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 .
Election/Restrictions
Group II (claims 8-15) was elected without traverse in the reply filed 6/02/2026, with Groups I and III being withdrawn and canceled without prejudice as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Response to Amendment
As of the reply filed 6/02/2026, claims 8-15 are pending. Claims 1-7 and 16-36 are canceled.
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, the spring mechanism and the folding of the linear tool-actuation arm of claim 10 must be shown or the feature(s) canceled from the claim(s). 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 Objections
Claims 8, 10-12, and 15 are objected to because of the following informalities:
Claim 8, line 1: “Apparatus for performing…” is missing an article and should recite “An apparatus for performing…” instead.
Claim 8, line 8: this line ends with a comma, whereas the previous paragraph ends in a semicolon. It is recommended that the punctuation marking each paragraph end be standardized such that paragraphs end in either a semicolon or a comma.
Claim 10, line 3: “from tool mount” is missing an article and should recite “from the tool mount” instead.
Claim 11, line 2: “forceps that comprises tips” includes an incorrect conjugation and should be amended to recite “forceps that comprise tips” instead to match the established plurality.
Claim 12, line 3: “an axis of forceps” is missing an article and should be amended to recite “an axis of the forceps” instead.
Claim 15, lines 2 and 3: these lines end with a comma, whereas the first paragraph of claim 1 ends in a semicolon. It is recommended that the punctuation marking each paragraph end be standardized such that paragraphs end in either a semicolon or a comma.
Claim 15, lines 4-5: “the hinged tip” lacks antecedent basis in the claim, it is recommended that this limitation be amended to recite “the steerable tip” instead to follow the naming convention established in claim 14, line 2, and claim 15, line 2.
Appropriate correction is required.
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 8-15 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.
Regarding claims 8 and 11, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is recommended that this language be removed and the claims amended to simply recite “to actuate the tool” or “to close the tips” instead.
Claims 9-10 and 12-15 inherit the deficiencies of claims 1 and 11 due to their dependency and are therefore also rejected.
Regarding claim 9, the limitation “configured to automatically move in response to being retracted” is indefinite because it is unclear how the linear tool-actuation arm can “automatically” move in response to being physically moved by the user. The present specification does not offer any insight into how the linear tool-actuation arm is configured to “automatically slide and/or fold”, and the drawings do not clearly show this automated movement.
Claim 10 inherits the deficiency of claim 9 due to its dependency and is also rejected.
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:
“a motion-conversion mechanism” in claims 9, 11, and 14
“a hinged sleeve that is disposed around the proximal ends of the tips and a ramped surface that is not parallel to an axis of forceps, configured such that as the hinged sleeve is advanced past the ramped surface, the hinged sleeve is configured to be pushed transversely inwards, to thereby cause the tips to close” (page 10, lines 14-17, see Figs. 6A-B)
“a ramped surface and rollers disposed around proximal portions of the tips, configured such that as the rollers advance past the ramped surface, the rollers are pushed transversely inwards, to thereby cause the tips to close” (page 10, lines 18-21, see Figs. 7A-B)
“a hinged joint that is configured to cause the tips of the forceps to be closed by distal ends of the forceps arms pivoting toward each other” (page 10, lines 28-31, see Figs. 8A-B)
“a pusher and a steering wire, and linear motion of the pusher is conveyed to the steering wire thereby causing the hinged tip to bend” (page 11, line 27, see Fig. 9)
Claims 12-13 and 15 further define the structure of the motion-conversion mechanism and are not being interpreted under 35 U.S.C. 112(f)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 8 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Coe et al. (US PGPub 2008/0243106 A1).
With respect to claim 8, Coe et al. discloses an apparatus for performing robotic microsurgery on a portion of a body of a patient (abstract: "Methods and devices are provided for performing various procedures using interchangeable end effectors"), the apparatus comprising:
a plurality of tools (14 in Fig. 1A, PP [0065]: "a surgeon can actuate an actuation mechanism on the proximal end of the shaft to mate one of the end effectors to the distal end of the shaft without assistance from other tools and devices. After use of the end effector, the end effector can be released and another end effector can be remotely attached to the distal end of the shaft", PP [0068]: "a generic end effector 14 that is adapted to removably mate to the elongate member 12. The generic end effector 14 is intended to represent any end effector used to effect a particular surgical outcome") having different functions from each other, each of the tools comprising a mount-engagement portion (18, PP [0069]: "the first engagement mechanism 18 can be configured to perform the action of attaching and detaching the end effector 14 to and from the elongate member 12");
an end effector that comprises a tool mount (12d) that is configured to securely hold each of the plurality of tools (PP [0069]: "allowing multiple end effectors 14 to be interchangeably mated to the distal end 12d of the elongate member 12 without removing the device 10 from the patient's body and without assistance from other tools and devices") by engaging with the mount-engagement portion of each of the tools (18);
the end effector comprising a linear tool-actuation arm (13) that is configured to actuate the tools by moving linearly (PP [0069]: “For example, where the end effector 14 is in the form of a clip applier having a pair of opposed jaws pivotally coupled to one another, the first engagement mechanism 18 can attach and detach the clip applier to and from the elongate member 12 of the device 10, and the second engagement mechanism 19 can couple to a portion 14a of the end effector 14, e.g., to the jaws of the clip applier, to effect the action of opening and closing the jaws. The second elongate member 13 can be used to actuate the second engagement mechanism 19”),
wherein at least one of the tools comprises a motion-conversion mechanism for converting the linear motion to a different mechanical motion such as to actuate the tool (PP [0069]: "While not shown, the end effector can also be capable of performing a third action, such as advancing and firing a clip or staple from the jaws. Thus, a third engagement mechanism can be provided to effect the action of advancing and firing a clip or staple from the jaws. A third elongate member can be used to actuate the third engagement mechanism. Accordingly, the modular device can include any number of engagement mechanisms, and the particular quantity can be dependent on the particular quantity of actions that the end effector is capable of performing. Certain engagement mechanisms can also be configured to perform multiple actions. For example, a single engagement mechanism can be used to close the jaws of a clip applier and to fire a clip from the jaws").
Regarding claim 11, Coe et al. further discloses wherein at least one of the tools comprises forceps that comprise tips (PP [0067]: “the particular configuration of the end effector can vary depending on the type of procedure being performed, and that the term "end effector" as used herein is intended to include any device that is configured to affect a particular surgical outcome. By way of non-limiting example, suitable end effectors include mono-polar coagulators and probes, bi-polar coagulators and probes, graspers, biopsy forceps, clipping devices, retractors, scissors, band ligators, suction devices, needles, needle knives and other cutting devices, sphinctertomes, snares, irrigation devices, marking devices, etc.”, emphasis added), and a motion-conversion mechanism for converting the linear motion to transverse motion of the tips toward each other, such as to close the tips (PP [0069]: "While not shown, the end effector can also be capable of performing a third action, such as advancing and firing a clip or staple from the jaws. Thus, a third engagement mechanism can be provided to effect the action of advancing and firing a clip or staple from the jaws. A third elongate member can be used to actuate the third engagement mechanism. Accordingly, the modular device can include any number of engagement mechanisms, and the particular quantity can be dependent on the particular quantity of actions that the end effector is capable of performing. Certain engagement mechanisms can also be configured to perform multiple actions. For example, a single engagement mechanism can be used to close the jaws of a clip applier and to fire a clip from the jaws", see linear arrows in Figs. 1A-B).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Coe et al. (US PGPub 2008/0243106 A1), as applied to claim 8 above, and further in view of Simi et al. (US PGPub 2018/0304389 A1).
Regarding claim 14, Coe et al. fails to disclose wherein at least one of the tools comprises a tool having a steerable tip, and a motion-conversion mechanism for converting linear motion to non-linear motion of the steerable tip.
In the same field of surgical end effectors (abstract), Simi et al. teaches an end effector comprising a steerable tip (see Fig. 15A) and a drive system comprising a linear-actuator arm (95 in Fig. 14A), wherein the end effector also comprises a motion-conversion mechanism (see Fig. 14A) for converting linear motion (see linear actuator 95) to non-linear motion (see pulleys, pusher 145, and wire 90 in Figs. 14A-B) of the steerable tip (see Figs. 14A-B and 15A, actuation of the motion-conversion mechanism in Figs. 14A-B will enact non-linear pivoting motion in the hinges of the end effector).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have modified the Coe et al. device according to the teachings of Simi et al. to include the motion-conversion mechanism as claimed. One of ordinary skill in the art would have been motivated to perform this modification because doing so would have been a simple substitution of motion-conversion mechanisms that would have yielded the predictable result of moving the end effector in the claimed manner, since Coe et al. simply presents a generic plurality of engagement mechanisms (see 18-19 in Figs. 1A-B and PP [0069], see also remaining figures with alternate engagement mechanisms) for effecting a function of the end effector. Incorporating the structure of Simi et al. would not alter the main operating principle of the Coe et al. device, but would instead simply modify the generic engagement mechanism of Coe et al. to have a specific structure for converting linear motion into non-linear motion of a steerable tip of the end effector.
Regarding claim 15, Coe et al. as modified by Simi et al. further discloses wherein:
the steerable tip is hinged (see hinged steerable tip in Fig. 15A of Simi et al.),
the motion-conversion mechanism (see Figs. 14A-B) comprises a pusher (145) and a steering wire (90), and
linear motion of the pusher (145) is conveyed to the steering wire (90) thereby causing the hinged tip to bend (actuation of tendon 90 bends the end effector in Fig. 15A along its joints).
Allowable Subject Matter
Claims 12-13 are rejected for inheriting the deficiencies of claim 8 as outlined above, but would be allowable if rewritten in independent form including all of the limitations of the base claim, after it has been amended to obviate the above 35 U.S.C. 112(b) rejections, and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The subject matter of claims 12-13 filed on 6/01/2026 could either not be found or was not suggested in the prior art of record.
With respect to claim 12, the prior art does not disclose or render obvious at the effective filing date of the invention: the feature of “wherein the motion-conversion mechanism comprises a hinged sleeve that is disposed around the proximal ends of the tips and a ramped surface that is not parallel to an axis of the forceps, configured such that as the hinged sleeve is advanced past the ramped surface, the hinged sleeve is configured to be pushed transversely inwards, to thereby cause the tips to close”, in combination with the other limitations of the independent claim.
The closest prior art is Coe et al., which discloses each of the limitations as described above.
However, Coe et al. fails to disclose the hinged sleeve and ramped surface as claimed. Furthermore, the prior art of record does not suggest any motivation to modify the Coe et al. disclosure to arrive at these features.
With respect to claim 13, the prior art does not disclose or render obvious at the effective filing date of the invention: the feature of “wherein the motion-conversion mechanism comprises a ramped surface and rollers disposed around proximal portions of the tips, configured such that as the rollers advance past the ramped surface, the rollers are pushed transversely inwards, to thereby cause the tips to close”, in combination with the other limitations of the independent claim.
The closest prior art is Coe et al., which discloses each of the limitations as described above.
However, Coe et al. fails to disclose the ramped surface and rollers as claimed. Furthermore, the prior art of record does not suggest any motivation to modify the Coe et al. disclosure to arrive at these features.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bridget E. Rabaglia whose telephone number is (571)272-2908. The examiner can normally be reached Monday - Thursday, 7am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIDGET E. RABAGLIA/Examiner, Art Unit 3771
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