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 .
This action is in response to the Election/Restriction response filed on 06/26/2026. Claims 2-21 are pending. Claims 2 and 12 are independent. Claim 1 is canceled.
Election/Restrictions
Applicant’s election without traverse of Species WA (Figure 7) for the Wrist in the reply filed on 06/26/2026is acknowledged.
Applicant's election with traverse of Species IA (Figures 4 and 9) for the Instrument Shaft in the reply filed on 06/26/2026 is acknowledged. The traversal is on the ground(s) that not all of the identified figures include a component identified as an “instrument shaft” and the identified species are not mutually exclusive. After reconsideration, Species IA (Figures 4 and 9) and Species IB (Figure 10) are combined as a species and examiner. However, Species IC remains as a distinct species because the actuation element guides disposed within the shaft are considered as parts of the shaft, and thus Species IC (Figure 26) is mutually exclusive from the actuation element guides of the shaft shown in Species IA (Figures 4 and 9) and Species IB (Figure 10).
Applicant’s election of Species SA (Figures 11 and 12) in the reply filed on 06/26/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
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.
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.
Claim(s) 12 and 19-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rogers et al. (US Pub. No.: 2011/0071347).
Regarding claims 12 and 19-21, Rogers discloses a medical instrument comprising: an instrument proximal portion (502, Fig. 7B); a flexible hollow shaft (506 and/or effector, Fig. 7B and see Abstract) coupled to the instrument proximal portion and extending along a longitudinal axis; a plurality of flexible elements (combination of 740 and 734, Figs. 7B and Para. [0107]) extending within the flexible hollow shaft; and a proximal block (one of the roller block between 732 and the proximal end of 502 through which the flexible elements extends; alternatively, the combination of 732 and one of the roller block between 732 and the proximal end of 502 through which the flexible elements extends) disposed in the instrument proximal portion and through which each of the plurality of flexible elements extends, wherein a portion of each of the plurality of flexible elements components within the proximal block are configured to remain rotationally fixed as the flexible hollow shaft is rotated about the longitudinal axis (Fig. 7B, a portion of each of the plurality of flexible elements components the proximal block are configured to remain rotationally fixed as the flexible hollow shaft is rotated about the longitudinal axis); [claim 19] a roll transmission mechanism (742, Fig. 7B and Para. [0107]) disposed in the instrument proximal portion and fixed to a proximal end portion of the flexible hollow shaft (Para. [0107]), the roll transmission mechanism configured to rotate the flexible hollow shaft about the longitudinal axis (Para. [0107]); [claim 20] wherein the roll transmission mechanism includes a gear (Fig. 7B); [claim 21] an actuation input mechanism (740, Fig. 7B) disposed in the instrument proximal portion, the actuation input mechanism engaged with the roll transmission mechanism to rotate the flexible hollow shaft about the longitudinal axis (Para. [0107]).
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lathrop et al. (US Pub. No.: 2012/0277762).
Regarding claims 12 and 13, Lathrop disclose a medical instrument (150, Figs. 14 and 15) comprising: an instrument proximal portion (combination of 70 and 80, Fig. 14); a flexible hollow shaft (Fig. 14-15, combination of 12 and 16 excluding the distal effector is considered to be a flexible hollow shaft because is includes a bendable portion at 12) coupled to the instrument proximal portion and extending along a longitudinal axis; a plurality of flexible elements (combination of 142, 144, 36, and 38, Fig. 15 and Para. [0082]) extending within the flexible hollow shaft; and a proximal block (84, Fig. 15) disposed in the instrument proximal portion and through which each of the plurality of flexible elements extends (Fig. 15), wherein a portion of each of the plurality of flexible elements components within the proximal block are configured to remain rotationally fixed as the flexible hollow shaft is rotated about the longitudinal axis (a portion of each of the plurality of flexible elements components within the proximal block are configured to remain rotationally fixed relative to the proximal block as the flexible hollow shaft is rotated about the longitudinal axis by rotating the entire instrument about the longitudinal axis); and [claim 13] wherein the proximal block includes a plurality of passages (plurality of passages at 84, Fig. 15)and wherein each of the plurality of flexible elements extends within a respective one of the plurality of passages (Fig. 15).
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US Pub. NO.: 2006/0095074).
Regarding claims 12 and 13, Lee discloses a medical instrument comprising: an instrument proximal portion (12 and 24, Fig. 22); a flexible hollow shaft (14, Fig. 22 and Para. [0051]) coupled to the instrument proximal portion and extending along a longitudinal axis; a plurality of flexible elements (100A’, 100B’, 100C’, and 100D’, Figs. 22 and 23) extending within the flexible hollow shaft; and a proximal block (a proximal block at proximal portion of 24 within 12, Figs. 22 and 23) disposed in the instrument proximal portion and through which each of the plurality of flexible elements extends, wherein a portion of each of the plurality of flexible elements components within the proximal block are configured to remain rotationally fixed as the flexible hollow shaft is rotated about the longitudinal axis (wherein a portion of each of the plurality of flexible elements components within the proximal block are configured to remain rotationally fixed relative to the block as the flexible hollow shaft is rotated about the longitudinal axis, Figs. 22 and 23); and [claim 13] wherein the proximal block includes a plurality of passages and wherein each of the plurality of flexible elements extends within a respective one of the plurality of passages (Figs. 22 and 23).
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 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.
Claim(s) 2-4, 6-11 and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rogers et al. (US Pub. No.: 2011/0071347).
Regarding claim 2, Rogers discloses, in one embodiment (Fig. 7B), a medical instrument comprising: an instrument proximal portion (502, Fig. 7B); a flexible hollow shaft (506 and/or effector, Fig. 7B and see Abstract) coupled to the instrument proximal portion and extending along a longitudinal axis (Fig. 7B); a plurality of flexible elements (combination of 740 and 734, Figs. 7B and Para. [0107]) extending within the flexible hollow shaft; and a roll transmission mechanism (742, Fig. 7B and Para. [0107]) disposed in the instrument proximal portion and fixed to a proximal end portion of the flexible hollow shaft (Para. [0107]), the roll transmission mechanism configured to rotate the flexible hollow shaft about the longitudinal axis (Para. [0107]), wherein a portion of each of the plurality of flexible elements extending within the instrument proximal portion is rotationally fixed relative to the instrument proximal portion (Fig. 7B and Para. [0101]; also see Para. [0108]). However, Rogers does not specifically disclose that wherein a distal portion of each of the plurality of flexible elements is fixed relative to a distal end portion of the flexible hollow shaft in the embodiment shown in Fig. 7B.
Rogers further discloses, in another embodiment (Fig. 6A and 6B), a distal portion of each of the plurality of flexible elements (combination of 608 and 610, Fig. 6A; alternatively combination of 626 and 628, Fig. 6B) is fixed relative to a distal end portion of the flexible hollow shaft (Figs. 6A or 6B and Para. [0103] or [0104], a distal portion of each of the plurality of flexible elements is fixed relative to a distal end portion of the flexible hollow shaft via the effector).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the medical instrument of the embodiment shown in Fig. 7B to include a distal portion of each of the plurality of flexible elements is fixed relative to a distal end portion of the flexible hollow shaft as taught in the embodiment shown in Fig. 6A/6B in order to obtain the advantage of facilitating the manipulation of effector and/or the bending the shaft (Para. [0103] or [0104]).
Regarding claim 3, the plurality of the flexible elements of the modified invention of Rogers are configured to twist about the about the longitudinal axis as the flexible hollow shaft is rotated about longitudinal axis because distal ends of the flexible elements are fixed to the distal end portion of the flexible shaft and the proximal end of the flexible elements are fixed to the instrument proximal portion.
Regarding claim 4, Rogers discloses a proximal block (732, Fig. 7B or 762, Fig. 7C) disposed in the instrument proximal portion, wherein the plurality of flexible elements extend within the proximal block and wherein each of the plurality of flexible elements is rotationally fixed relative to the instrument proximal portion by the proximal block as the flexible hollow shaft is rotated about the longitudinal axis (Para. [0107] and [0108]).
Regarding claim 6, Rogers discloses that the plurality of flexible elements includes an actuation element component fixed to the distal end portion of the flexible hollow shaft, the actuation element component actuatable to bend the flexible hollow shaft (Para. [0104] and [0116])
Regarding claim 7, Rogers discloses that the actuation element component includes an inner tendon (Fig. 8A, combination of 804a/804b and 802a/802b) and an outer guide member (Fig. 8A, 806a/806b).
Regarding claim 8, Rogers discloses a capstan (736, Fig. 7B) disposed in the instrument proximal portion, wherein the inner tendon is coupled to the capstan (Para. [0107]).
Regarding claim 9, Rogers discloses a proximal block (732, Fig. 7B; alternatively one of the roller block between 732 and the proximal end of 502 through which the flexible elements extends) disposed in the instrument proximal portion, wherein the plurality of flexible elements extend within the proximal block and wherein each of the plurality of flexible elements is rotationally fixed relative to the instrument proximal portion by the proximal block as the flexible hollow shaft is rotated about the longitudinal axis (the plurality of flexible elements extend within the proximal block and wherein each of the plurality of flexible elements is rotationally fixed relative to the instrument proximal portion along the longitudinal axis by the proximal block as the flexible hollow shaft is rotated about the longitudinal axis) and wherein the inner tendon is configured to slide longitudinally within the proximal block when the capstan is rotated (Fig. 7B and Pars. [0107]).
Regarding claim 10, Rogers discloses that the roll transmission mechanism includes a gear (Fig. 7B).
Regarding claim 11, Rogers discloses an actuation input mechanism (740, Fig. 7B) disposed in the instrument proximal portion, the actuation input mechanism engaged with the roll transmission mechanism to rotate the flexible hollow shaft about the longitudinal axis (Para. [0107]).
Regarding claims 14-15, Rogers discloses all the limitations of claim 12 but fails to disclose, in the embodiment shown in Fig. 7B, that the plurality of flexible elements includes an actuation element component fixed at a distal end portion of the flexible hollow shaft, the actuation element component actuatable to bend the flexible hollow shaft; and wherein the plurality of flexible elements are configured to twist about the longitudinal axis as the flexible hollow shaft is rotated about longitudinal axis. However, Rogers discloses, in another embodiment (Fig. 6B or Fig. 8A), that the plurality of flexible elements includes an actuation element component (628 and 626, Fig. 6B; alternatively, combination of 804a/804b, 802a/802b, and 806a/806b, Fig. 8A) fixed at a distal end portion of the flexible hollow shaft, the actuation element component actuatable to bend the flexible hollow shaft (Para. [0104]); and wherein the plurality of flexible elements are configured to twist about the longitudinal axis as the flexible hollow shaft is rotated about longitudinal axis (the plurality of flexible elements are configured to twist about the longitudinal axis as the flexible hollow shaft is rotated about longitudinal axis because they are fixed to the distal portion of the shaft via the effector and are fixed instrument proximal portion).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the medical instrument shown in Fig. 7B of Rogers to include that the plurality of flexible elements includes an actuation element component fixed at a distal end portion of the flexible hollow shaft, the actuation element component actuatable to bend the flexible hollow shaft; and wherein the plurality of flexible elements are configured to twist about the longitudinal axis as the flexible hollow shaft is rotated about longitudinal axis of the embodiment of the medical instrument shown in Fig. 6B of Rogers in order to obtain the advantage of facilitating the manipulation of effector and/or the bending the shaft (Para. [0104]).
Regarding claim 16, Rogers discloses that the actuation element component includes an inner tendon (Fig. 8A, combination of 804a/804b and 802a/802b) and an outer guide member (Fig. 8A, 806a/806b).
Regarding claim 17, Rogers discloses a capstan (736, Fig. 7B) disposed in the instrument proximal portion, wherein the inner tendon is coupled to the capstan (Para. [0107]).
Regarding claim 18, Rogers discloses that the inner tendon is configured to slide longitudinally within the proximal block when the capstan is rotated (Fig. 7B and Para. [0107]).
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20030036748 A1 Cooper, Thomas G. et al. discloses a surgical toold having tendon-actuated multi-disk wrist joint.
US 20040193146 A1 Lee, Woojin et al. discloses a robotically controlled surgical instrument.
US 20080294191 A1 Lee; Woojin discloses a surgical instrument having cables for controlling the bending of the shaft.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JING RUI OU whose telephone number is (571)270-5036. The examiner can normally be reached M-F 9:00am -5:00pm.
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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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/JING RUI OU/Primary Examiner, Art Unit 3771
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