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 .
Response to Amendment
In response to the amendment filed on 03/24/2026, Claims 2-3 have been cancelled, and Claims 1 and 4-13 are pending. In response to the claim amendments, the previous claim objections of claims 1 and 10 have been obviated.
Response to Arguments
Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive.
Applicant argues that the combination of Reis and Kostrzewski fails to disclose “the motor box and the transmission bod are connected to each other by a bayonet connection”, however the Examiner respectfully disagrees.
Applicant argues on Page 6 that since Reis teaches a square shaped motor box, then the motor box of Ries can not include a bayonet connection, however the Examiner respectfully disagrees. A circular bayonet connection can be disposed between two square plates such that when first attempting to connect the two square plates the square plates would be misaligned and then when the bayonet connection is fully secured, the square plates would be circumferentially aligned with one another. A bayonet connection is well known.
Furthermore, in response to applicant's argument that a bayonet connector cannot be used to modify the square plate box shape of Ries, the Examiner notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Reis teaches a motor box and a transmission box which are connected together, but is silent on the means of connection. Kostrzewski teaches different connection mechanisms for connecting two medical devices to each other, one of those connections being a bayonet connection, as claimed.
For the reasons stated above, the Examiner is maintaining the rejection of Claim 1 in light of Reis (US PGPub 2010/0175701) in view of Kostrzewski (US PGPub 2016/0151120).
As to Applicant’s arguments directed to the dependent claims as being patentable due to their dependency to Claim 1, the rejection of Claim1 is being maintained in light of the teachings of Reis (US PGPub 2010/0175701) in view of Kostrzewski (US PGPub 2016/0151120). Applicant has not separately argued the patentability of the dependent claims. Thus, the dependent claims are also being rejected.
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:
“a transmission mechanism” in claims 1-13.
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 § 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.
Claim(s) 1 and 4-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reis (US PGPub 2010/0175701) in view of Kostrzewski (US PGPub 2016/0151120).
Regarding Claim 1, Reis teaches a robotic surgical assembly (abstract) comprising:
at least one micro-manipulator (16; Figure 2; Paragraph 0047 and Paragraph 0074);
a motor box (110), attached to the micro-manipulator (16; Figure 10A; Paragraph 0074) and
a medical instrument (102) comprising a shaft (106; Figure 3B, 8D, 9A, 10A; Paragraph 0049) extending along an axis of longitudinal development, a transmission box (104) at one end of the shaft (106; Figure 3B; Paragraph 0048), and a jointed device at the other end of the shaft (Paragraph 0049, 0050 and 0056; as seen in Figure 11C);
wherein
said at least one micro-manipulator (16) comprises a motorized rotary joint for rotating the medical instrument (102) around a longitudinal axis of rotation that coincides with the axis of longitudinal development of the shaft (106; the rotation is marked as 176 in Figure 9B; Paragraph 0073 states the entire RCM 16 can be rotated with tools 102); and
wherein said motor box (110) contains a drive system (112/130) equipped for driving the jointed device (102; Paragraph 0051, 0056), and said transmission box (104) contains a transmission mechanism to transmit motor motion to the jointed device (Paragraph 0048, 0050, 0056, 0069, 0070; Figure 8A, 8C, and 8D);
said medical instruments (102) comprises tendons (160; Figure 8D) extending through the mechanical transmission box (105) and said shaft (106; Paragraph 0070; Figure 8D), and said jointed device comprises a plurality of tendon-actuated rotational joints (Paragraph 0050 and 0070; best seen in Figure 11C); and
wherein the motor box (110) and the transmission box (104) are connected to each other (Figure 3B, 9A, 11C; Paragraph 0051, 0054, and 0056).
Reis is silent on how the motor box and the transmission box are physically attached to one another and thus fails to disclose wherein the motor box and the transmission box are connected to each other via a bayonet connection.
Kostrzewski teaches a system for securing an instrument to a medical robot (Paragraph 0106; Figure 13), in which the instrument box (1350; which would house the transmission box) and the robotic arm (which would house the motor box) are connected to each other via a bayonet connection (1356 and 1354; Paragraph 0106; Figure 13).
Therefore, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute the connection mechanism between the motor box and the transmission of taught by Reis with the bayonet locking system as taught by Kostrzewski since it has been held that where the general conditions of a claim are disclosed in the prior art, the substitution of one known element for another yields predictable results to one of ordinary skill in the art; In this case, the bayonet locking system taught by Kostrzewski would be sufficient to provide attach the motor box and the transmission box together for the advantage of being a quick release system but also a strong physical connection.
Regarding Claim 4, the combination of references disclosed above teaches the robotic surgical assembly of claim 1, wherein Kostrzewski teaches a system for securing an instrument to a medical robot (Paragraph 0106; Figure 13), in which the instrument box (1350; which would house the transmission box) and the robotic arm (which would house the motor box) are connected to each other bayonet connection (1356 and 1354; Paragraph 0106; Figure 13), thus the transmission bod (1350) comprises two flaps (1356) which extend radially outward to engage with the slots (1354a/b) of the motor bod (1352).
Therefore, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute the connection mechanism between the motor box and the transmission of taught by Reis with the bayonet locking system as taught by Kostrzewski since it has been held that where the general conditions of a claim are disclosed in the prior art, the substitution of one known element for another yields predictable results to one of ordinary skill in the art; In this case, the bayonet locking system taught by Kostrzewski would be sufficient to provide attach the motor box and the transmission box together for the advantage of being a quick release system but also a strong physical connection.
Regarding Claim 5, the combination of references disclosed above teaches the robotic surgical assembly of claim 1, wherein Reis teaches comprising a sterile barrier (137), between the motor box (110) and the transmission box (104; see Figure 6D and Figure 9A; Paragraph 0065).
Regarding Claim 6, the combination of references disclosed above teaches the robotic surgical assembly of claim 1, wherein Reis teaches the medical instrument (102) is rigidly coupled to the micro-manipulator (16) through said motorized rotary joint (176; Figure 9B; Paragraph 0073; see also Figures 10D-10E which shows rotary movement 172 via joint formed my element 188; Paragraph 0078).
Regarding Claim 7, the combination of references disclosed above teaches the robotic surgical assembly of claim 1, wherein Reis teaches actuation pistons (130) extend out of the motor box (110) to actuate the transmission mechanism of the transmission box (104; as best seen in Figure 10A at the top plate of motor box 110).
Regarding Claim 8, the combination of references disclosed above teaches the robotic surgical assembly of claim 8, wherein Reis teaches the actuation pistons move along a linear direction (170; Figure 10B), the linear direction (170) being parallel to the axis of longitudinal development of the shaft of the medical instrument (as best seen in Figures 10B-10C).
Regarding Claim 9, the combination of references disclosed above teaches the robotic surgical assembly of claim 1, wherein Reis teaches said at least one micro-manipulator (16) provides multiple motorized degrees of freedom of movement to the medical instrument (102) (Figure 1 and Figure 11C).
Regarding Claim 10, the combination of references disclosed above teaches the robotic surgical assembly of claim 1, wherein Reis teaches said at least one micro-manipulator (16) provides multiple motorized degrees of freedom of movement to the shaft (106) of the medical instrument (Figure 1 and 11C).
Regarding Claim 11, the combination of references disclosed above teaches the robotic surgical assembly of claim 1, wherein Reis teaches the jointed device of the medical instrument (102) has two degrees of freedom of rotation orthogonal to each other to form a jointed wrist (Figure 11C).
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reis (US PGPub 2010/0175701) and Kostrzewski (US PGPub 2016/0151120) as applied to claim 1 above, and further in view of Nowlin (US Patent 8,004,229)
Regarding Claim 12, the combination of references disclosed above teaches the robotic surgical assembly of claim 1, but fails to disclose comprising a further micro-manipulator and a further medical instrument, wherein both said micro-manipulator and said further micro-manipulator are attached to a same support member of a positioning arm.
Nowlin teaches a robotic surgical assembly (abstract) comprising a micro-manipulator (304) and a medical instrument (302) attached to the micro-manipulator (304) (Figure 1C), the system further comprising a further/second micro-manipulator (304) and a further/second medical instrument (302; Figure 1C; Column 9, Lines 27-35), wherein both said micro-manipulator (304) and said further micro-manipulator (304) are attached to a same support member (302; Figure 1C) of a positioning arm (arm of a cart as disclosed in Column 9, Lines 9-17).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to increase the number of micro-manipulators and associated medical instruments for the advantage of using multiple tools to manipulate tissue in the same work area.
Regarding Claim 13, the combination of references disclosed above teaches the robotic surgical assembly of claim 10, wherein Nowlin teaches the medical instrument (308) and the further medical instrument (308) share a common work volume (see Figure 1C).
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 MOHAMED GAMIL GABR whose telephone number is (571)272-0569. The examiner can normally be reached M-F 9am-5pm.
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, Jackie Ho can be reached at (571) 270-5953. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMED G GABR/Primary Examiner, Art Unit 3771
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