CTNF 18/781,130 CTNF 94002 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-24 of U.S. Patent No. US 12114948 B2, claims 1-20 of US 11607281 B2, and claims 1-18 of US 10646291 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims read on the application claims . Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-21 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. Regarding claims 1, 13, and 18, the term “a first determination of whether a movement of the input control includes a change” has antecedent basis since “a movement” is already introduced earlier. Regarding claims 15 and 20, the “grip separation” part is inconsistent since it conflicts with the “does not include a change in grip separation” in claims 13 and 18. The respective dependent claims fail to remedy the issues, therefore they are also rejected. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim (s) 1, 3-7, 11-15, 17-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gerbi (US 6587750 B2) in view of Itkowitz (US 8521331 B2) . Regarding claims 1, 13, and 18, A system comprising: a manually movable input control configured to generate one or more signals when a movement of one or more mechanical degrees of freedom of the input control is detected (eg. Col. 8 ,Ln. 49-Col. 9, Ln. 11); and a control module coupled to the input control (eg. Col. 7, Ln. 65 – Col. 8, Ln. 14); wherein the control module is configured to: the one or more criteria comprising at least one determination selected from the group consisting of: a first determination of whether a movement of the input control includes a change in a roll angle of the input control; a second determination of whether the movement of the input control includes a change in a grip separation of the input control; and a third determination of whether a first mechanical degree of freedom of the input control has moved while a second mechanical degree of freedom of the input control has not moved, wherein the first mechanical degree of freedom is affected by gravity and the second mechanical degree of freedom is not affected by gravity; and command the system to switch to a safe mode in response to determining that there is uncontrolled movement of the input; wherein: the safe mode comprises a mode in which an instrument does not move in response to movement of the input control control (eg. Col. 4, Ln. 7-13 for switching to safe mode). Gerbi does not disclose determine whether there is uncontrolled movement of the input control based on one or more criteria and command the system to switch to a safe mode in response to determining that there is uncontrolled movement of the input. Itkowitz teaches a surgical robot that uses master tool grip technology that detects whether a surgeon is in proper contact with the master tool grip and switches into a safety feature if there is no control detected (eg. Col. 7 Ln. 1-32). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the invention of Gerbi with the detection for switching to safety mode as taught by Itkowitz since both are in the realm of teleoperated surgical robots and would provide added reliability for preventing accidents during the procedure using grip-separation and joint encoders in Gerbi. Regarding claim 3, 14, and 19, the combined invention of Gerbi and Itkowitz discloses the one or more criteria comprise the first determination; the input control comprises a plurality of links coupled by a plurality of joints that allow manual rotation of a distal end of the input control about an axis; and the roll angle comprises an angle of rotation of the distal end about the axis (eg. Gerbi, Fig. 7A, Col. 10, Ln. 58 – Col. 12, Ln. 20). Regarding claim 4, the combined invention of Gerbi and Itkowitz discloses the input control is configured to be manipulated by a hand of an operator (eg. Gerbi, Fig. 1, Ln. 34-51). Regarding claim 5, 15, and 20, the combined invention of Gerbi and Itkowitz discloses the one or more criteria comprise the second determination; the input control comprises first and second gripping elements moveable relative to each other; and the grip separation comprises a separation between the first and second gripping elements (eg. Gerbi, Col. 9, Ln. 55-67). Regarding claim 6, the combined invention of Gerbi and Itkowitz discloses the one or more criteria comprise the third determination; the input control comprises a plurality of links coupled by a plurality of joints that allow manual rotation of a distal end of the input control about an axis; the first mechanical degree of freedom is associated with a first joint of the plurality of joints; and the second mechanical degree of freedom is associated with a second joint of the plurality of joints (eg. Gerbi, Col. 15, Ln. 50-Col. 16, Ln. 5). Regarding claim 7, the combined invention of Gerbi and Itkowitz discloses determine whether there is uncontrolled movement of a second input control; and command the system to switch to the safe mode in response to determining that there is uncontrolled movement of the second input control (eg. Itkowitz, multiple master tool grips 170A and B, Col. 6, Ln. 79 – Col. 7, Ln. 65). Regarding claim 11, 17, and 21, the combined invention of Gerbi and Itkowitz discloses command the system to exit the safe mode in response to an operator performing a deliberate action with the input control (eg. Gerbi, Col. 3, Ln. 65 – Col. 4, Ln. 67, Col. 15, Ln. 37-50). Regarding claim 12, the combined invention of Gerbi and Itkowitz discloses the input control comprises first and second gripping elements moveable relative to each other; and the deliberate action comprises a squeezing of the first and second gripping elements (eg. Gerbi, Fig. 7A, Col. 10, Ln. 58 – Col. 12, Ln. 20) . 07-21-aia AIA Claim (s) 2, 8-10, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gerbi (US 6587750 B2) in view of Itkowitz (US 8521331 B2), further in view of Dimaio (WO 2011/060185 A1) . Regarding claim 2, the combined invention of Gerbi and Itkowitz discloses the invention of claim 1, but does not disclose to switch the system to the safe mode in response to determining that there is uncontrolled movement of the input control, the control module is configured to: switch the system from an operating mode to the safe mode, wherein the operating mode comprises a following mode in which the control module causes motion of the instrument in response to movement of the input control. Dimaio teaches determining teleoperated surgical device that determines the position of the surgeon’s han and position of the corresponding master tool grip. If the difference in the positions is within a predetermined distance, following is permitted, and otherwise following is inhibited (eg. Para. 62, 103-104). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the invention with Dimaio and Itkowitz with the switching of the modes using thresholds as taught by Dimaio to provide the predictable result of having additional safety measures to prevent accidents related to surgery by inhibiting movement. Regarding claims 8 and 16, the combined invention of Gerbi, Itkowitz, and Dimaio discloses the one or more criteria further comprise: a fourth determination of whether a distance of the movement of the input control relative to a previous position of the input control is greater than a threshold distance, wherein the previous position is associated with when a last definitive movement of the input control was detected (eg. Dimaio, Para. 62, 103-104). Regarding claim 9, the combined invention of Gerbi, Itkowitz, and Dimaio discloses determine the threshold distance based on a parameter selected from the group consisting of: a speed of the movement of the input control; a type of an instrument being controlled using the input control; a current pose of the input control; a degree of freedom of the input control that is moved by the movement; and a dimension of a workspace in which the input control is located (eg. Dimaio, Para. 62-68). Regarding claim 10, the combined invention of Gerbi, Itkowitz, and Dimaio discloses allow, in response to the distance being at or below the threshold distance, control of the instrument based on further manual movement of the input control after the movement (eg. Dimaio, Para. 62-68 and 103-104). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J LAU whose telephone number is (571)272-2317. The examiner can normally be reached 8-5:30 PM. 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, Carl Layno can be reached at 571-272-4949. 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. /MICHAEL J LAU/ Examiner, Art Unit 3796 Application/Control Number: 18/781,130 Page 2 Art Unit: 3796 Application/Control Number: 18/781,130 Page 3 Art Unit: 3796 Application/Control Number: 18/781,130 Page 5 Art Unit: 3796 Application/Control Number: 18/781,130 Page 6 Art Unit: 3796 Application/Control Number: 18/781,130 Page 7 Art Unit: 3796 Application/Control Number: 18/781,130 Page 8 Art Unit: 3796
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