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 Status
As per applicant’s response received 07/29/2026, claims 1-16 are pending; claims 1, 7 and 14 have been amended, and claims 15-16 have been newly added.
Response to Amendment
The claim objection is withdrawn in view of the current claim amendment.
With regard to the 35 USC 102 rejection based on Omori US 2009/0192519 A1, the Applicant’s response has been fully considered, but are moot in view of the new grounds of rejection below.
The independent claims 1, 7 and 14 have been amended to include “a grasping structure.” However, there is no connection between the newly added “grasping structure” and “manipulate a movable part of the slave-side device.” Specifically, the limitation “a first manipulator including a grasping structure and configured to manipulate a movable part of the slave-side device”, under the broadest reasonable interpretation: the claim is interpreted as the following: the first manipulator including a grasping structure and the first manipulator is configured to manipulate a movable part of the slave-side device.
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: “manipulator”, “grasping structure” and “movable part”
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.
Claim 15 is 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 claim 15, the phrase "may" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Omori US 2009/0192519 (hereinafter “Omori”, previously cited) and in view of Swarup et al. US 2009/0088775 A1 (hereinafter “Swarup”, previously cited).
Regarding claim 1, Omori discloses a master-side device (Fig.5: master console of robotic surgery system 10 as shown in Fig. 1) for remotely manipulating a slave-side device (Fig. 1: surgical robot 28), the master-side device comprising:
a first manipulator (robotic arms 24a-d) configured to manipulate a movable part (distal-end working unit 56) of the slave-side device (manipulator instruments, e.g. manipulators 12a, 12b, an endoscope 14); and
control processing circuitry (processor 106) configured to at least:
perform determining processing of determining whether or not to turn the movable part in a roll direction (rotation around roll axis; see [0059, 0080]), and
based on determining to turn the movable part in the roll direction, control the movable part to turn in the roll direction in response to a specific manipulation of the first manipulator (controlling rotation around roll axis; see [0059, 0080]).
Omori does not explicitly disclose the first manipulator including a grasping structure; however, this would be an implicit structure of the first manipulator (i.e. robotic arms 24a-d) as it is necessary for grasping the movable part (distal-end working unit 56) of the slave-side device (manipulator instruments, e.g. manipulators 12a, 12b, an endoscope 14). Such as discussed in [0049-0052], the manipulator arms 24a-d have mounted thereon various different types of distal tools, e.g. gripper, scissors, endoscope, probe etc. The implicit mounting mechanism is interpreted as “grasping structure” in this claim.
Alternatively, Swarup, a prior art reference in analogous art, teaches a master side device (Figs. 15A-15C: master grips; Fig. 16B:1650) for remotely manipulating slave-side device (Figs. 2A: electro-surgical tools 101A-C; [0058]. Alternatively, see Fig. 16B: 1698), the master-side devi) comprising: a manipulator (158) including a grasping structure (adaptor, such as described in [0083] “mounting of robotic surgical tool 101A to the adapter 228 generally includes inserting the tip or distal end of the shaft or hollow tube of the robotic surgical tool through the cannula 219 and sliding the interface base 412 into engagement with the adapter 228”; also see [0073, 0084-0085]) and configured to a moveable part of the slave device (101, [0291] and see Fig. 2B, controls degrees of freedom in the pitch, roll, yaw directions as controlled by motor 217). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify Omori in view of Swarup to include the adaptor for grasping and mounting
Regarding claim 2, Omori modified discloses the master-side device according to claim 1, Omori further discloses wherein the determining processing comprises:
performing display processing (display processor 106) that allows a selection of one or more options (touch-panel operation switches 108), and
based on an option of the one or more options being selected ([0080, 0082] and Figs. 7-8:108, each distal-end working unit 56 can be controlled to move in a roll direction, and this is controlled by one or more touch-panel operation switches 108, which is controlled between the operational states of ON and OFF state of the manipulators), determining not to turn the movable part in response to the specific manipulation ([0080, 0082] in OFF state) .
Regarding claim 3, Omori modified discloses the master-side device according to claim 2, Omori further discloses a display (display unit 36)), wherein the display processing displays a screen on the display on which a selection operator for selecting the option is arranged. (See rejection to claim 2 above, touch-panel operation switches 108, selectable in ON and OFF state)
Regarding claim 4, Omori modified discloses the master-side device according to claim 3, Omori further discloses wherein:
the one or more options include only a first option for selecting to perform turning of the movable part in the roll direction and a second option for selecting not to perform the turning of the movable part (see rejection to claim 2 above, [0080, 0082] and Figs. 7-8:108, each distal-end working unit 56 can be controlled to move in a roll direction, and this is controlled by one or more touch-panel operation switches 108, which is controlled between the operational states of ON and OFF state of the manipulators), and
the selection operator comprises a button (108) that switches between a state in which the first option (i.e. ON state) is selected and a state in which the second option (i.e. OFF state) is selected each time the button is operated.
Regarding claims 5 and 6, Omori discloses the master-side device according to claim 4, wherein the first manipulator (robotic arms 24a-d) has a linkage (physical linkage as shown in Figs.3 and 9; also see [0050]) to the slave-side device (manipulator instruments, e.g. manipulators 12a, 12b, an endoscope 14) that links the master-side device to the slave-side device and allows the first manipulator to manipulate the movable part (distal-end working units 56) of the slave-side device; and wherein based on determining to turn the movable part in the roll direction (i.e. ON state), control the movable part to turn in the roll direction in response to the specific manipulation of the first manipulator ([0080, 0082] and Figs. 7-8:108, each distal-end working unit 56 can be controlled to move in a roll direction, and this is controlled by one or more touch-panel operation switches 108, which is controlled between the operational states of ON and OFF state of the manipulators). But Omori does not disclose wherein the control processing circuitry is configured to switch on and off the linkage based on the button; and based on determining not to turn the movable part in the roll direction, control the master-side device to switch off the linkage. v
Swarup teaches a master side device (Figs. 15A-15C: master grips; Fig. 16B:1650) for remotely manipulating slave-side device (Figs. 2A: electro-surgical tools 101A-C; [0058]. Alternatively, see Fig. 16B: 1698), the master-side devi) comprising: a manipulator (158) having a linkage (via master input/output processor 1603 and slave input/output processor 1607 ) to the slave-side device (101) to manipulate a moveable part of the slave device ([0291] and see Fig. 2B, controls degrees of freedom in the pitch, roll, yaw directions as controlled by motor 217 ); a display ([0292] “when entering the lock sensing mode, a flashing icon is displayed and when entering the locked mode the icon becomes solidly displayed”), and control processing circuitry (1603) configured to perform the display processing to control the display to display a screen icon for selecting ON or OFF of “lock mode” with respect to one or more slave devices, e.g. end effectors. and its respect range of motion ([0293-0295]). This is taken to encompass “control processing circuitry is configured to switch on and off the linkage based on the button” in the claim. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify Omori in view of Swarup to include a displayed icon to control a lock mode (i.e. ON and OFF state) for individual end effectors slave devices and their respect roll, pitch and yaw range of motion; the motivation for including the lock mode is to customize the full dexterity and grip strength of each individual tool (Swarup: [0294]), including “[t]he inner roll and pitch motion of the tip of the robotic surgical tool are not allowed to move as well in the lock mode (a.k.a., reduced dexterity mode) to maintain intuitiveness of the control…” (Swarup: [0293] )
Regarding claims 7-10 are rejected by Omori in view of Swarup under the same rationale as discussed to claims 1-4 above.
Regarding claim 11, Omori modified discloses the master-side device according to claim 7, Omori further discloses a display (display unit 36, wherein the control processing circuitry controls the display to display a button (touch-panel operation switches 108) that toggles between controlling to turn the movable part (distal-end working units 56) and not controlling to turn the movable part (56) , and the control processing circuitry determines whether or not to turn the moveable part based on the state of the button ([0080, 0082] and Figs. 7-8:108, each distal-end working unit 56 can be controlled to move in a range of motions/directions, and this is controlled by one or more touch-panel operation switches 108, which is controlled between the operational states of ON and OFF state of the manipulators)
Regarding claims 12-13, these claims are rejected by Omori in view of Swarup, under the same rationale as discussed to claims 5 and 6 immediately above.
Regarding claim 14, Omori teaches a master-side device (Fig.7: image processor 35 and console 26) for remotely manipulating a slave-side device (manipulator instruments), the master-side device comprising:
a display (display unit 36);
a first manipulator (robotic arms 24a-d) that has a linkage (physical linkage as shown in Figs.3 and 9; also see [0050]) with the slave-side device (manipulator instruments, e.g. manipulators 12a, 12b, an endoscope 14), the linkage allowing the first manipulator to manipulate a movable part (distal-end working units 56 capable of pitch yaw and roll movements) of the slave-side device (manipulators 12a, 12b, an endoscope 14; also see [0055-0056, 0080]); and
control processing circuitry (processor 106) configured to at least:
control the display to display a button (touch-panel operation switches 108) that toggles between controlling to turn the movable part (distal-end working units 56) in a roll direction (rotation around roll axis; [0080]) and not controlling to turn the movable part in the roll direction in response to a roll manipulation of the first manipulator ([0080, 0082] and Figs. 7-8:108, each distal-end working unit 56 can be controlled to move in a roll direction, and this is controlled by one or more touch-panel operation switches 108, which is controlled between the operational states of ON and OFF state of the manipulators), and based on a first state (i.e. ON state) of the button (108), maintain the linkage such that the movable part of the slave-side device is turned in response to the roll manipulation of the first manipulator (see Figs. 3-4 and [0059] controlling the roll movement of unit 56).
Omori does not explicitly disclose the first manipulator including a grasping structure; however, this would be an implicit structure of the first manipulator (i.e. robotic arms 24a-d) as it is necessary for grasping the movable part (distal-end working unit 56) of the slave-side device (manipulator instruments, e.g. manipulators 12a, 12b, an endoscope 14). Such as discussed in [0049-0052], the manipulator arms 24a-d have mounted thereon various different types of distal tools, e.g. gripper, scissors, endoscope, probe etc. The implicit mounting mechanism is interpreted as “grasping structure” in this claim.
Alternatively, Swarup, a prior art reference in analogous art, teaches a master side device (Figs. 15A-15C: master grips; Fig. 16B:1650) for remotely manipulating slave-side device (Figs. 2A: electro-surgical tools 101A-C; [0058]. Alternatively, see Fig. 16B: 1698), the master-side devi) comprising: a manipulator (158) including a grasping structure (adaptor, such as described in [0083] “mounting of robotic surgical tool 101A to the adapter 228 generally includes inserting the tip or distal end of the shaft or hollow tube of the robotic surgical tool through the cannula 219 and sliding the interface base 412 into engagement with the adapter 228”; also see [0073, 0084-0085]) and configured to a moveable part of the slave device (101, [0291] and see Fig. 2B, controls degrees of freedom in the pitch, roll, yaw directions as controlled by motor 217). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify Omori in view of Swarup to include the adaptor for grasping and mounting
Omori also does not disclose based on a second state (i.e. OFF state) of the button (108), switch off the linkage such that when the first manipulator is turned in the roll direction in response to the roll manipulation the movable part of the slave-side device is not turned in the roll direction.
Swarup, further teaches a display ([0292] “when entering the lock sensing mode, a flashing icon is displayed and when entering the locked mode the icon becomes solidly displayed”), and control processing circuitry (1603) configured to perform the display processing to control the display to display a screen icon for selecting a lock mode of one or more slave devices, e.g. end effectors and its respect range of motion in response to user’s selection ([0293-0295]). When a user selects ‘lock mode’, the system switch off the linkage such that when the manipulator is turned in the roll direction in response to the roll manipulation the movable part of the slave-side is not turned in the roll direction ([0289] “The robotic surgical system may 100 enter a lock mode so that a surgeon may easily selectively lock and unlock the wrist 402 and end effectors 414A-414B. The robotic surgical system 100 may also exit the lock mode to return the robotic surgical tool 400 to its normal range of motion and degrees of freedom”). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify Omori in view of Swarup to include a displayed icon to control a lock mode (i.e. ON and OFF state) for individual end effectors slave devices and their respect roll, pitch and yaw range of motion; the motivation for including the lock mode is to customize the full dexterity and grip strength of each individual tool (Swarup: [0294]), including “[t]he inner roll and pitch motion of the tip of the robotic surgical tool are not allowed to move as well in the lock mode (a.k.a., reduced dexterity mode) to maintain intuitiveness of the control…” (Swarup: [0293])
Regarding claim 15, Omori modified discloses the master-side device for remotely manipulating a slave-side device of claim 14, wherein the movable part of the slave-side device may (this is rejected under 35 USC 112(b) indefiniteness, the limitations following “may” are interpreted as optional) turn in a pitch direction and a pan direction in response to a pitch manipulation and a pan manipulation of the first manipulator when the button is in the second state and the linkage is switched off. (Swarup: [0294] full dexterity mode, both Swarup [0290] and Omori [0059-0060] teaches pitch direction. Neither Omori nor Swarup teaches pan direction movements, but this is taken as an optional limitation.)
Regarding claim 16, Omori modified discloses master-side device for remotely manipulating a slave-side device of claim 14, wherein when the button is in the second state, the movable part of the slave-side device does not turn with respect to only the roll direction. (Swarup: [00290-0291, 0294, 0296] lock or reduced dexterity mode)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIRLEY X JIAN whose telephone number is (571)270-7374. The examiner can normally be reached M-F 8:00-4:00.
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/SHIRLEY X JIAN/Primary Examiner, Art Unit 3792
August 5, 2026
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