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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 20 February 2026 has been entered.
Response to Amendment
Receipt is acknowledged of an amendment, filed 20 February 2026, which has been placed of record and entered in the file.
Status of the claims:
Claims 1-20 are pending.
Claims 3, 12, and 18 are amended.
Specification and Drawings:
Amendments to the specification and drawings have not been submitted in the amendment filed 20 February 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 18-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
There is inadequate written description of the subject matter of amended claim 18. Claim 18 recites “a motor housing coupled to the elongated shaft” and “wherein, when the trocar is pivoted away from axial alignment with the support, the elongated shaft extends into the pivoted trocar and the motor housing is separated from the control housing by a first distance, wherein, when the trocar is pivoted into axial alignment with the supports the motor housing is separated from the control housing by a second distance, and wherein the second distance is less than the first distance”.
There is no disclosure in the originally filed application of the motor housing coupled to the elongated shaft, nor of the motor housing being separated from the control housing by a first and second distance. The written description and the drawings disclose the motor housing coupled to the support, and disclose “Pivoting or tilting trocar 500 away from axial alignment with support 820 brings inner wall 560 in contact with gripping member 600 and forms second angled gap 02 between gripping member 600 and outer wall 570 of recess 550” ([0052]).
Accordingly, the claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention.
The subject matter of these elements has not been described in the specification in such a way as to reasonably convey to one skilled in the art how to make and use the invention, and comprise new matter.
Applicant’s response filed on 20 February 2026 fails to specifically point out in the Remarks where there is support for the limitations, and there appears to be no written description of the claim limitations in the application as filed.
Accordingly, applicant is required to respond by: specifically pointing out where adequate written description can be found for the limitations; making an amendment to address the deficiency or making appropriate correction.
While no prior art has been applied with respect to claims 18-20, this is not an indication of allowable subject matter in claims 18-20.
Claims 18-20 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.
Claim 18 is ambiguous as the phrases “a motor housing coupled to the elongated shaft” and “wherein, when the trocar is pivoted away from axial alignment with the support, the elongated shaft extends into the pivoted trocar and the motor housing is separated from the control housing by a first distance, wherein, when the trocar is pivoted into axial alignment with the supports the motor housing is separated from the control housing by a second distance, and wherein the second distance is less than the first distance” are unclear. It is not clear in what manner the motor housing and the control housing are both coupled to the shaft, and, upon pivoting of the shaft, the motor housing separates from the control housing.
Clarification and/or correction is required.
Claim Rejections - 35 USC § 102
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)(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 1, 4-5, 7, 10, 13, and 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kapadia (US Patent Publ. No. 2023/0035946).
With respect to claim 1, Kapadia discloses a surgical system (fig. 1) comprising: (a) a surgical device (robotic surgical system 1, fig. 1), wherein the surgical device includes: (i) an elongated shaft having a first end and a second end (elongated shaft 14, fig. 2); and (ii) a control housing coupled to the first end of the elongated shaft (housing portion 12, fig. 2), wherein the control housing is configured to attach to a motor housing having a notch (instrument drive unit 80, interface module 82 having a ramped surface, [0032]), wherein the motor housing is configured to be coupled to a support of a computerized surgical manipulation system (instrument drive unit 80 is coupled to elongate member 140, fig. 2); and (b) a trocar configured to be pivotally coupled to the support such that the trocar can pivot away from axial alignment with the support (trocar 200 pivots on pivotable trocar mount 150, figs. 4A, 4B, 5), wherein the second end of the elongated shaft extends into the pivoted trocar (fig. 5), 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 (when the trocar 200 is pivoted into axial alignment, the ramped surface of interface module receives the ramped surface 22 of the coupling mechanism 20 of the housing 12, fig. 5, [0032]), and wherein the control housing engages the motor housing (housing 12 engages instrument drive unit 80, interface module 82, fig. 5). Kapadia discloses that the shaft 14 is mounted to and extends from the housing 12, and thus, when the trocar 200 is pivoted into axial alignment and the ramped surface of interface module receives the ramped surface 22 of the coupling mechanism 20, the shaft 14 is received in the notch via the coupling mechanism.
With respect to claim 4, 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)
With respect to claims 5 and 13, Kapadia discloses the holding feature of the trocar is configured to be 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 claims 7 and 15, Kapadia discloses the control housing has a control interface (proximal portion of housing 12, fig. 5), wherein the motor housing has a motor interface (distal portion of interface module 82, fig. 5), and wherein the control interface selectively attaches to the motor interface to join the control housing and the motor housing (fig. 5).
With respect to claim 10, Kapadia discloses a surgical system (fig. 1) comprising: (a) a surgical device (robotic surgical system 1, fig. 1), wherein the surgical device includes: (i) an elongated shaft having a first end and a second end (elongated shaft 14, fig. 2); and (ii) a control housing coupled to the first end of the elongated shaft (housing portion 12, fig. 2), wherein the control housing is configured to attach to a motor housing having a notch (instrument drive unit 80, interface module 82 having a ramped surface, [0032]), wherein the motor housing is configured to be coupled to a support of a computerized surgical manipulation system (instrument drive unit 80 is coupled to elongate member 140, fig. 2); and (b) a trocar having a holding feature (trocar 200 with head 202, fig. 5), wherein the holding feature has 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 is configured to be pivotally coupled to the support such that the trocar can pivot away from axial alignment with the support (head 202 is pivotally coupled to the support by the pivotable trocar mount 150, fig. 4B), wherein the second end of the elongated shaft extends into the pivoted trocar (fig. 5), 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 (when the trocar 200 is pivoted into axial alignment, the ramped surface of interface module receives the ramped surface 22 of the coupling mechanism 20 of the housing 12, fig. 5, [0032]), and wherein the control housing engages the motor housing (housing 12 engages instrument drive unit 80, interface module 82, fig. 5). Kapadia discloses that the shaft 14 is mounted to and extends from the housing 12, and thus, when the trocar 200 is pivoted into axial alignment and the ramped surface of interface module receives the ramped surface 22 of the coupling mechanism 20, the shaft 14 is received in the notch via the coupling mechanism.
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 2, 8, 9, 11, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kapadia in view of Overmyer (US Patent Publ. No. 2021/0052343).
With respect to claims 2 and 11, Kapadia discloses a surgical instrument comprising an end effector 16 comprising a clamping mechanism (a grasping member or forceps, [0002]), but fails to disclose the clamping mechanism includes 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 claims 8 and 16, Kapadia discloses a control interface attached to a motor interface, but fails to disclose the control interface and the motor interface each include a plurality of platters that are associated with specific mechanical features of the surgical device, wherein the platters on the control interface are configured to mate with the platters on the motor interface.
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) associated with specific mechanical features of the surgical device, wherein the platters on the control interface are configured to mate with the platters on the motor interface (fig. 7, [0042]), and that drive the movement of the end effector ([0034])
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 associated with mechanical features and that mate with each other as taught by Overmyer to provide a drive system for moving the end effector.
With respect to claims 9 and 17, Kapadia disclose a control housing (housing 12), but fails to disclose a bailout mechanism configured to the control housing for manually controlling mechanical operations of the surgical device.
Overmyer discloses a surgical system including a bailout mechanism configured for manually controlling mechanical operations of the end effector of the surgical device ([0004]).
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 bailout mechanism as taught by Overmyer to provide manual control in the event of an emergency.
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
Response to Arguments
Applicant’s arguments with respect to the rejection of claims 3 and 12 under 35 U.S.C. 112(b), have been considered and are persuasive. The rejection is hereby withdrawn.
Applicant’s arguments with respect to claims 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zemlok et al. (WO 2017/205333) disclose a notch in a motor housing (fig. 21B).
Karguth et al. (US Patent Publ. No. 2019/0159851) disclose a shaft receiving notch (fig. 6c).
Solomon et al. (US Patent Publ. No. 2007/0089557) disclose a shaft receiving notch (fig. 5B).
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.
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, 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.
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.
/LINDA J. HODGE/Examiner, Art Unit 3731
Prosecution Insights