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 .
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 2-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,029,511. Although the claims at issue are not identical, they are not patentably distinct from each other because the parent case, the patent, was directed to narrower system claims while present application is directed to broader method claims of a broader system.
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.
Claims 2-7, 9-12, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hashimoto (U.S. Patent Application Publication 2015/0193101).
Regarding claim 2, Hashimoto discloses a method comprising:
providing a robotic surgical cart (“base 2,” see [0014]-[0016] and figure 1) having first and second ends, a first robotic arm located at the first end (the portion located adjacent one robotic arm 3 is disposed see figure 1), and a second robotic arm located at the second end (the portion located adjacent other robotic arm 3 is disposed see figure 1),
moving the cart over the floor of the operating room to advance the first end of the surgical robotic cart under and across the surgical table so that the surgical robotic cart is positioned across the surgical table with the first end on a first side of the surgical table and the second end on a second side of the surgical table (see [0018]), and
controlling movement of the first and second robotic arms to perform a robotic surgical procedure on the patient (see [0009], [0013], and [0015]).
Regarding claim 3, Hashimoto discloses the claimed invention including moving the cart from under the surgical table to a storage location after completion of the robotic surgical procedure (see [0008]-[0009], and [0021]-[0022]).
Regarding claim 4, Hashimoto discloses the claimed invention including controlling movement of the first and second robotic arms comprises automatic control by a central control unit (see [0009], and [0022]).
Regarding claim 5, Hashimoto discloses the claimed invention including controlling movement of the first and second robotic arms comprises control by a user using an interface connected to a central control unit. (see [0009], and [0022]).
Regarding claim 6, Hashimoto discloses the claimed invention including the interface is located on the robotic surgical cart (see [0022]).
Regarding claim 7, Hashimoto discloses the claimed invention including the first and second robotic arms are folded on or into the robotic surgical cart while the robotic surgical cart is moved over the floor and cart under and across the surgical table (see [0008]-[0009], since the robotic arms are part of the cart and they move over the floor when they are retracted).
Regarding claim 9, Hashimoto discloses the claimed invention including controlling
movement of a third robotic arm (see “the number of multi-jointed arms 3 may be three or more” in [0014], also see [0009], [0013], and [0015]).
Regarding claims 10-11, Hashimoto discloses the claimed invention including the third robotic arm carries a camera and positioning the third robotic arm to view a surgical target (see [0015]).
Regarding claim 12, Hashimoto discloses the claimed invention including controlling movement of the first and second robotic arms comprises kinematic control by a central control unit (“robot control board 6,” see [0022] and 1) relative to a single origin point defined by the cart.
Regarding claim 15, Hashimoto discloses the claimed invention including the first and second ends of the are configured to extend beyond opposed lateral sides of the surgical table when the robotic surgical cart is positioned under the surgical table at a location between a head and a foot of the surgical table (see figure 1).
Regarding claim 16, Hashimoto discloses the claimed invention including the robotic surgical cart comprises a single chassis (the outer surface of “base 2,” see [0016] and figure 1) having affixed wheels (“plurality of wheels,” see [0018] and figure 1) to allow movement over the floor of the operating room.
Regarding claim 17, Hashimoto discloses the claimed invention including engaging a
modality to apply pressure to an underside of the surgical table for fixing the position of the mobile surgical cart relative to the surgical table (see [0017]).
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.
Claims 8, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto (U.S. Patent Application Publication 2015/0193101) as applied to claims 2, and 12 above, and further in view of Gregerson et al. (U.S. Patent Application Publication 2020/0078097).
Regarding claim 8, Hashimoto shows the invention above
but fail to recite the robotic surgical procedure comprises spinal surgery.
Like Hashimoto, Gregerson et al. disclose a surgical robotic system having a table (60 in figure 1) to support the patient and at least one multi-jointed robotic arm (101 in figure 1) and teach a method wherein the surgery is a “minimally-invasive spinal surgical procedure” in order to provide a known and workable medical procedure for robotic surgery (see [0066]).
Therefore, at the time of the of invention it would have been obvious to one of ordinary skill in the art to modify the invention of Hashimoto, as taught by Gregerson et al., to perform a “minimally-invasive spinal surgical procedure” in order to provide a known and workable medical procedure for robotic surgery.
Regarding claims 13-14, Hashimoto shows the invention above
but fail to recite:
A) registering the single point of origin with an image of the patient's anatomy, and
B) wherein registering the single point of origin with the image of the patient's anatomy comprises registering a marker affixed to the patient's anatomy.
Like Hashimoto, Gregerson et al. disclose a surgical robotic system having a table (60 in figure 1) to support the patient and at least one multi-jointed robotic arm (101 in figure 1) and teach A) “image registration techniques” along with B) “one or more active marker devices may be fixed relative to the patient, such as secured to the patient's skin via an adhesive membrane or mask. Additional active marker devices may be fixed to surgical tools 104 and/or to the end effector 102 of the robotic arm 101 to allow these objects to be tracked relative to the patient” (see [0035]-[0036] and figures 1-10) in order to provide an known and workable for providing “motion tracking” of the robotic system and surgical instrument during robotic surgery.
Therefore, at the time of the of invention it would have been obvious to one of ordinary skill in the art to modify the invention of Hashimoto, as taught by Gregerson et al., to provide A) “image registration techniques” along with B) “one or more active marker devices may be fixed relative to the patient, such as secured to the patient's skin via an adhesive membrane or mask. Additional active marker devices may be fixed to surgical tools 104 and/or to the end effector 102 of the robotic arm 101 to allow these objects to be tracked relative to the patient” in order to provide an known and workable for providing “motion tracking” of the robotic system and surgical instrument during robotic surgery.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nakanishi (U.S. Patent Application Publication 2018/0360550) is also very relevant and can be used to reject the presently claimed invention and its contents should be considered when responding to this office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON F ROANE whose telephone number is (571)272-4771. The examiner can normally be reached generally Mon-Fri 8am-9pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niketa Patel can be reached at (571) 272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AARON F ROANE/Primary Examiner, Art Unit 3792