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 .
Response to Amendments
The amendment and response filed on February 8, 2026, to the Non-Final Office Action dated October 1, 2025 has been entered. Claim 38 was amended; Claims 4-7, 10, 12-17, 22-24, 26, 31-37, 42-44 and 46 were previously cancelled. Claims 1-3, 8-9, 11, 18-21, 25, 27-30, 38-41 and 45 are pending in this application.
Response to Arguments
Applicant’s arguments and amendments, see pages 8-32, filed February 8, 2026, with respect to the 35 U.S.C. § 101 rejection, nonstatutory double patenting, over claims 1-22 of U.S. Patent No. 12,285, 228 have been considered but are not persuasive. It is the Examiner position that the difference between the claimed invention and the Patent to Rotem is one of automation that can be bridged by the teaching in the Patent to Charles. The patent to Rotem teaches a cart capable of vertical, pivot, and longitudinal motion; however the Patent to Rotem did not claim a source of automation for performing the above functions. The patent to Charles teaches that a cart can be automated with actuators and computer control to perform the functions as in the present application. Those in the art would recognize that Rotem can be with the teaching in Charles and achieve the same level automation. For this reason, the double patenting, 35 U.S.C. § 101, rejection of claims 1-3, 8-9, 11, 18-21, 25, 27-30, 38-41 and 45 is maintained.
Applicant’s arguments and amendments, see pages 8-32, filed February 8, 2026, with respect to the 35 U.S.C. § 102 rejection based on Charles et al (US-6723106-B1) have been considered but are not persuasive. The 35 U.S.C. § 102 rejection of claims 1-3, 8-9, 11, 18-21, 25, and 27-30 is maintained. Applicant’s essential argument is that Charles fails to disclose an upper portion mounted on a pillar for securing a robotic surgical instrument; and a docking interface for support mobility devices such as motors and the like.
The invention as claimed, recites a pillar, a mechanism for causing a range of motion such as pivoting and vertical movement, and an electronic device. Smith, in figure 9 shows a column or pillar for supporting a surgical instrument that has all the claimed ranges of motion; and Figure 22 shows an exemplary control system for automating such motion using sensors and actuators. In Smith, Figure 9 shows an upper portion (183) for securing surgical instrument and a vertical support structure (pillar) 181 for holding the surgical instrument. As can be seen from at least Fig. 9, the surgical instrument is docked on the vertical support structure that happens to be “equipped with rollers or similar members to give it mobility, or it may be a stationary member”. See Column 15, Lines 45-53. As disclosed in Column 16 with reference to Figure 22 a computer system is provided “for controlling different types of motions of the manipulator, or for controlling the tool support shaft at different times.” Thus, the claims are more broadly claimed than how applicant interprets them and applicant's argument is not deemed persuasive to overcome the rejection, and the rejection is maintained.
Applicant’s arguments and amendments, see pages 8-32, filed February 8, 2026, with respect to the 35 U.S.C. § 103 rejection based on Charles et al (US-6723106-B1) and Joshi et al (US-20220409308-A1) have been considered but are not persuasive. The 35 U.S.C. § 103 rejection of claims 38-41 and 45 is maintained as explained below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 8-9, 11, 18-21, 25, 27-30, 38-41, and 45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,285, 228 in view of Charles et al (US-6723106-B1)(“Charles”), cited in the IDS received on 6/24/2025.
Using Claim 1 as exemplary, a table showing the claims of the instant application and the corresponding claim of U.S. Patent No. 12,285, 228 side-by-side for comparison is shown below. All matching elements of the claim limitations appear in bold while non-matching elements of the claim limitations are not bolded.
Instant Application
U.S. Patent No. 12,285, 228
A positioning system for a robotic-surgery device, the positioning system comprising:
a. a lower portion comprising a pillar section extending from a wheeled base;
b. an upper portion supported by the pillar section and comprising a docking interface adapted for securing thereto a motor-control unit of a robotic-surgery device, the upper portion configured for displacing vertically in response to a first remote user input and for pitching, in response to a second remote user input, about a pitch-axis member mediating between the pillar section and the upper- portion; and
c. electronic circuitry programmed to cause the upper portion to simultaneously displace vertically and pitch about the pitch-axis member, in response to a third remote user input, so as to pivot a robotic-surgery device secured to the docking interface about a distal end of a surgical arm proximally seated in a surgical-arm- receiving volume of the motor-control unit.
A cart for positioning a dockable surgical-robotic device, the cart comprising:
a. a wheeled base section;
b. an intermediate section extending upwardly from the base section and having a user-adjustable height; and
c. an upper section mounted atop the intermediate section and pivotable relative thereto throughout a range of inclination angles, the upper section comprising a slidable docking platform for the dockable surgical-robotic device,
the docking platform being operative to:
i. be displaced in a vertical direction when the height of the intermediate section is adjusted,
ii. pivot about a pitch axis, together with a non-sliding portion of the upper section, when the upper section is pivoted relative to the intermediate section, and
iii. slide longitudinally in a longitudinal sliding direction relative to the non-sliding portion of the upper section, thereby extending a length of the upper section.
As illustrated in the table above, all matching elements of the claim limitations appear in bold while non-matching elements of the claim limitations are not bolded.
Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed to a positioning system for a robotic-surgery device; the difference between the claims at issue is that the instant application includes motors and controller capable of receiving instructions from a remote user, but the U.S. Patent No. 12,285, 228 is directed to a positioning system for a robotic-surgery device that does not include the automation of the present application. The patent to Charles et al, citation below, teaches that automating the movement of a surgical device is routine in the art, it would have been obvious to one having ordinary skill in the art at the time the invention was made to automate the patented surgical-robotic device, since it has been held that changing between a mechanical or automatic means and a manual activity which has accomplished the same result involves only routine skill in the art as demonstrated by the patent to Charles. In re Venner, 120 USPQ 192.
Claim Rejections --35 U.S.C. § 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 1-3, 8-9, 11, 18-21, 25, and 27-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Charles et al (US-6723106-B1)(“Charles”), supplied by Applicant in the IDS filed on 6/24/2025.
As per claim 1, Charles discloses a positioning system for a robotic-surgery device (Figure 4), the positioning system comprising:
a. a lower portion comprising a pillar section extending from a wheeled base (Figure 1, shaft at 20, and Column 7, Lines 17-20, disclosing a column with wheels:” shaft support structure 20 may be installed in a fixed location, or it may be equipped with rollers or other mechanisms to give it mobility.”);
b. an upper portion supported by the pillar section and comprising a docking interface adapted for securing thereto a motor-control unit of a robotic-surgery device, the upper portion configured for displacing vertically in response to a first remote user input (Figure 22, input device 402, and Column 28, Lines 17-23, disclosing various forms of input devices which can be external/remote from the medical device:” wide variety of input devices 402 can be employed, such as a joystick, a haptic interface (an input device which can provide force feedback to the operator), a keyboard, a tape memory or other storage device, a foot pedal, a mouse, a digitizer, a computer glove, or a voice operated controller.”) and for pitching, in response to a second remote user input, about a pitch-axis member mediating between the pillar section and the upper-portion (Figures 3-4, column and upper portion, and Column 9, lines 1-8, disclosing an upper portion that is displaceable vertically:” tool support shaft 11 is rigidly connected to the fifth link 56. The rotary actuators 51, 60 are connected to a frame 52 which can be raised and lowered by a base 66 equipped with an elevating mechanism for the frame 52. The geometry of FIG. 4 can produce the same rotational and translational movement of the tool support shaft 11 as can the geometry of FIG. 3.”); and
c. electronic circuitry programmed to cause the upper portion to simultaneously displace vertically and pitch about the pitch-axis member, in response to a third remote user input (electronic controller 401 at Figure 22.), so as to pivot a robotic-surgery device secured to the docking interface about a distal end of a surgical arm proximally seated in a surgical-arm- receiving volume of the motor-control unit (Column 28, Lines 26-41, discloses various orientations of the upper part of the assembly:” separate input devices for controlling different types of motions of the manipulator, or for controlling the tool support shaft at different times. For example, one input device may be used when it is desired to pivot the tool support shaft about a virtual pivot point, while another input device may be used when it is desired to translate the tool support shaft in its lengthwise direction without pivoting it. Still another input device may be used for manipulating the tool support shaft when no part of it is inserted into a patient's body. Based on input signals from the input devices and the signals from the position sensors, the controller 401 generates control signals for the actuators 404 so as to drive the tool support shaft in a desired manner.”).
As per claim 2, Charles discloses a positioning system of claim 1, wherein the electronic circuitry is programmed to effect the pivoting of the robotic-surgery device about the distal end of the surgical arm without displacing the distal end of the surgical arm (Figure 4 and Column 6, Lines 15-19, discloses displacing the distal end of the assembly without disturbing the position of the surgical arm:” when the tool support shaft 11 is being maneuvered with the tool 12 on the exterior of the patient's body, it may be desirable for the shaft support structure 20 to be capable of manipulating the tool support shaft 11 with up to six degrees of freedom.”).
As per claim 3, Charles discloses a positioning system of claim 1 wherein the distal end of the surgical arm is characterized by having an end-effector coupled thereto, and the pivoting of the robotic-surgery device about the distal end of the surgical arm includes pivoting the robotic-surgery device about a distal end of the end-effector (Figure 3 and Column 7, Lines 50-57, disclosing various levels of rotation and pivoting of the medical instrument:” first link 53 is secured to the first rotary actuator 51 for rotation about a first axis. The first link 53 supports a first linear actuator 54 which can act along a straight path perpendicular to the rotational axis of the first rotary actuator 51. A second link 55 has one end secured to the first linear actuator 54 and another end connected to a third link 56, which supports a tool support shaft 11, at a first support point by a first pivotable joint 57.”).
As per claim 8, Charles discloses a positioning system of claim_1 additionally comprising a visual aid for aligning the surgical arm with a target vector (Column 18, Lines 18-22, alignment indication with the different tubing:” shaft 195c may have a portion which interfits with the opening 212d in the frame 210 to ensure proper alignment of the joint 195 with respect to the frame 210. For example, the illustrated shaft 195c has a slot 195d which engages with a projection formed in the opening 212d.”).
As per claim 9, Charles discloses a positioning system of claim 8, wherein the target vector describes at least one of a position of a surgical access channel and an orientation of a surgical access channel (See at least the Abstract that discloses a virtual point located at the patient and under broadest reasonable interpretation would be a surgical access channel:” motions of the joints (23, 24) can be controlled such that the tool (12) is pivoted about a virtual pivot point located within the body wall of a patient (30). The manipulator (10) can enhance the dexterity of an operator and enable the operator to perform medical procedures more easily than by hand.”).
As per claim 11, Charles discloses a positioning system of claim 1 wherein the positioning system is configured to provide electrical power to the motor- control unit (Column 13, Line 65 to Column 14, Line 9, disclosing the use of electrical devices to cause control of the motor units:” linear actuators which can employed include linear electric motors, rotary motors connected to motion converting mechanisms (such as ball screws or racks and pinions) for converting rotary to linear motion, and hydraulic or pneumatic cylinders. When the tool support shaft only needs to assume a small number of orientations, linear actuators having only a small number of discrete states, such as a solenoid, can be used, but when it is desired to manipulate the tool support shaft over a continuous range of angles with respect to the vertical, the linear actuators preferably permit substantially continuous position and force control.”).
As per claim 18, Charles discloses a positioning system for a robotic-surgery device, the positioning system comprising:
a. a lower portion comprising a pillar section extending from a wheeled base (Column 15, Lines 45-48, disclosing a base/column for support of the upper equipment:” shaft support structure 180 includes a support base 181 which is shown sitting on a floor 182. The base 181 may be equipped with rollers or similar members to give it mobility, or it may be a stationary member.”)
b. an upper portion supported by the pillar section and comprising a docking interface adapted for securing thereupon a motor-control unit of a robotic-surgery device, the upper portion configured for displacing vertically and for pitching about a pitch-axis member mediating between the pillar section and the upper- portion (Column 15, Lines 52-62, disclosing an upper portion support:” it may include a stationary lower portion 181a and an upper portion 181b which can be raised and lowered and/or rotated about a vertical axis with respect to the lower portion 181a. The upper portion 181b can be raised and lowered by any suitable arrangement, such as hydraulic cylinders, pneumatic cylinders, or an electric motor drivingly connected to the upper portion 181b, such as through a pinion engaging a rack formed on the upper portion 181b.”); and
c. electronic circuitry programmed to cause the upper portion to simultaneously displace vertically and pitch about the pitch-axis member to pivot the motor- control unit about a remote target point to align an operative vector of the motor- control unit with a target vector at the remote target point (Column 28, Lines 26-41, discloses various orientations of the upper part of the assembly:” separate input devices for controlling different types of motions of the manipulator, or for controlling the tool support shaft at different times. For example, one input device may be used when it is desired to pivot the tool support shaft about a virtual pivot point, while another input device may be used when it is desired to translate the tool support shaft in its lengthwise direction without pivoting it. Still another input device may be used for manipulating the tool support shaft when no part of it is inserted into a patient's body. Based on input signals from the input devices and the signals from the position sensors, the controller 401 generates control signals for the actuators 404 so as to drive the tool support shaft in a desired manner.”).
As per claim 19, Charles discloses a positioning system of claim 18, wherein the aligning of the operative vector with the target vector includes:
i. lining up the operative vector of the motor-control unit to intercept the remote target point (Column 27, Lines 60-65, discloses control based on a target/virtual point:” in order to adjust the orientation of the tool support shaft when the lower end thereof is inserted into the body of a patient while keeping the tool support shaft aligned with a virtual pivot point, it may be necessary to coordinate the operation of two or more of the actuators.”), and
ii. pivoting the motor-control unit about the remote target point to align the operative vector of the motor-control unit with a target vector at the remote target point (Column 28, Lines 28-35, discloses motor pivoting based on a target/virtual point:” one input device may be used when it is desired to pivot the tool support shaft about a virtual pivot point, while another input device may be used when it is desired to translate the tool support shaft in its lengthwise direction without pivoting it. Still another input device may be used for manipulating the tool support shaft when no part of it is inserted into a patient's body.”).
As per claim 20, Charles discloses a positioning system of claim 18, wherein the aligning of the operative vector with the target vector includes aligning an offset vector with an offset target vector (Column 27, Lines 60-67, discloses adjustment of the movement which is considered correction of an offset vector:” in order to adjust the orientation of the tool support shaft when the lower end thereof is inserted into the body of a patient while keeping the tool support shaft aligned with a virtual pivot point, it may be necessary to coordinate the operation of two or more of the actuators. For some movements of the tool support shaft, it may be possible for a human operator to manually coordinate the operation of different actuators.”).
As per claim 21, Charles discloses a positioning system of claim 18, wherein the electronic circuitry is programmed to cause the upper portion to simultaneously displace vertically and pitch about the pitch-axis member while the motor-control unit is secured to the docking interface and a surgical arm is proximally seated in a surgical-arm- receiving volume of the motor-control unit (Column 9, Lines 1-22, disclosing that the upper portion pitches and moves vertically (up/down):” movement of the tool support shaft 11 in the z-axis direction is achieved by translating the rotary actuators 51, 60 as a single unit. The tool support shaft 11 is rigidly connected to the fifth link 56. The rotary actuators 51, 60 are connected to a frame 52 which can be raised and lowered by a base 66 equipped with an elevating mechanism for the frame 52. The geometry of FIG. 4 can produce the same rotational and translational movement of the tool support shaft 11 as can the geometry of FIG. 3. Because a shaft insertion actuator 65 is not necessary, the size of the manipulator 50A in the vicinity of the upper end of the tool support shaft 11 can be reduced, making it easier to operate the manipulator in crowded spaces.”).
As per claim 25, Charles discloses a positioning system of claim 18, wherein the electronic circuitry is additionally programmed to cause the docking interface to displace longitudinally simultaneously with the vertical displacing and pitching of the upper portion (Figure 5 and Column 9, Lines 50-67, disclosing displacement along various planes including vertically with rotation around at least one axis:” the paths of movement of the first and second linear actuators define a plane parallel to that defined by the paths of movement and the third and fourth linear actuators. However, the paths of movement of the third and fourth linear actuators can be at any angle with respect to each other such that they are not parallel, the paths of movement of the third and fourth linear actuators 81, 83 need not be parallel to those of the first and second linear actuators 73, 75, respectively, and the plane defined by the paths of movement of the first and second linear actuators. A seventh link 84 has one end connected to the fourth linear actuator 83 and another end connected to the fourth link 77 at a second support point by a second pivotable joint 85. A fifth linear actuator 86 (a shaft insertion actuator) which can move in a z-axis direction transverse to the planes of movement of the first and second joints 78, 85 is mounted on the fourth link 77 and supports the tool support shaft 11. In FIG. 5, the z axis is parallel to a straight line connecting the first and second joints 78, 85, but it may extend in a different direction.”).
As per claim 27, Charles discloses a positioning system of claim 18, additionally comprising a visual aid for aligning the operative vector with the target vector (Column 18, Lines 18-22, alignment indication with the different tubing:” shaft 195c may have a portion which interfits with the opening 212d in the frame 210 to ensure proper alignment of the joint 195 with respect to the frame 210. For example, the illustrated shaft 195c has a slot 195d which engages with a projection formed in the opening 212d.”).
As per claim 28, Charles discloses a positioning system for a robotic-surgery device, the positioning system comprising:
a. an upper portion comprising a docking interface adapted for securing thereto a motor-control unit of a robotic-surgery device (Column 15, Lines 52-62, disclosing an upper portion support:” it may include a stationary lower portion 181a and an upper portion 181b which can be raised and lowered and/or rotated about a vertical axis with respect to the lower portion 181a. The upper portion 181b can be raised and lowered by any suitable arrangement, such as hydraulic cylinders, pneumatic cylinders, or an electric motor drivingly connected to the upper portion 181b, such as through a pinion engaging a rack formed on the upper portion 181b.”); and
b. a lower portion (Figure 9, support base 181) comprising:
i. respective pluralities of support elements arranged to support the positioning system in respective positioning, position-adjusting, and stationary operating modes, the respective pluralities comprising respective pluralities of wheels, ball casters, and wheelless legs (Column 15, Lines 46-52, disclosing support and mobility for the supported assembly:” base 181 may be equipped with rollers or similar members to give it mobility, or it may be a stationary member. A support frame 183 is mounted on the base 181. To increase the range of motion of the tool support shaft 170, the base 181 may be equipped with a mechanism for raising and lowering or otherwise moving the support frame.”), and
ii. one or more mode-change pedals configured to transfer support of the positioning system from one respective plurality of support elements to another, the mode-change pedals arranged such that (A) an application of a mode-change pedal when the positioning system is supported by the plurality of wheels is effective to transfer support of the positioning system to the plurality of ball casters (Column 15, Lines 52-60, disclosing change adjustment based on various modes of operation:” it may include a stationary lower portion 181a and an upper portion 181b which can be raised and lowered and/or rotated about a vertical axis with respect to the lower portion 181a. The upper portion 181b can be raised and lowered by any suitable arrangement, such as hydraulic cylinders, pneumatic cylinders, or an electric motor drivingly connected to the upper portion 181b, such as through a pinion engaging a rack formed on the upper portion 181b.”), and (B) an application of a mode- change pedal when the positioning system is supported by the plurality of ball casters is effective to transfer support of the positioning system to the plurality of wheelless legs (Figures 9-10 and Column 17, Lines 6-25, disclosing various support for the mechanism at various operational modes:” tool support shaft 170 is shown as being stationary with respect to the support frame 197, but it may instead be movable. As described in further detail below, it may be advantageous if the tool support shaft 170 is readily detachable from the support frame 197 to enable the tool support shaft 170 to be easily replaced or sterilized. The longitudinal axis of the tool support shaft 170 is shown as being offset from a line connecting the centers of joints 198 and 208, but it could be coincident with this line.”).
As per claim 29, Charles discloses a positioning system of claim 28, wherein at least one of the one or more mode-change pedals is arranged to lift the plurality of wheels when applied (Column 20, Lines 6-9, discloses raising the lower part of the tool support:” a stationary lower portion 221a and an upper portion 221b which can be raised and lowered and/or rotated about a vertical axis with respect to the lower portion 221a as described with respect to FIG. 9.”).
As per claim 30, Charles discloses a positioning system of claim 28, wherein the one or more mode-change pedals comprise a first mode-change pedal and a second mode-change pedal, and when the positioning system is supported by the plurality of wheels, an application of the first mode-change pedal is effective to transfer support of the positioning system to the plurality of ball casters, and an application of the second mode-change pedal is effective to transfer support of the positioning system to the plurality of wheelless legs (Column 28, Lines 13-22, discloses various input devices to effectuate a mode change such as a foot pedal and the like:” controller 401 also receives input signals from one or more suitable input devices 402 by means of which the operator can provide the controller 401 with commands indicating the desired movement of and/or force to be applied by the tool support shaft. A wide variety of input devices 402 can be employed, such as a joystick, a haptic interface (an input device which can provide force feedback to the operator), a keyboard, a tape memory or other storage device, a foot pedal, a mouse, a digitizer, a computer glove, or a voice operated controller.”).
Claim Rejections --35 U.S.C. § 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.
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 38-41 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Charles et al (US-6723106-B1)(“Charles”), supplied by Applicant in the IDS filed on 6/24/2025, and Joshi et al (US-20220409308-A1)(“Joshi”).
As per claim 38, Charles discloses a medical apparatus comprising:
a. a positioning system comprising a docking interface adapted for securing thereto a motor-control unit of a robotic-surgery, the motor-control unit comprising one or more surgical-arm-receiving volumes (Column 4, Lines 54-67, discloses a positioning system for a medical tool:” tool support shaft 11 is supported and manipulated by a shaft support structure 20 including two or more independently movable arms 21 and 22, each arm pivotably supporting the tool support shaft 11 at a different location through one or more joints. In this example, arm 21 is equipped with one pivotable joint 23 and arm 22 is equipped with another pivotable joint 24. Each arm 21, 22 can move the corresponding joint 23, 24 in space to adjust the position of the tool support shaft 11 in space to achieve a desired position and/or motion of the lower end of the tool support shaft 11 to move the tool 12 to a desired location with respect to the patient. In the present embodiment, a single joint 23 or 24 provides the desired number of rotational degrees of freedom of the tool support shaft 11 with respect to each arm 21 or 22, but a single joint providing multiple rotational degrees of freedom may be replaced by its functional equivalent in the form of a plurality of joints each providing fewer rotational degrees of freedom than the single joint but together providing the same number of degrees of freedom as the single joint.”);
b. ; and
c. an access-channel-assembly frame (i) comprising first and second iron sights aligned with each other to define an (See at least the Abstract that discloses a virtual point located at the patient and under broadest reasonable interpretation would be a surgical access channel:” motions of the joints (23, 24) can be controlled such that the tool (12) is pivoted about a virtual pivot point located within the body wall of a patient (30). The manipulator (10) can enhance the dexterity of an operator and enable the operator to perform medical procedures more easily than by hand.”), the coupling being such that the first and second iron sights are offset from the coupled surgical access channel at least in a transverse direction that is orthogonal to the iron-sight-distal direction, wherein a transverse-direction offset of the (Column 27, Lines 60-67, discloses adjustment of the movement which is considered correction of an offset vector:” in order to adjust the orientation of the tool support shaft when the lower end thereof is inserted into the body of a patient while keeping the tool support shaft aligned with a virtual pivot point, it may be necessary to coordinate the operation of two or more of the actuators. For some movements of the tool support shaft, it may be possible for a human operator to manually coordinate the operation of different actuators.”).
While Charles discloses using virtual points to maneuver the tool to the exterior of a patient’s body, Charles does not explicitly disclose an illumination source coupled to the docking interface and operable to generate illumination in a positioning-system-distal direction, the illumination source being offset from the one or more surgical-arm-receiving volumes at least in a transverse direction that is orthogonal to the positioning-system-distal direction.
Joshi discloses a surgical system that can emit or reflect light that when read by cameras and/or optical sensors useful to calculate the location of an object through triangulation methods like stereo-photogrammetry. See Abstract and Figures 2A-2B.
In particular, Joshi discloses an illumination source coupled to the docking interface and operable to generate illumination in a positioning-system-distal direction (Joshi at Figure 17B and Para. [0153] discloses use of lights to align the instrument:” if the fixture 690 has a geometric, electronic, or other features capable of visual or other feedback to the user regarding the vector direction of this laser light, it would allow alignment of the x-ray arm without taking any x-rays.”) , the illumination source being offset from the one or more surgical-arm-receiving volumes at least in a transverse direction that is orthogonal to the positioning-system-distal direction (Joshi at Para. [0151] discloses using the lights to orient and align the medical device:” feature 765 facilitates desired alignment of the targeting fixture 690 relative to the x-ray image plane from an AP view when a laser (attached to the face of the x-ray emitter or collector) is directed through the opening 766 and toward the crosshairs 767 at the base. In some embodiments, if the laser light does not strike the crosshairs 767 dead center, further adjustment of the x-ray unit's orientation is needed. The temporarily added feature 765 that facilitates desired alignment of the targeting fixture 690 relative to the x-ray image plane from a lateral view when a laser (attached to the face of the x-ray emitter or collector) is directed through the opening and toward the crosshairs at the opposite face. In some embodiments, if the laser light does not strike the crosshairs dead center, further adjustment of the x-ray unit's orientation is needed.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the tracking optical markers taught in Joshi in the surgical manipulator of Charles with a reasonable expectation of success because this results in the manipulator being utilized to provide accurate localization of the manipulator relative to the patient (see Joshi at Para. [0212]).
As per Claim 39, Charles and Joshi disclose the medical apparatus of claim 38, wherein, when
i. the access-channel-assembly frame has a surgical access channel coupled thereto and is disposed at a surgical entry point (Charles at Column 28, Lines 26-41, discloses various orientations of the upper part of the assembly:” separate input devices for controlling different types of motions of the manipulator, or for controlling the tool support shaft at different times. For example, one input device may be used when it is desired to pivot the tool support shaft about a virtual pivot point, while another input device may be used when it is desired to translate the tool support shaft in its lengthwise direction without pivoting it. Still another input device may be used for manipulating the tool support shaft when no part of it is inserted into a patient's body. Based on input signals from the input devices and the signals from the position sensors, the controller 401 generates control signals for the actuators 404 so as to drive the tool support shaft in a desired manner.”)and,
ii. the docking interface is positioned in a proximate-to-surgical-entry location in an assembled state in which the motor-control unit is mounted thereto, and one or more surgical arms are proximally received in respective arm-receiving volumes of the motor-control unit (Charles at Column 28, Lines 33-38, disclosing that the surgical part or interface can be maintained at a desired position:” input device may be used for manipulating the tool support shaft when no part of it is inserted into a patient's body. Based on input signals from the input devices and the signals from the position sensors, the controller 401 generates control signals for the actuators 404 so as to drive the tool support shaft in a desired manner.”), and
iii. the illumination source is operated to generate illumination in the positioning-system-distal direction, adjusting at least one of a position of the docking interface and an orientation of the docking interface, such that the illumination source illuminates the illumination target, is effective to align the one or more surgical arms for passage of distal ends thereof through the surgical access channel (Joshi at Para. [0078] discloses using the markers lights on a patient to guide the surgical arm:” in some embodiments, the surveillance marker 710 can be embodied or can comprise one or more markers 710 rigidly affixed to a patient 18 in a location different than the location in which a primary tracker array 3610 is affixed; for example, a different spinous process 2310, on the skin, or on a small post drilled into the ilium. Accordingly, in some embodiments, the surveillance marker 710 can be located on the same rigid body as the primary tracker array 3610 but at a different location on the rigid body.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the tracking optical markers taught in Joshi in the surgical manipulator of Charles with a reasonable expectation of success because this results in the manipulator being utilized to provide accurate localization of the manipulator relative to the patient (see Joshi at Para. [0212]).
As per Claim 40, Charles and Joshi disclose the medical apparatus of claim 38, wherein the illumination source includes a laser illuminator (Joshi at Para. [0153] discloses using a laser:” the tool could be a conventional laser that can be attached to the emitter or collector panel of the x-ray machine, capable of passing a laser beam parallel to the direction that the x-rays will travel. In some embodiments, the laser could be attached temporarily (using a conventional magnet or adhesive) or permanently, connected to an arm extending from the x-ray machine and oriented in the correct direction, enabling the directed beam to shine down toward the fixture 690.”).
As per Claim 41, Charles and Joshi disclose the medical apparatus of claim 38, wherein the iron sights are fold-out sights, and the defined illumination target and iron-sight-distal direction are defined with the sights folded-out (Joshi at Para. [0078] discloses folding-out the markers to be within a predetermined distance:” in which a 4-marker tracker array 3610 is utilized (FIG. 3), four distances 3611a, 3612a, 3613a, and 3614a can be acquired and retained, representing the distances between the surveillance marker 710 and markers 3611, 3612, 3613, and 3614. In such embodiment, at each frame of real-time data during a procedure, the surgical robot system 1 disclosed herein can calculate updated distances between each of the markers 3611, 3612, 3613, and 3614 on the primary tracker array 3610 and the surveillance marker 710.”).
As per Claim 41, Charles and Joshi disclose a method of employing the medical apparatus of claim 38, the method comprising:
a. placing, at a surgical entry point, the surgical access channel, coupled to the access-channel-assembly frame (In Charles see at least the Abstract that discloses a virtual point located at the patient and under broadest reasonable interpretation would be a surgical access channel:” motions of the joints (23, 24) can be controlled such that the tool (12) is pivoted about a virtual pivot point located within the body wall of a patient (30). The manipulator (10) can enhance the dexterity of an operator and enable the operator to perform medical procedures more easily than by hand.”);
b. positioning, in a proximate-to-surgical-entry location, the positioning system, in an assembled state in which the motor-control unit is mounted thereto, and the one or more surgical arms are proximally received in respective arm-receiving volumes of the motor-control unit (Charles at Column 15, Lines 46-52, disclosing support and mobility for the supported assembly:” base 181 may be equipped with rollers or similar members to give it mobility, or it may be a stationary member. A support frame 183 is mounted on the base 181. To increase the range of motion of the tool support shaft 170, the base 181 may be equipped with a mechanism for raising and lowering or otherwise moving the support frame.”);
c. operating the illumination source to generate illumination in the positioning- system-distal direction (Joshi at Figure 17B and Para. [0153] discloses use of lights to align the instrument:” if the fixture 690 has a geometric, electronic, or other features capable of visual or other feedback to the user regarding the vector direction of this laser light, it would allow alignment of the x-ray arm without taking any x-rays.”); and
d. adjusting at least one of a position of the docking interface and an orientation of the docking interface so that the illumination source illuminates the illumination target (Joshi at Para. [0151] discloses using the lights to orient and align the medical device:” feature 765 facilitates desired alignment of the targeting fixture 690 relative to the x-ray image plane from an AP view when a laser (attached to the face of the x-ray emitter or collector) is directed through the opening 766 and toward the crosshairs 767 at the base. In some embodiments, if the laser light does not strike the crosshairs 767 dead center, further adjustment of the x-ray unit's orientation is needed. The temporarily added feature 765 that facilitates desired alignment of the targeting fixture 690 relative to the x-ray image plane from a lateral view when a laser (attached to the face of the x-ray emitter or collector) is directed through the opening and toward the crosshairs at the opposite face. In some embodiments, if the laser light does not strike the crosshairs dead center, further adjustment of the x-ray unit's orientation is needed.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the tracking optical markers taught in Joshi in the surgical manipulator of Charles with a reasonable expectation of success because this results in the manipulator being utilized to provide accurate localization of the manipulator relative to the patient (see Joshi at Para. [0212]).
Conclusion
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.
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/ELLIS B. RAMIREZ/Examiner, Art Unit 3658
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