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 .
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: “clamping unit”, in claims 1, 10-12, 22-23.
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 § 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 1-2, 4, 6, 8-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "apparatus" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Dependent claims 2, 4, 6, 8-9 are rejected for depending on rejected claim 1, inheriting the same deficiency.
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 (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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1, 4, 6, 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over
CN110063792A to Guangjun et al. (hereinafter “Guangjun”) in view of US Pat Pub No. 20120126079 to Russell.
Regarding claims 1 and 10. (original) Guangjun discloses apparatus (fig. 1) for linking a surgical instrument to a rigid frame (Description, machine translated “surgical robot 8”, fig. 13), the apparatus comprising: a. a clamping unit (1, fig. 2) comprising (i) a clamp-actuator (14) and (ii) to clamp the clamping unit to the rigid frame (para 0045, operating table); b. a mediating member (“formed by rods 41, 42, fig. 7) for mediating between the surgical instrument and the clamping unit, proximally engaged with the clamping unit (via element 2, fig. 1); c. respective force-transfer mechanisms for vertically displacing (“vertical adjustment mechanism 21, fig. 3) the mediating member relative to the clamping unit and for pivoting (via mounting base 3, fig. 7) the mediating member in intrinsic rotation in a pitch axis (via mounting base 3, fig. 7); and
d. a plurality of mechanical actuators placed to actuate the force- transmission mechanisms (fig 3, 7).
Guangjun fails to disclose two opposing clamps attached bilaterally to the clamping unit, each one of the two opposing clamps being individually effective, when actuated by a clamp-actuator.
Russell, from a similar field of endeavor teaches that it is known to provide a clamping unit (bedrail clamp assembly 700, fig 7, para 0050) comprising two opposing clamps (702 and 704, on opposite sides of block 706) and wherein each of the clamps being individually effective, when acutated by a clamp actuator (knob 82, fig 6). It would have been obvious before the effective filing date of the claimed invention to one of ordinary skills in the art to modify the disclosure of Guangjun with the teachings of Russell to provide the predictable result of providing additional functions of a second clamping device.
It is further noted that duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claim 4. (currently amended) Guangjun as modified by Russell renders obvious the apparatus of claim 1,wherein the instrument-docking assembly includes a docking interface adapted for securing the surgical instrument thereto (Guangjun, “surgical robot 8”, fig 13).
Regarding claim 6. (currently amended) Guangjun as modified by Russell renders obvious the apparatus of claim_1 wherein the two clamps are jointly actuatable by a single clamp-actuator (understood to be a design choice, In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) – “that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice”).
Regarding claim 8. (currently amended) Guangjun as modified by Russell renders obvious the apparatus of claim_1 wherein the rigid frame comprises a rail of a patient bed (Guangjun “a guide rail 222”).
Regarding claim 9. (currently amended) Guangjun as modified by Russell renders obvious the apparatus of claims 2
Regarding claim 11. (original) Guangjun as modified by Russell renders obvious the method of claim 10, additionally comprising, before the attaching: selecting a vertical orientation of the clamping unit from (i) a first vertical orientation in which the clamp-actuator is disposed above the two opposing clamps and (ii) a second vertical orientation in which the clamp- actuator is disposed below the two opposing clamps, wherein the attaching is performed in accordance with the selected vertical orientation (Guangjun, fig 1-3, “horizontal adjustment assembly 22 “ – The claim does not provide any details regarding the exact orientation or degrees, thus under its broadest reasonable interpretation, it is understood that the claimed details fall within the normal activity of the PHOSITA. Also see MPEP 2143 – KSR factors: “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success ).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guangjun in view of Russell as applied to claims above, and further in view of US Pat Pub No. 20190365491 to Yu.
Regarding claim 2. (original) Guangjun as modified by Russell renders obvious the apparatus of claim 1, wherein the mediating member is distally engaged with an instrument-docking assembly (Guangjun, formed elements 5, 6, and 7) but fails to explicitly disclose arranged to rotate intrinsically in a yaw axis about the mediating member.
Yu from a similar field of endeavor teaches a similar device to provide vertical and pivotal adjusting (fig. 2, para 0016, 0019-0021). It would have been obvious before the effective filing date of the claimed invention to one of ordinary skills in the art to modify the disclosure of Guangjun in view of Russell with the teachings of Yu to provide the predictable result of providing vertical and pivotal adjusting.
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: Claim 12 recites “first and second gear-actuators in communication with the clamping unit to define, together with the clamp-actuator, a triangular portion of the clamping unit; [] d. a first gearing arrangement disposed at the first vertex and actuatable by the first gear-actuator to vertically displace the mediating member relative to the first vertex; and e. a second gearing arrangement disposed at a second vertex of the triangular portion and actuatable by the second gear-actuator to pivot the mediating member in intrinsic rotation in a pitch axis about the first vertex. “ which when taken in combination with the remaining limitations of the claim are not disclosed, taught or rendered obvious by the references discovered. Claim 12 includes allowable subject matter which dependent claims 13-14, 16, 18-20, 22-23, 25-27 inherit.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
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/SANA SAHAND/Examiner, Art Unit 3796