DETAILED ACTION
Receipt is acknowledged of applicant’s argument/remarks filed on July 13, 2026, claims 1 and 6-8 are pending and an action on the merits is as follows.
Applicant's arguments with respect to amended claims have been fully considered but are moot in view of the following ground(s) of rejection. Applicant had amended claim 1.
Previously, claims 2-5 had been canceled.
Response to Argument
Regarding applicant’s first argument with respect to the amendment of the claims (page 2, par. 5): “Zhao's centering is accomplished by tracking the robotic instruments so that the endoscopic camera is centered in the field of view of the surgical site. See Zhao, paragraph [0054]. This instrument-tracking approach does not address the geometric off-center drift caused by an angled optical axis during advancement of the endoscope toward an object;” the examiner respectfully disagreed with applicant statement. It should be considered that the claim limitations do not contain the argued feature(s): “the geometric off-center drift caused by an angled optical axis.” Applicant may consider further amending the claim limitation to include the argued feature for future consideration. It should be considered that Zhao et al., as modified by Hale et al., teach a robotic surgical instrument configured to automatically control the endoscopic camera so that a surgeon automatically view region of interest in a surgical site (par. 54) during a surgical procedure on a patient organ ( par. 194); for instance, the endoscopic camera is controlled to perform certain movement / path during a surgical procedure (Zhao et al.’s par. 215), wherein the lens of the endoscope is set a predetermined degree angle view – for instance zero degree (Hale et al.’s par. 11 and 7)). It the examiner position that Zhao et al. in view of Hale et al. disclosed the claimed invention. Applicant is kindly invited to consider the Office Action below to review the ground of rejection, cited section of the prior arts and motivation.
Regarding applicant’s second argument with respect to the amendment of the claims (page 3, par. 2): “Because Hale maintains the endoscope's position rather than adjusting its movement, Hale neither teaches nor suggests adjusting movement of the endoscope to maintain a constant field of view such that the center of the field of view is maintained during advancement independent of the angle of the lens, as recited by claim 1 as amended.” The examiner respectfully disagreed with applicant statement. Applicant' s arguments attach Hale et al.’s reference individually, when the rejection are over a combination of two references. It is the examiner position that Zhao et al. in view of Hale et al. disclosed the claimed invention. Applicant is kindly invited to consider the Office Action below to view the ground of rejection, cited prior arts section and motivation.
Specification
The amendment to the specification and drawing filed July 13, 2026 are objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: (1) “Fig. 16E illustrates, for an endoscope with an angled tip lens according to an embodiment of the present invention, that after the zoom the object (200) remains in the center of the field of view and the image of the object (210) remains in the center of the camera image (130) because the endoscope's movement is adjusted to maintain a constant field of view independent of the tip lens angle” (to be added after par. 307) and (2) “According to one embodiment of the present invention, the endoscope's movement will be adjusted as shown in Fig. 16E in order to maintain a constant field of view” (to be added in par. 667). It is unclear the need and purpose to rename already well defined process and/or apparatus. The use of the above new maters can lead to ambiguity and multiple interpretations of the claim language as ready explained in the rejection of claim 1 under 35 U.S.C. 112, first paragraph. There is not error in the specification that requires an appropriate correction. Applicant should use already well defined process and/or apparatus to further amend the claim language.
Applicant is required to cancel the new matter in the reply to this Office Action.
Drawings
The new drawing 16E is objected to because it introduces new matter.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention; this constitutes new matter. The invention fails to disclose “ … wherein movement of said endoscope is adjusted to maintain a constant field of view such that the center of the field of view is maintained during said advancement independent of the angle of the lens” (added remarks), and (ii) their critical role with respect to the scope of the invention. The specification provides broad description of a controlling means to maintain a center of the field of view (FOV) during zoom independent of the tip lens angle (added remark) (see publication: par. 666) and fails to provide support for adjusting the endoscope movement to maintain a center of the field of view during an advancement independent of the angle of the lens and its critical role within the claimed invention. Applicants may consider using terms clearly disclose within the specification.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, disclose “ … wherein movement of said endoscope is adjusted to maintain a constant field of view such that the center of the field of view is maintained during said advancement independent of the angle of the lens” (added remarks) must be shown or the feature(s) canceled from the amended claim 1. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 103
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 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 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 of this title, 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.
Claims 1 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. US 2009/0088773 in view of Hale et al. (Pub. No.: US 2010/0010301 A1 A1)
Regarding claim 1, Zhao et al. disclose a robotic instruments for a surgical system comprising:
inserting at least one surgical tool into a surgical environment of a human body cavity (e.g., Figure 1A shows a tool couples to the robotic arm being inserted into a surgical cavity of patient – par. 35 and 3);
inserting a robotically controlled surgical endoscope into the surgical environment, the endoscope having an elongate shaft extending through an incision into the human body cavity, the elongate shaft having a longitudinal axis (Figure 2 shows an endoscope with an elongated shaft, wherein the axis along the length of the endoscope cover the longitudinal axis (Figure 2));
capturing an image of the surgical environment using the robotically controlled surgical endoscope (e.g., video image of the surgical site are captured by the endoscopic camera (par. 80)), and displaying said image, in real time, on an image display (e.g., a display device 164 configured to display image capture by endoscopic camera 101C (par. 43) – for instance, image of the surgical site (par. 39)), wherein in said image displayed on the image display, an object appears at a center of the image (e.g., region of interest in a surgical site, for instance, tumor, is viewed - by tracking the robotic instruments so that the endoscopic camera is centered in the field of view of the surgical site – par. 54).
However, Zhao et al. failed to specifically disclose a lens having an optical axis that it is non-perpendicular with the longitudinal axis.
However, Hale et al. teach a surgical endoscope configured to operate its lens system at zero degree angle view with respect to “the longitudinal endoscope axis” (par. 11 and 7 and Figure 1A), wherein the lens system comprise an optical center axis 160 (par. 24, 33 and Figure 2A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to modify the surgical endoscope taught by Zhao et al., such that the endoscope operates its lens system at zero degree angle view with respect to the longitudinal endoscope axis, in view of Hale et al., with reasonable expectation of success, since doing so would have achieved the benefit adjusting the view direction of endoscope to zero degree for allowing a surgeons flexibility in their procedural approach and improving quality of diagnoses (par. 3).
Zhao et al. disclose causing said robotically controlled surgical endoscope to advance towards said object within said body cavity along a path (e.g., automatically control the endoscopic camera so that a surgeon automatically view region of interest in a surgical site (par. 54) during a surgical procedure on a patient organ ( par. 194); for instance, the endoscopic camera is controlled to perform certain movement / path during a surgical procedure (par. 215)), and to control movement of said endoscope such that the object continues to appear at the center of the image (e.g., automatically control the endoscopic camera such that the “robotic instruments are tracked so that the endoscopic camera is centered in the field of view of the surgical site” (par. 54)).
However, Zhao et al. failed to specifically disclose the endoscope operates along a path that is not aligned with the optical axis of the lens.
However, Hale et al. teach a surgical endoscope configured to operate its lens system at a predetermined degree angle view – for instance, 30 or 45 degree - with respect to “the longitudinal endoscope axis” (par. 11 and 7 and Figure 1A) to obtain image of a region of interest field during a surgical procedure (par. 11 and 31).
As Zhao et al. disclose a robotic surgical system to track robotic instruments so that the endoscopic camera is centered in the field of view of the surgical site (Zhao et al.’s par. 54) while performing certain movement / path during a surgical procedure (par. Zhao et al.’s par. 215), It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to modify the robotic surgical system taught by Zhao et al., such that the endoscope operates its lens system at a predetermined degree angles view with respect to the longitudinal endoscope axis to obtain image of a region of interest field, in view of Hale et al., while performing certain movement / path during a surgical procedure to track robotic instruments so that the endoscopic camera is centered in the field of view of the surgical site (Zhao et al.’s par. 54), with reasonable expectation of success, since doing so would have achieved the benefit adjusting the view direction of endoscope to multiple degrees for allowing a surgeons flexibility in their procedural approach and improving quality of diagnoses (Hale et al.’s par. 3).
Zhao et al., as modified by Hale et al., teach wherein movement of said endoscope is adjusted to maintain a constant field of view such that the center of the field of view is maintained during said advancement independent of the angle of the lens (e.g., automatically control the endoscopic camera so that a surgeon automatically view region of interest in a surgical site (par. 54) during a surgical procedure on a patient organ ( par. 194); for instance, the endoscopic camera is controlled to perform certain movement / path during a surgical procedure (Zhao et al.’s par. 215), wherein the lens of the endoscope is set a predetermined degree angle view – for instance 30 degree).
Regarding claims 6-7, Zhao et al. failed to specifically disclose (i) wherein the surgical endoscope is a 30 degree surgical endoscope (claim 6) and (ii) wherein the surgical endoscope is a 45 degree surgical endoscope (claim 7).
However, Hale et al. disclose a surgical endoscope configured to operate its lens system at 30 and 45 degree angle view (par. 11 and 7). Figures 1B and 1C show an endoscope operation at 30 and 45 degrees views Figure 1B and 11C).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to modify the surgical endoscope taught by Zhao et al., such that the endoscope operates its lens system at 30 and 45 degree angle in view of Hale et al., with reasonable expectation of success, since doing so would have achieved the benefit of adjusting the view direction of endoscope degrees to allow a surgeons flexibility in their procedural approach and improving quality of diagnoses (par. 3).
Note: the specification appears to admit common endoscope technology to operate at 0, 30 and 45 degree angle (see pub. of specification: par. 662).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. US 2009/0088773 in view of Hale et al. (Pub. No.: US 2010/0010301 A1 A1) and Smith et al. (Pub. No.: US 2012/0071893 A1).
Regarding claim 8, Zhao et al. disclose a robotic instruments for a surgical system comprising:
real-time estimating a 3D spatial position of said at least one surgical tool within the surgical environment (e.g., acquiring the position and orientation of the robot tool (par. 1 and 57) using 3D real time tool tracking image (par. 32, 47, 54 and 192).
detecting if there is movement of said at least one surgical tool within the surgical environment by determining whether the 3D spatial position of said at least one surgical tool at time tf is different than the 3D spatial position of said at least one surgical tool at time t0; (e.g., continuously tracking the position information of the robotic tool / instrument during a surgical procedure (par. 31 and 54) using 3D image(s) (par. 32, 47), which cover different time periods).
controlling the spatial position of said at least one surgical tool using a controller (e.g., controlling the robotic surgical tool / instrument during a surgical procedure via a computer / microprocessor (par. 49-50).
However, Zhao et al., as modified by Hale et al., failed to specifically disclose (i) wherein said controlling step includes determining whether each of said detected movements is an ALLOWED movement or a RESTRICTED movement based on a no fly zone rule stored in a database in communication with the controller; (ii) wherein said determining step comprises receiving input from a user observing said real-time image on the display, said input defining a no-fly zone comprising a plurality of 3D spatial positions.
However, Smith et al. teach a surgical tool 40 configured to implement a set of dynamic movement for removing a predetermined amount of bone (limitation: ALLOWED movement) from a patient’s organ based on a 3D model and data point (par. 24) and restrict operation into “areas in space that correspond to healthy bone and / or tissue” (limitation: no fly zone and restricted movement) (par. 25) via a computer system 14/ processor 30 (par. 17). Surgeon draws / marks on an image the area of bone to be removed via input device 34 (par. 24) (limitation: receiving input from a user … defining a no-fly zone) and the computer system 14 uses the location and amount of bone to be removed to set dynamic movement limits of the tool (par. 24), which requires the computer system to store said movement limits (limitation: no fly zone rule stored in a database).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to further modify the computer / microprocessor taught by the combination of Zhao et al., in view of Hale et al., such that the computer / microprocessor controls a surgical tool to remove a predetermined amount of bone from a patient and restrict operation into other areas of patient’s healthy bone and / or tissue, in view of Smith et al., with reasonable expectation of success, since doing so would have achieved the benefit of avoiding removing too much of bone of the patient’s organ and compromising the integrity of the organ (par. 4).
Zhao et al., disclose wherein said determining step comprises receiving at
least one real-time image of said surgical environment and displaying said at least one real-time image on a display (e.g., video image of the surgical site are captured by the endoscopic camera (par. 80) and a display device 164 configured to display image capture by endoscopic camera (par. 43) – for instance, image of the surgical site (par. 39)),
Zhao et al., as further modified by Smith et al., teach (i) determining that said movement is a RESTRICTED movement if the movement is one in which said at least one surgical tool is located substantially in at least one of said 3D spatial positions – (e.g., Smith et al. teach a surgical tool 40 configured to implement a set of dynamic movement for restricting operation into “areas in space that correspond to healthy bone and / or tissue” (par. 25) via a computer system 14/ processor 30 (par. 17)) , and (ii) determining that said movement is an ALLOWED movement if the movement is one in which the location of said at least one surgical tool is substantially different from said 3D spatial positions (e.g., Smith et al. teach a surgical tool 40 configured to implement a set of dynamic movement for removing a predetermined amount of bone (limitation: ALLOWED movement) from a patient’s organ based on a 3D model and data point (par. 24)). The modification would have achieved the benefit of avoiding removing too much of bone of the patient’s organ and compromising the integrity of the organ (par. 4)) .
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Kitamura et al. (US 2012/0327186 A1) is directed to an endoscope observation supporting system configured to position an endoscope such that a surgical tool is at the center of a field of view.
Inoue (US 2020/0100649 A1) is directed to a medical system and operation method of medical system configured to operate an endoscope so as to make a center of locus to be at a center of an image during a surgical procedure.
Deane (US 2021/0137619 A1) is directed to a surgical robot configured to control movement of a surgical endoscope wherein an object remain in the center of view on a surgeon display.
This application is a CON of 17/002,725 filed on 08/25/2020 now US Pat. 11957301, which is a CON of 16/176,854 filed on 10/31/2018 now US Pat. 10751139, which is a DIV of 15/289,324 filed on 10/10/2016 not US Pat 10201392, which is a CON of 14/752,947 filed on 06/28/2015 now US Pat. 9504456, which is a DIV of 14/150,939 filed on 01/09/2014 now Pat 9204939, which is has PRO 61/750,856 filed on 01/10/2013, which is a CIP of PCT/IL2012/000310 filed on 08/21/2012 - PCT/IL2012/000310 has PRO 61/525,779 08/21/2011; PCT/IL2012/000310 has PRO 61/525,789 filed on 08/21/2011; PCT/IL2012/000310 has PRO 61/525,787 filed on 08/21/2011. See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also, in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicant(s) are reminded that the prosecution history of the Parent Application is relevant in this application.
THIS ACTION IS MADE FINAL. 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 Jorge O. Peche whose telephone number is (571)270-1339. The examiner can normally be reached Monday-Friday 8:30 AM - 5:30 PM.
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, Khoi H. Tran can be reached on 571 272 6919. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.O.P/ Examiner, Art Unit 3656 /KHOI H TRAN/Supervisory Patent Examiner, Art Unit 3656
Prosecution Insights