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 .
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.
Joint Inventors
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.
Response to Arguments/Remarks/Amendment
The examiner received remarks/arguments and amendments to the claims dated 13 December 2025 in response to the non-final rejection office action dated 12 September 2025 (hereinafter the document of concern when referencing “outstanding objections”, “outstanding rejections”, “prior office action”, and the like). No new matter was entered by way of amendment.
Regarding outstanding claim interpretation, the examiner acknowledges the applicant’s statement and will continue to interpret the claims in the manner discussed unless amendment or particular persuasive argument is presented which alters the examiner’s interpretation. The claim interpretation persists but will not be repeated in this office action for brevity.
Regarding outstanding claim objections, the examiner notes that claim 12 has been amended to properly depend upon claim 11. Therefore, all outstanding claim objections are withdrawn.
Regarding outstanding claim rejections under 35 U.S.C. 112(b), the examiner notes that the ambiguous/indefinite terminology has been removed by way of amendment. Therefore, all outstanding 35 U.S.C. 112(b) rejections are withdrawn. However, new 35 U.S.C. 112(b) rejections, necessitated by amendment, are presented below.
Regarding outstanding claim rejections under 35 U.S.C. 101, the examiner acknowledges the arguments of the applicant but notes that arguments are moot as applicant has amended the claim language to incorporate an explicit control step. The independent claims at least amount to significantly more than the judicial exception; therefore, all outstanding 35 U.S.C. 101 rejections are withdrawn.
Regarding outstanding prior art (35 U.S.C. 102) rejections, the examiner notes that applicant argues that the primary reference of note does not disclose “accessing…a static 3D image of the patient…”, “registering…”, “navigating…”, and “adjusting…”. However, the examiner respectfully disagrees. The examiner notes that arguments are moot as applicant has amended the aforementioned language, however the examiner presents new grounds of rejection, necessitated by claim amendment, below which outlines where exactly the prior art of note continues to read upon each limitation presented. Therefore, all outstanding 35 U.S.C. 102 rejections are withdrawn in favor of new prior art rejections, necessitated by amendment.
Status of Claims
The most recent revision of the claim set is dated 13 December 2025. Claims 5-6 and 15-16 are cancelled. Claims 1 and 11 are independent claims. Claims 1-4, 7-14, and 17-20 are pending and rejected as further discussed below.
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 1 and 11 (and all pending dependent claims, by dependency) 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.
Particularly, the language "the threshold related to a change in a path to the target or a change in a position of the target to change." in claims 1 and 11 is a phrase that lacks clarity to the point of indefiniteness. First, only one threshold was previously discussed in the claims at this point (so reference to this threshold as “the threshold related to…” lacks antecedent basis) regarding the change in the position of the patient in the preceding limitation. Thus, the examiner is unsure if this is supposed to be another threshold. Additionally, the ending statement of "or a change in a position of the target to change." appears to either be missing further content (to change what?) or a typographical error of inclusion of additional verbiage. In any case, the examiner is unsure of what exactly is claimed. Since "related to" is used prior to the confusing terminology, the examiner will interpret this language broadly.
Therefore, the examiner notes that this phrase is indefinite and fails to particularly point out and distinctly claim the invention of the instant application. Consistent with USPTO examination practices, for purposes of compact prosecution, the claim limitations will be treated as best understood by the Examiner, which according to broadest reasonable interpretation (BRI), would mean that the examiner could follow any one or more of the interpretations discussed above.
Thus, claims 1 and 11 are rejected under 35 U.S.C. 112(b) and all claims which depend upon them are rejected due to dependency (as none of the dependent claims cure the deficiency). Therefore, claims 1-4, 7-14, and 17-20 are rejected.
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)(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 1-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shmayahu et al. (US 2022/0323158 A1; filed 08 Mar 2022 claiming the benefit of provisional application 63/172,198 filed 08 Apr 2021, hereinafter Shmayahu).
Regarding independent claims 1 (method) and 11 (system): Shmayahu discloses A method, comprising: (per claim 1) (Paragraph [0100] and Figure [4], Shmayahu discloses a method) / A system, comprising: one or more processors coupled to a non-transitory memory, the one or more processors configured to: (per claim 11) (Paragraph [0073, 0100, 0113] and Figure [1, 4], Shmayahu discloses a system used to carry out a method, the system comprising a processor and memory)
accessing, by one or more processors coupled to memory, a real-time three-dimensional (3D) point cloud corresponding to a surgical environment and a patient, the real-time 3D point cloud having a frame of reference; (per claim 1) / access a real-time three-dimensional (3D) point cloud corresponding to a surgical environment and a patient, the real-time 3D point cloud having a frame of reference; (per claim 11) (Paragraph [0007-0009, 0077, 0079-0080, 0087, 0093, 0099, 0117-0119] and Figure [4], Shmayahu discloses accessing a 3D image containing relative position data of an environment such as within the operating room containing the patient. The image containing the relative positional data may be considered a frame of reference; alternatively, mere determination of relative positions between the objects constitutes a frame of reference (referencing one object to another). Regarding a “3D point cloud”, the examiner notes that a 3D camera is used (Paragraph [0093]) to gather information regarding the position of markers in 3D space (Paragraph [00117, 0119]. As 3D data indicates the position of a plurality of points (markers) in 3D space, this is a point cloud. Finally, regarding “real-time”, the disclosure may be performed in continuously and in real-time per paragraph [0080, 0118]; thus, future reference to “real-time” in the claim tree will fall under this note)
accessing, by the one or more processors, a static 3D image of the patient, the static 3D image of the patient including one or more targets; (per claim 1) / access a static 3D image of the patient, the static 3D image of the patient including one or more targets; (per claim 11) (Paragraph [0115-0118] and Figure [4], Shmayahu discloses obtaining still (static) images that include the patient and tracking markers and flexible material (targets). The flexible material (as one example and not intended to be the only example) is used to monitor a pose of soft tissue (a surgical site “target”))
registering, by the one or more processors, the static 3D image of the patient to a portion of the real-time 3D point cloud representing the patient; (per claim 1) / register the static 3D image of the patient to a portion of the real-time 3D point cloud representing the patient; (per claim 11) (Paragraph [0108, 0115-0118], Shmayahu discloses registering tracking markers to the images obtained, markers and material representing the patient)
determining, by the one or more processors, a position of a surgical robot within the frame of reference of the real-time 3D point cloud; (per claim 1) / determine a position of a surgical robot within the frame of reference of the real-time 3D point cloud; (per claim 11) (Paragraph [0087, 0093, 0096-0098, 0099, 0116] and Figure [4], Shmayahu discloses using the navigation system and imaging systems to determine positions of the robot and objects, wherein the arm is disclosed as a non-patient object)
detecting, by the one or more processors, a change in a position of the patient based on a corresponding change in position of one or more points in the real-time 3D point cloud; (per claim 1) / detect a change in a position of the patient based on a corresponding change in position of one or more points in the real-time 3D point cloud; (per claim 11) (Paragraph [0119] and Figure [4], Shmayahu discloses detecting a change in position of the patient, at the very least of the soft tissue of the patient (which is still the patient) using the markers (points))
generating, by the one or more processors, responsive to detecting the change in the position of the patient, instructions to modify the position of the surgical robot based on the change in position of the one or more points; and (per claim 1) / generate, responsive to detecting the change in the position of the patient, instructions to modify the position of the surgical robot based on the change in position of the one or more points; and (per claim 11) (Paragraph [0089, 0108, 0119-0120] and Figure [4], Shmayahu discloses that upon detecting that the position of the markers deviates beyond a threshold, that the navigation plans of the arm are updated)
navigating, by the one or more processors, the surgical robot along a predetermined pathway in the frame of reference to access a target of the one or more targets, wherein navigating the surgical robot further comprises: (per claim 1) / navigate the surgical robot along a predetermined pathway in the frame of reference to access a target of the one or more targets, wherein to navigate the surgical robot, the one or more processors are further configured to: (per claim 11) (The examiner notes that “to access a target…” is interpreted as an intended use/end result. Further, “to access” is broad and may include any form of interaction/proximity/action. Paragraph [0099, 0108, 0115, 0120] and Figure [4], Shmayahu discloses that the robot navigates along a surgical plan/trajectory, the “to help ensure that a navigation and/or surgical plan is followed” reading upon an intended use of accessing a target (as the surgical plan includes interaction with the “target” in the case of the target being soft tissue, for instance))
adjusting, by the one or more processors, a position of the surgical robot according to a predetermined trajectory in the frame of reference, (per claim 1) / adjust a position of the surgical robot according to a predetermined trajectory in a frame of reference; (per claim 11) (Paragraph [0099, 0108, 0120] and Figure [4], Shmayahu discloses that the robot navigates along a surgical plan/trajectory)
periodically determining, by the one or more processors, whether the change in the position of the patient satisfies a threshold; and (per claim 1) / periodically determine whether the change in the position of the patient satisfies a threshold; and (per claim 11) (Paragraph [0089, 0094, 0099, 0108, 0120] and Figure [4], Shmayahu discloses continuous/periodic processing of image data and compares a second frame to a first frame to determine if a threshold distance deviation of the patient is met)
adjusting, by the one or more processors, the position of the surgical robot according to the predetermined trajectory and the change in the position of the patient responsive to determining that the change in the position of the patient satisfies the threshold related to a change in a path to the target or a change in a position of the target to change. (per claim 1) / adjust the position of the surgical robot according to the predetermined trajectory and the change in the position of the patient responsive to determining that the change in the position of the patient satisfies the threshold related to a change in a path to the target or a change in a position of the target to change. (per claim 11) (Paragraph [0089, 0094, 0099, 0108, 0120] and Figure [4], Shmayahu discloses adjusting the surgical plan/navigation/trajectory when the change in position exceeds a predetermined threshold (which is “related to” a change in position of the target))
Regarding claims 2 and 12: Shmayahu discloses parent claims 1 and 11, respectively. Shmayahu further discloses wherein determining the position of the surgical robot within the frame of reference further comprises calibrating, by the one or more processors, the surgical robot using a calibration technique. (per claim 2) / wherein the one or more processors are further configured to determine the position of the surgical robot within the frame of reference by performing operations comprising calibrating the surgical robot using a calibration technique. (per claim 12) (Paragraph [0087, 0097-0098, 0117] and Figure [4], Shmayahu discloses determining an initial position of the objects, the objects including the robot. Determining of an initial position is considered a form of calibration. Alternatively, using the sensors of the robotic arm to determine a precise pose in space of the robotic arm may also constitute a calibration)
Regarding claims 3 and 13: Shmayahu discloses parent claims 1 and 11, respectively. Shmayahu further discloses further comprising presenting, by the one or more processors, on a display of the surgical robot an image captured by a capture device mounted on the surgical robot. (per claim 3) / wherein the surgical robot further comprises a display and wherein the one or more processors are further configured to present on the display an image captured by a capture device mounted on the surgical robot. (per claim 13) (Paragraph [0093, 0099], Shmayahu discloses that the navigation system may comprise a display to display an image from the cameras of the navigation system)
Regarding claims 4 and 14: Shmayahu discloses parent claims 1 and 11, respectively. Shmayahu further discloses wherein the surgical robot comprises an attachment that receives a surgical tool, and wherein determining the position of the surgical robot further comprises determining, by the one or more processors, a position of the surgical tool. (per claim 4) / wherein the surgical robot comprises an attachment that receives a surgical tool, and wherein the one or more processors are further configured to determine a position of the surgical tool. (per claim 14) (Paragraph [0095-0099] and Figure [4], Shmayahu discloses that the robot may comprise a tool and hold an object, the object and/or the tool comprising a tracked marker)
Regarding claims 7 and 17: Shmayahu discloses parent claims 1 and 11, respectively. Shmayahu further discloses wherein determining the position of the surgical robot is based on an infrared tracking technique. (per claim 7) / wherein the one or more processors are further configured to determine the position of the surgical robot based on an infrared tracking technique. (per claim 17) (Paragraph [0029, 0093, 0099, 0116], Shmayahu discloses that the images used to determine position may include infrared images)
Regarding claims 8 and 18: Shmayahu discloses parent claims 7 and 17, respectively. Shmayahu further discloses wherein the surgical robot comprises one or more markers, and wherein determining the position of the surgical robot based on the infrared tracking technique comprises detecting a respective position of each of the one or more markers. (per claim 8) / wherein the surgical robot comprises one or more markers, and wherein the one or more processors are further configured to detect a respective position of each of the one or more markers. (per claim 18) (Paragraph [0095-0099] and Figure [4], Shmayahu discloses that the robot, patient, and objects contain markers to be tracked by the navigation and/or imaging system using the camera devices that may include an infrared-type system)
Regarding claims 9 and 19: Shmayahu discloses parent claims 1 and 11, respectively. Shmayahu further discloses wherein detecting the change in the position of the patient comprises comparing, by the one or more processors, a point of the real-time 3D point cloud captured at a first time with a second point of the real-time 3D point cloud captured at a second time after the first time. (per claim 9) / wherein the one or more processors are further configured to detect the change in the position of the patient by performing operations comprising comparing a point of the real-time 3D point cloud captured at a first time with a second point of the real-time 3D point cloud captured at a second time after the first time. (per claim 19) (Paragraph [0008-0009, 0093-0094, 0119-0120] and Figure [4], Shmayahu discloses taking a plurality of images including at least a first and second image, the second image taken at a second time after the first image, and comparing the relative positions of the objects/markers within the images)
Regarding claims 10 and 20: Shmayahu discloses parent claims 9 and 19, respectively. Shmayahu further discloses wherein detecting the change in the position of the patient comprises determining that a distance between the point and the second point exceeds a predetermined threshold. (per claim 9) / wherein the one or more processors are further configured to detect the change in the position of the patient by performing operations comprising determining that a distance between the point and the second point exceeds a predetermined threshold. (per claim 19) (Paragraph [0089, 0094, 0099, 0108, 0120] and Figure [4], Shmayahu discloses adjusting the surgical plan/navigation/trajectory when the change in position of the first and second positions of the markers of the compared images exceeds a predetermined threshold)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J BROSH whose telephone number is (571)270-0105. The examiner can normally be reached M-F 0730-1700.
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, THOMAS WORDEN can be reached at (571)272-4876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.J.B./Examiner, Art Unit 3658
/JASON HOLLOWAY/Primary Examiner, Art Unit 3658