the motor to follow the control signal without delay, and Paragraph 0073 discussing using the correction table to compensate characteristics in a predetermined range of the neutral reference position).
Regarding Claim 11, Kawai discloses:
A processor (see Paragraph 0192 indicating that the control device can include a microcomputer) for controlling a bending operation of a medical manipulator, performs:
In displacement of a bending amount of a bending portion for a reference bending amount to be taken by the bending portion when an interface provided in a controller is located at an origin, comparing a first bending amount that is displacement of the bending amount calculated on the basis of a driving amount of an actuator configured to bend the bending portion of the medical manipulator with a second bending amount that is displacement of the bending amount calculated on the basis of a movement amount of the interface from the origin (see Paragraph 0072 describing how the operation amount of the joystick includes a target value R and also includes an encoder 14 for measuring the position of the motor;
calculating a ratio of the second bending amount to the movement amount of the interface so that a difference between the first bending amount and the second bending amount is eliminated (see Paragraph 0072-0076 discussing using a correction table to compensate for slack in the wire so that the operation amount of the joystick and the bend angle of the distal bending section coincide with each other); and
controlling the medical manipulator on the basis of the ratio (see Paragraph 0072 discussing causing the motor to follow the control signal without delay, and Paragraph 0073 discussing using the correction table to compensate characteristics in a predetermined range of the neutral reference position).
Allowable Subject Matter
Claims 2-7 and 9-10 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.
The following is a statement of reasons for the indication of allowable subject matter:
The primary reason the claims are allowable over the prior art is that the prior art fails to disclose or render obvious the claimed system and method including the change in the ratio as claimed. In particular, claims 2 and 9 require changing the ratio under certain circumstances, in particular increasing or decreasing the ratio depending on the relative absolute values of the first and second bending amounts. This process is not discussed in Kawai. Without some mention of this, the Examiner does not see this as an obvious feature to be incorporated into Kawai. For at least these reasons, the claims overcome the prior art of record.
Claims 3-7 and 10 depend from claims 2 and 9, and, therefore, would also be allowable for these reasons.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY JAY NEAL whose telephone number is (313)446-4878. The examiner can normally be reached Mon-Fri 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at (571)272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY J NEAL/ Primary Examiner, Art Unit 3795