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 .
Information Disclosure Statement
Receipt is acknowledged of an Information Disclosure Statement (IDS), filed 02 June 2026, which has been placed of record in the file. An initialed, signed, and dated copy of each PTO-1449 or PTO-SB-08 form is attached to the Office action.
Response to Amendment
Receipt is acknowledged of an amendment, filed 10 August 2026, which has been placed of record and entered in the file.
Status of the claims:
Claims 1-20 are pending.
Claim 18 is amended.
Specification and Drawings:
Amendments to the specification and drawings have not been submitted in the amendment filed 10 August 2026.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kapadia (US Patent Publ. No. 2023/0035946) in view of Overmyer (US Patent Publ. No. 2021/0052343).
With respect to claim 18, Kapadia discloses a surgical device (robotic surgical system 1, fig. 1) comprising: an elongated shaft (elongated shaft 14, fig. 2); a control housing coupled to the elongated shaft (housing portion 12, fig. 2), wherein the control housing is configured to attach to a motor housing (instrument drive unit 80, [0032]); an end effector coupled to the elongated shaft (end effector 16); and a trocar configured to be pivotally coupled to a support of a computerized surgical manipulation system such that the trocar can pivot away from axial alignment with the support (trocar 200 pivots on pivotable trocar mount 150, trocar mount 150 is coupled to elongate member 140, figs. 2, 4A, 4B, 5); wherein, when the trocar is pivoted into axial alignment with the support, the control housing is operable to mate with the motor housing (when the trocar 200 is pivoted into axial alignment with the support, the ramped surface of interface module 82 receives the ramped surface 22 of the coupling mechanism 20 of housing 12, fig. 5, [0032]) by lowering the control housing to the motor housing or by raising the motor housing to the control housing (fig. 5). Kapadia discloses that, as the trocar 200 is pivoted into and out of alignment with the support, the housing 12 is raised/lowered with respect to the instrument drive unit 80, since pivoting movement includes both side-to-side movement and up/down movement (fig. 5). Since the support 140 is manipulated by the robotic arm, the support may be held in any direction, such that the housing is lowered with respect to the instrument drive unit 80 when the trocar 200 is pivoted into axial alignment with the support. Accordingly, Kapadia is considered to disclose that the control housing is operable to mate with the motor housing by lowering the control housing to the motor housing.
Kapadia fails to disclose the end effector includes a clamping mechanism having an anvil and a cartridge for supplying surgical staples.
Overmyer discloses a computerized surgical manipulation system (fig. 3) including a surgical device comprising an end effector including a clamping mechanism having an anvil and cartridge for supplying surgical staples (fig. 4, [0002], [0031]).
It 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 to modify the Kapadia device to replace the forceps or grasping member with the anvil and cartridge as taught by Overmyer, to provide a system capable of performing stapling procedures, especially since Kapadia disclose that different end effectors may be used ([0002]).
With respect to claim 19, Kapadia discloses the trocar includes a holding feature (trocar 200 with head 202, fig. 5) having an inner wall and an outer wall (head 202 includes an inner proximally facing wall and an outer distally facing wall facing the trocar 200, fig. 5), wherein the holding feature of the trocar is pivotally coupled to the support through a gripping member (head 202 is pivotally coupled to the support by the pivotable trocar mount 150, fig. 4B), wherein an angled gap is formed between the gripping member and the inner wall when the trocar is axially aligned with the support (fig. 4A), and wherein a second angled gap is formed between the gripping member and the outer wall when the trocar is pivoted away from axial alignment with the support (fig. 4B).
With respect to claim 20, Kapadia discloses a control interface attached to a motor interface, but fails to disclose the control interface has a plurality of platters, wherein the motor housing has a motor interface with a plurality of platters, and wherein the plurality of platters on the control interface selectively attaches to the plurality of platters on the motor interface to join the control housing and the motor housing.
Overmyer discloses a system including a control interface (drive housing 408) and a motor interface (tool driver 704), each including a plurality of platters (drive inputs 708a-f, drivers 710a-f), wherein the platters on the control interface selectively attaches to the platters on the motor interface to join the control housing and the motor housing (fig. 7, [0042]).
It 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 to modify the surgical system of Kapadia to include the control interface and the motor interface each including a plurality of platters selectively attached to each other as taught by Overmyer to provide a drive system for moving the end effector.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,064,198. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13 of the patent “anticipate” claims 1-17 of the application. It is apparent that the application claims differ from the patent claims in that the patent claims are more specific. Here, patent claim 1 requires a surgical system including a surgical device including an “elongated shaft having a proximal end and a distal end”, a control housing, and a pivotable trocar, while application claim 1 only requires a surgical system including a surgical device including an “elongated shaft having a first end and a second end”, a control housing, and a pivotable trocar. Patent claim 9 requires a surgical system including a surgical device including an “elongated shaft having a proximal end and a distal end”, a control housing, a pivotable trocar having a holding feature, and an angled gap between a gripping member and the holding feature, while application claim 10 only requires a surgical system including a surgical device including an “elongated shaft having a first end and a second end”, a control housing, and a pivotable trocar having a holding feature. Any remaining differences are only differences in verbiage without any difference in meaning. Application claims 1, and 10 are not patentably distinct from patent claims 1, and 9 because the more specific patent claims anticipate the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
The application claims and the patent claims match up as follows:
Application Claims
Patent Claims (US Patent No. 12,064,198)
1, 6
1
2
2
3
3
4
4
5
5
7, 15
6
8, 16
7
9
8
10, 13
9
11
10
12
11
14
12
17
13
Claims 1-17 would be allowable if a proper Terminal Disclaimer and the requisite fee is filed.
Response to Arguments
With respect to the rejections of claims 18-20 under 35 U.S.C. 112(a) and (b), the claim amendments and applicant’s arguments have been fully considered and are persuasive. The rejections are hereby withdrawn.
With respect to the rejection of claims 1, 4-5, 7, 10, 13, and 15 under 35 U.S.C. 102(a)(2) over Kapadia, applicant’s arguments have been fully considered and are persuasive.
Applicant argues that Kapadia fails to disclose or teach "wherein the trocar containing the surgical device is pivoted into axial alignment with the support such that the notch receives the elongated shaft of the surgical device" as recited in independent claims 1 and 10.
Kapadia discloses a robotic surgical system 1 comprising an elongated shaft 14, a housing portion 12 coupled to the elongated shaft, the housing configured to attach to an instrument drive unit 80, an end effector 16 coupled to the elongated shaft, and a trocar 200 pivotally coupled to a support of the system, wherein the trocar is pivoted into axial alignment with the support such that the ramped surface of interface module 82 receives the ramped surface 22 of the coupling mechanism 20 of housing 12, and the housing engages the motor housing.
As noted by applicant, Kapadia discloses the elongated shaft 14 extending distally from a distal end of the housing portion 12, and a proximal end of the housing portion 12 has a proximal coupling mechanism 20 defining a ramped surface 22 configured for slidable engagement in a correspondingly configured sterile interface module 82 which couples the surgical instrument 10 to a distal end portion 84 of the instrument drive unit 80. Kapadia fails to disclose or teach the elongated shaft received in a notch.
Thus, Kapadia fails to disclose or teach "wherein the trocar containing the surgical device is pivoted into axial alignment with the support such that the notch receives the elongated shaft of the surgical device" as recited in independent claims 1 and 10.
Accordingly, the rejection of claims 1, 4-5, 7, 10, 13, and 15 under 35 U.S.C. 102(a)(2) over Kapadia, and the rejection of claims 2,8-9, 11, and 16-17 under 35 U.S.C. 103 over Kapadia in view of Overmyer are hereby withdrawn.
Applicant’s request that the rejection of claims 1-20 under non-statutory double patenting be held in abeyance has been fully considered but has not been found persuasive. The rejection of claims 1-17 under non-statutory double patenting is still deemed proper.
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 Linda J. Hodge whose telephone number is (571)272-0571. The examiner can normally be reached Monday-Friday 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA J. HODGE/Primary Examiner, Art Unit 3731
