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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2021178388, filed on 10/29/2021. This is the effective filing date.
Information Disclosure Statement
The IDS’s filed on 12/16/2024 and 04/26/2024 have been fully considered.
Joint Inventors
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
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: “calculator” and presenter” in claim 1 – 8.
A presenter is defined as a display in paragraph 11.
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.
Regarding claims 1 and 7 – 9, the phrase “master device” and “slave device” is unclear because there is no definition as to what these devices are. Paragraph [0010] and figure 1 of the applicant’s specification and drawings describe that the master device is a manipulator and the slave device is a catheter. However, in the claim limitations there is no description as to what these devices are. The claims are too broad as that they could be construed to be linked to robotics, master and slave brake cylinders, etc…
Regarding claims 1 and 8 – 9 the phrase “a controller that controls tactile force transmission in the master device and the slave device” is unclear because it is not possible for a controller to control the tactile force transmission. The examiner believes the applicant meant “evaluate” instead of control.
Claim limitation “calculator” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Overall, these claims are unclear and a multitude of amendments are needed. It is not being evaluated under 35 U.S.C. 101 because the claims are indefinite. However, examiner notes that a 101 issue is most likely present in the claims current form.
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.
Claim(s) 1, 5 and 8 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US Pub No: 2020/0257270 A1, hereinafter Suzuki) in view of Conti et al. (US Pub No: 2007/0171194 A1, hereinafter Conti).
Regarding Claim 1:
Suzuki discloses:
An information presentation system including a master device to which an operation by an operator is input and a slave device that operates in accordance with the operation input to the master device, the information presentation system comprising. Paragraph [0043] describes a master slave system in which the user operates the master apparatus 10 to control the slave apparatus 20.
a controller that controls tactile force transmission in the master device and the slave device. Paragraph [0043] describes a master slave system in which the user operates the master apparatus 10 to control the slave apparatus 20. The user is given a haptic sense, temperature sense and a force sense of an object based on the feedback from the slave apparatus to a master apparatus.
and a presenter that presents the physical characteristics of the substance calculated by the calculator. Paragraph [0056] describes a temperature sense presentation unit 53 that includes a display. This can display a numerical value or a color corresponding to a temperature detected by the temperature sensor.
Suzuki does not teach maintaining a predetermined motion state.
Suzuki and Conti teach:
a calculator that calculates physical characteristics of a substance in contact with the slave device based on an external force input from an environment to the slave device while the slave device maintains a predetermined motion state. Paragraph [0043] of Suzuki describes a master slave system in which the user operates the master apparatus 10 to control the slave apparatus 20. The user is given a haptic sense, temperature sense and a force sense of an object based on the feedback from the slave apparatus to a master apparatus. Paragraph [0036] of Conti describes a motion of an avatar during a time interval which maintains constant unless the device velocity increases as well.
Therefore, it would have been prima facie obvious to one of the ordinary skill in the art before the effective filing date, with a reasonable expectation for success, to have modified Suzuki to incorporate the teachings of Conti to show maintaining a predetermined motion state. One would have been motivated to do so that the characteristics of the substance don’t change while the device is measuring the characteristics.
Claims 8 and 9 are substantially similar to claim 1 and are rejected on the same grounds.
Regarding Claim 5:
Conti, in an analogous field of endeavor, teaches:
The information presentation system according to claim 1, wherein the calculator determines whether or not the slave device maintains the predetermined motion state based on a travel distance by which the slave device has moved after the predetermined motion state is started. Paragraph [0036] describes a motion of an avatar during a time interval which maintains constant unless the device velocity increases as well.
*Additionally, this claim is just obvious based on the definition of velocity. If the slave device continues moving it is moving at a velocity. However, if the slave device stops moving, the slave device stops.
The reason to combine Conti with Suzuki is for the same reasons as in claim 1.
Claim(s) 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki in view of Conti and further in view of Wang et al. (US Pub No: 2015/0220199 A1, hereinafter Wang).
Regarding Claim 2:
Suzuki and Conti teach the above limitations in claim 1. Suzuki and Conti do not teach calculating the elasticity of the substance.
Wang, in an analogous field of endeavor, teaches:
The information presentation system according to claim 1, wherein the calculator calculates elasticity as the physical characteristics of the substance when the slave device maintains a state of uniform motion as the predetermined motion state. Paragraph [0063] describes output transduces that can determine the elasticity of an object.
Therefore, it would have been prima facie obvious to one of the ordinary skill in the art before the effective filing date, with a reasonable expectation for success, to have modified Suzuki to incorporate the teachings of Wang to show calculating the elasticity of the substance. One would have been motivated to do so to enhance the user experience through vibration ([0004] of Wang).
Regarding Claim 7:
Wang teaches:
The information presentation system according to claim 1, wherein the presenter presents the physical characteristics of the substance calculated by the calculator to the operator of the master device. Paragraph [0063] describes output transduces that can determine the elasticity of an object. Paragraph [0096] describes displaying the sensing results on a screen 250.
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki in view of Conti and further in view of Woodruff (US Patent No: 6,518,584 B1, hereinafter Woodruff).
Regarding Claim 6:
Suzuki and Conti teach the above limitations in claim 1. Suzuki and Conti do not teach a reference physical characteristics and the calculate characteristics.
Woodruff, in an analogous field of endeavor, teaches:
The information presentation system according to claim 1, wherein the presenter presents the physical characteristics of the substance calculated by the calculator calculation means and the physical characteristics of the substance as a reference in a comparable manner. Column 8, line 52 to column 9, line 12 describes comparing the stored reference profiles with the measured data.
Therefore, it would have been prima facie obvious to one of the ordinary skill in the art before the effective filing date, with a reasonable expectation for success, to have modified Suzuki to incorporate the teachings of Woodruff to show a reference physical characteristics and the calculate characteristics. One would have been motivated to do so in order to determine if the user is touching the correct substance and how accurate the slave device is.
*Note claims 3 and 4 are not being rejected by a prior art rejection. However, upon claim amendments, these claims may need to be reevaluated.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Conus (US Pub No: 2022/0192769 A1): There is provided a surgical instrument having a plurality of methods of use and reducing the number of times that treatment portions are detachably replaced. The surgical instrument includes a treatment unit having a first treatment portion on an end portion thereof and a second treatment portion on another end portion thereof, and a holder that supports the treatment unit so as to allow the states of use of the first treatment portion and the second treatment portion to be switched. The holder supports the holder so as to be rotatable around a switching shaft for switching the states of use of the first treatment portion and the second treatment portion, and supports the treatment unit such that, while one of the first treatment portion and the second treatment portion is in a usable state, the other is in a standby state.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY KHANDPUR whose telephone number is (571)272-5090. The examiner can normally be reached Monday - Friday 8:30 - 6:30.
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/JAY KHANDPUR/Primary Patent Examiner, Art Unit 3658