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 .
Election/Restrictions
Applicant’s election without traverse of Invention I in the reply filed on March 18th 2026 is acknowledged. Claims 35-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
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: “engagement feature” in claim 23.
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 § 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.
Claims 23-27 and 31-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kleven (US 2011/0238043).
Regarding claim 23, Kleven discloses a medical tracking fixture (1; Figure 1A; for attaching a tracking marker - ¶[0027]) comprising: an elongated body (2) including an engagement feature (4 or both members 4 - interpreted under 35 U.S.C. 112(f) as equivalent to Applicant’s engagement feature - e.g. rails 122) configured to attach the elongated body to an imaging instrument to limit movement of the elongated body relative to the imaging instrument (¶[0028]), wherein the tracking fixture is attachable to a medical instrument of a teleoperated assembly (the tracking fixture could be gripped or fixed in enumerable ways to some form of medical instrument of a teleoperated assembly; furthermore coupling 20 can attach to a variety of instruments - ¶[0033] ,[0034]).
Regarding claim 24, the engagement feature includes a set of projections sized for receipt within a set of elongated grooves on the imaging instrument (each member 4 is formed of two legs or projections that could seat within some form of elongated grooves on an imaging instrument).
Regarding claim 25, the tracking fixture further comprises an expandable member (e.g. elastic cord 41 - ¶[0031]) extending from the elongated body.
Regarding claim 26, the tracking fixture further comprises a marker on the elongated body detectable in an image taken of the imaging instrument (tracking marker - ¶[0027]).
Regarding claim 27, the elongated body includes a coupling mechanism (20) for attaching the medical instrument to the tracking fixture (¶[0033] ,[0034]).
Regarding claim 31, the coupling mechanism includes a compliant joint mechanism (22; ¶[0037]).
Regarding claim 32, a sensor (tracking marker - ¶[0027], [0033]) is associated with the compliant joint mechanism for determining a pose of the tracking fixture with respect to the medical instrument.
Regarding claim 33, the engagement feature could attach to an appropriately structured ultrasound probe.
Regarding claim 34, the elongated body has a channel shape (see channel shape formed by opposing members 4 - Figures 1a or 6c).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Kleven (US 2011/0238043) in view of Fleig et al. (WO 2015/117665).
Regarding claims 28 and 29, Kleven fails to disclose that the coupling mechanism includes a magnet. Kleven discloses that the coupling mechanism can us a variety of means such as Velcro, bayonet, snap lock, tape, etc. (¶[0034]) to attach to an add-on instrument such as a tracking marker (¶[0027], [0033]).
Fleig et al. disclose that a tracking marker (1) can be attached to a medical instrument using a magnet (6; Figures 4 and 5; page 8, lines 4-18; page 9, lines 1-6; can be regarded as an active magnet).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and in view of Fleig et al. to have used a magnet as the coupling mechanism of Kleven as an alternative prior art coupling means suitable for the same or similar purpose.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Kleven (US 2011/0238043) in view of Zagorchev et al. (US 2011/0105896)
Regarding claim 30, Kleven fails to disclose that the coupling mechanism includes a suction mechanism. Kleven discloses that the coupling mechanism can us a variety of means such as Velcro, bayonet, snap lock, tape, etc. (¶[0034]) to attach to an add-on instrument such as a tracking marker (¶[0027], [0033]).
Zagorchev et al. teach that a suction cup or suction mechanism is a known in the art for attaching a tracking marker to a medical instrument (¶[0018]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and in view of Zagorchev et al. to have used a magnet as the coupling mechanism of Kleven as an alternative prior art coupling means known in the art for the same or similar purpose.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas McEvoy whose telephone number is (571) 270-5034 and direct fax number is (571) 270-6034. The examiner can normally be reached on Monday-Friday, 9:00 am – 6:00 pm.
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/THOMAS MCEVOY/Primary Examiner, Art Unit 3771
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