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 .
Specification
The abstract of the disclosure is objected to because
a) it should avoid using phrases that can be implied, such as “Certain aspects relate to systems and techniques for…”;
b) it does not provide a concise statement of the technical disclosure including that which is new in the art to which the invention pertains, i.e. claimed subject matter.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities: paragraph [0001] must be updated as to the status of the parent applications, i.e. patent numbers.
Appropriate correction is required.
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.
Claim 1-9 and 12-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,076,098.
Except for a minor difference in terminology, it is clear that all elements of claims 1-9 and 12-18 are to be found in claims 1-20 of the patent. For instance, all elements of application claim 1 are found in claim 6 of the patent. It is noted that advancement or retraction of the elongated shaft recited in claim 1 of the application is considered as equivalent to advancement or retraction of the instrument base recited in claim 1 of the patent since the instrument base in the patent claim is recited as being connected to the elongated shaft. The other difference between claims 1-9 and 12-18 of the application and claims 1-20 of the patent lies in the fact that the patent claims includes many more elements (e.g. “pull wire”) and is thus more specific. Thus, the invention of claims 1-20 of the patent is in effect a "species" of the "generic" invention of claims 1-9 and 12-18 of the application. It has been held that the generic invention is "anticipated" by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-9 and 12-18 are anticipated by claims 1-20 of the patent, they are not patentably distinct from claims 1-20.
Claim 10-11 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12,076,098 in view of Hanuschik et al. (US 2017/0172674, hereinafter “Hanuschik”).
U.S. Patent No. 12,076,098 disclose that the joints provide a degree of freedom (e.g. movement) but fails specifically claim the nature of the movement, and particularly that the joints are configured to rotate or telescopically extend (i.e. translate). However, as is known in the art of surgical robotic manipulator systems, the joints in the robotic arm can be configured to provide rotational movement and/or translational movement to achieve the desired resultant movement of the entirety of the manipulator (Hanuschik: note telescoping joints 104 or 105, Fig.1B, [0047] and rotational joints 162,170a,170b, Fig.1E, [0050]). Therefore, use of rotating joints and/or telescoping joints in the manipulator system claimed in U.S. Patent 12,076,098 would have been obvious to one of ordinary skill in the art since these are types of joints known in the art to be suitable for moving manipulator arm assemblies.
Claim 1-2, 7-13, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-27 of U.S. Patent No. 11,666,393 in view of Hanuschik et al. (US 2017/0172674, hereinafter “Hanuschik”).
Claim 1 of U.S. Patent No. 11,666,393 recites substantially all elements of claim 1 of the application except for that each joint comprises an independent actuator providing at least one degree of freedom. It is noted that advancement or retraction of the elongated shaft recited in claim 1 of the application is considered as equivalent to advancement or retraction of the instrument base recited in claim 1 of the patent since the instrument base in the patent claim is recited as being connected to the elongated shaft. Hanuschik teaches, in the art of surgical robotic manipulator systems, that each joint in the manipulator art includes an independent actuator which will provide at least one degree of freedom (Hanuschik: each joint controlled by motors, [0050]). It would have been obvious to one of ordinary skill in the art to have provided each joint in the claimed invention of the ‘393 patent with an actuator, as taught by Hanuschik, to provide the predictable result of allowing controlled movement of the manipulator arm in the required number of degrees of freedom.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See references on PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN P LEUBECKER whose telephone number is (571)272-4769. The examiner can normally be reached Generally, M-F, 5:30-2:00.
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, Anhtuan T Nguyen can be reached at 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN P LEUBECKER/Primary Examiner, Art Unit 3795