DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
In response to the amendment filed on 10/4/2024, Claim 1 has been cancelled, and newly added Claims 2-21 are pending.
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 2-6 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 9888966 (hereinafter Pat ‘966). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding present claim 2, claim 1 of Pat ‘966 discloses a robotic surgical system comprising (col. 15 line 8):
(a) a robotic surgical device configured to be positioned into a cavity of a patient through an incision (col. 15 line 9-10), the device comprising:
(i) a device body (col. 15 line 12);
(ii) at least one arm operably coupled to the body, wherein the at least one arm is configured to be positioned entirely within the cavity of the patient (col. 15 line 13-16); and
(iii) at least one sensor operably coupled to the device (col. 15 line 18);
(b) a processor operably coupled to the at least one sensor (col. 15 line 19-20); and
(c) a user controller operably coupled to the processor, the user controller comprising (col. 15 line 21-22):
(i) a base (col. 15 line 23);
(ii) an upper arm component operably coupled to the base at a shoulder joint (col. 15 line 24-25);
(iii) a first actuator operably coupled to the processor (col. 15 line 26-27);
(iv) a forearm component operably coupled to the upper arm component at an elbow joint, wherein the elbow joint comprises a second actuator operably coupled to the processor (col. 15 line 28-31); and
(v) a grasper operably coupled to the forearm component at a wrist joint, wherein the wrist joint comprises a third actuator operably coupled to the processor (col. 15 line 32-35),
wherein the sensor is configured to sense force or torque at the robotic surgical device and transmit signals indicative of force or torque to the processor (col. 15 line 36-38), and
wherein the processor is configured to transmit instructions to actuate at least one of the at least one actuator based on the signals indicative of force or torque, thereby providing haptic feedback at the controller (col. 15 line 39-44).
Regarding present claim 3, claim 2 of Pat ‘966 discloses the limitations of present claim 2, and further discloses wherein the at least one sensor is a force sensor operably coupled to the at least one arm.
Regarding present claim 4, claim 3 of Pat ‘966 discloses the limitations of present claim 2, and further discloses wherein the at least one sensor is a torque sensor operably coupled to a joint of the at least one arm.
Regarding present claim 5, claim 4 of Pat ‘966 discloses the limitations of present claim 2, and further discloses wherein the at least one sensor is a force sensor positioned between the device body and the at least one arm.
Regarding present claim 6, claim 5 of Pat ‘966 discloses the limitations of present claim 2, and further discloses wherein the at least one sensor is a force sensor disposed within the device body.
Regarding present claim 8, claim 1 of pat ‘966 discloses the limitations of present claim 2, and further discloses wherein the processor is configured to calculate the force or torque being applied at the robotic surgical device based on the signals indicative of force or torque (see claim 1, col. 15 line 39-43).
Claims 9-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-18 of U.S. Patent No. 12070282 (hereinafter Pat ‘282). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding present claim 9, claim 8 of Pat ‘282 discloses a robotic surgical system comprising (col. 16 line 10):
(a) a robotic surgical device comprising (col. 16 line 11):
(i) an elongate body (col. 16 line 12);
(ii) a shoulder joint disposed at a distal portion of the elongate body (col. 16 line 14-15);
(iii) an arm operably coupled to the shoulder joint, the arm comprising an arm actuator disposed within the arm, wherein the arm is configured to be positioned entirely within the cavity of the patient (col. 16 line 16-19);
(iv) a sensor operably coupled to the device (col. 16 line 20); and
(v) an end effector operably coupled to the arm (col. 16 line 21);
(b) a processor operably coupled to the sensor (col. 16 line 23); and
(c) a user controller operably coupled to the processor, the user controller comprising (col. 16 line 24-25):
(i) a controller upper arm (col. 16 line 26);
(ii) a controller forearm operably coupled to the controller upper arm (col. 16 line 27-28);
(iii) a controller grasper operably coupled to the controller forearm (col. 16 line 29-30); and
(iv) at least one actuator associated with the user controller, the at least one actuator operably coupled to the processor (col. 16 line 31-33),
wherein the sensor is configured to sense force or torque at the robotic surgical device and transmit signals indicative of force or torque to the processor (col. 16 line 34-36), and
wherein the processor is configured to transmit instructions to actuate at least one of the at least one actuator proportional to the signals indicative of force or torque, thereby providing haptic feedback at the controller (col. 16 line 37-41).
Regarding present claim 10, claim 9 of Pat ‘282 discloses the limitations of present claim 9, and further discloses further comprising a push/pull rod comprising a distal portion and a proximal portion, wherein the push/pull rod is operably coupled to the arm actuator at the proximal portion and further wherein the push/pull rod is operably coupled to the end effector at the distal portion.
Regarding present claim 11, claim 10 of Pat ‘282 discloses the limitations of present claim 10, and further discloses wherein the sensor is disposed proximal to the arm actuator and is operably coupled to the proximal portion of the push/pull rod.
Regarding present claim 12, claim 11 of Pat ‘282 discloses the limitations of present claim 10, and further discloses wherein the end effector is a device grasper, wherein the device grasper comprises an open configuration when the push/pull rod is urged to a distal position, and further wherein the device grasper comprises a closed configuration when the push/pull rod is urged to a proximal position.
Regarding present claim 13, claim 12 of Pat ‘282 discloses the limitations of present claim 10, and further discloses wherein the sensor is operably coupled to the push/pull rod such that the sensor is positioned along the length of the push/pull rod.
Regarding present claim 14, claim 13 of Pat ‘282 discloses the limitations of present claim 9, and further discloses further comprising a shaft operably coupled to the end effector and a first gear operably coupled to the shaft, wherein the arm actuator comprises a second gear operably coupled to the first gear.
Regarding present claim 15, claim 14 of Pat ‘282 discloses the limitations of present claim 14, and further discloses wherein actuation of the arm actuator causes the shaft to rotate, thereby causing the end effector to rotate.
Regarding present claim 16, claim 8 of Pat ‘282 discloses the limitations of present claim 9, and further discloses wherein the processor is configured to calculate the force or torque being applied at the robotic surgical device based on the signals indicative of force or torque.
Regarding present claim 17, claim 15 of Pat ‘282 discloses a robotic surgical system comprising (col. 17 line 1):
(a) a robotic surgical device comprising (col. 17 line 2):
(i) an elongate tubular body (col. 17 line 3);
(ii) at least one shoulder coupled to the elongate tubular body at a distal portion of the elongate tubular body (col. 17 line 4-5);
(iii) at least one arm operably coupled to the at least one shoulder, wherein the at least one arm is configured to be positionable entirely within the cavity of the patient (col. 17 line 6-9);
(iv) a sensor operably coupled to the at least one shoulder or the at least one arm of the device (col. 17 line 10-11); and
(v) an end effector operably coupled to the arm (col. 17 line 12-13)
(b) a processor operably coupled to the sensor (col. 17 line 15); and
(c) a user controller operably coupled to the processor, the user controller comprising (col. 17 line 16-17):
(i) a controller arm (col. 17 line 18);
(ii) a controller grasper operably coupled to the controller arm (col. 17 line 19-20); and
(iii) at least one actuator associated with the user controller, the at least one actuator operably coupled to the processor (col. 18 line 1-3),
wherein the sensor is configured to sense force or torque at the robotic surgical device and transmit a signal indicative of force or torque information to the processor (col. 18 line 4-6),
wherein the processor is configured to transmit instructions to actuate the at least one actuator corresponding to the signal indicative of force or torque, thereby providing haptic feedback at the controller (col. 18 line 7-11).
Regarding present claim 18, claim 16 of Pat ‘282 discloses the limitations of present claim 17, and further discloses wherein the sensor is a force sensor operably coupled to the at least one arm.
Regarding present claim 19, claim 17 of Pat ‘282 discloses the limitations of present claim 17, and further discloses wherein the sensor is a torque sensor operably coupled to a joint of the at least one arm.
Regarding present claim 20, claim 18 of Pat ‘282 discloses the limitations of present claim 17, and further discloses wherein the sensor is a force sensor positioned between the device body and the at least one arm.
Regarding present claim 21, claim 15 of Pat ‘282 discloses the limitations of present claim 17, and further discloses wherein the processor is configured to calculate the force or torque being applied at the robotic surgical device based on the signals indicative of force or torque (col. 18 line 7-11).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 2-3, 5-6, and 8 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by US 20030135203 A1 Wang et al. (hereinafter Wang).
Regarding claim 2, Wang discloses a robotic surgical system (10, Fig. 1) comprising:
(a) a robotic surgical device (26, 28, 30, 32, Fig. 1) configured to be positioned into a cavity of a patient through an incision (patient 12, paragraph 25), the device comprising:
(i) a device body (body 130 of devices 26, 28, 30, 32, see Fig. 1, 6);
(ii) at least one arm (77) operably coupled to the body (130), wherein the at least one arm is configured to be positioned entirely within the cavity of the patient (patient 12, paragraph 32, Fig. 3); and
(iii) at least one sensor (134, Fig. 6) operably coupled to the device (see Fig. 6, paragraph 34);
(b) a processor (54, Fig. 1) operably coupled to the at least one sensor (paragraph 26, 43, controller 54 contains processors); and
(c) a user controller (50, 52, Fig. 1-2) operably coupled to the processor (paragraph 26), the user controller comprising:
(i) a base (58, Fig. 2);
(ii) an upper arm component (upper portion of 70, Fig. 3, paragraph 31) operably coupled to the base at a shoulder joint (74, Fig. 3);
(iii) a first actuator operably coupled to the processor (force actuator of paragraph 34);
(iv) a forearm component (68) operably coupled to the upper arm component at an elbow joint (72), wherein the elbow joint comprises a second actuator (force actuator of paragraph 36) operably coupled to the processor; and
(v) a grasper (100) operably coupled to the forearm component at a wrist joint (66), wherein the wrist joint comprises a third actuator (force actuator of paragraph 38) operably coupled to the processor,
wherein the sensor is configured to sense force or torque at the robotic surgical device and transmit signals indicative of force or torque to the processor (paragraph 43), and
wherein the processor is configured to transmit instructions to actuate at least one of the at least one actuator (force actuators of paragraph 34, 36, 38) based on the signals indicative of force or torque, thereby providing haptic feedback at the controller (paragraph 29, 43).
Regarding claim 3, Wang discloses the limitations of claim 2, and further discloses wherein the at least one sensor (134) is a force sensor operably coupled to the at least one arm (77) (paragraph 43, Fig. 6).
Regarding claim 5, Wang discloses the limitations of claim 2, and further discloses wherein the at least one sensor (134) is a force sensor positioned between the device body and the at least one arm (77) (paragraph 43, Fig. 6).
Regarding claim 6, Wang discloses the limitations of claim 2, and further discloses wherein the at least one sensor (134) is a force sensor disposed within the device body (130) (paragraph 43, Fig. 6).
Regarding claim 8, Wang discloses the limitations of claim 2, and further discloses wherein the processor is configured to calculate the force or torque being applied at the robotic surgical device based on the signals indicative of force or torque (paragraph 29, 43).
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 4 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Wang in view of US 20090248038 A1 Blumenkranz et al. (hereinafter Blumenkranz).
Regarding claim 4, Wang discloses the limitations of claim 2.
Wang is silent on wherein the at least one sensor is a torque sensor operably coupled to a joint of the at least one arm.
However, Blumenkranz teaches a robotic surgical system (1, Fig. 1a) having at least one sensor (300, Fig. 1) wherein the at least one sensor is a torque sensor (paragraph 49) operably coupled to a joint (8, 10, Fig. 1a-c) of at least one arm (5, 11, Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wang with the teachings of Blumenkranz to have wherein the at least one sensor is a torque sensor operably coupled to a joint of the at least one arm in order to allow the surgeon to sense and receive feedback of torques with respect to the surgical arm as disclosed by Blumenkranz (paragraph 55).
Claim 7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Wang in view of US 20120221016 A1 Fell.
Regarding claim 7, Wang discloses the limitations of claim 2.
Wang discloses that the shoulder joint (74) has a first actuator (force actuator of paragraph 34), however does not specifically state wherein the first actuator is disposed within the shoulder joint.
However, Fell teaches a robotic device (10, Fig. 6) having a shoulder joint (yoke joint 33, Fig. 7) and an actuator (actuators in abstract, paragraph 25, 27) disposed within the shoulder joint (claim 9, actuators comprise a motor within the yoke joint).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wang with the teachings of Fell to have wherein the first actuator is disposed within the shoulder joint in order to provide motion to the operably coupled arm elements.
Allowable Subject Matter
Claims 9-21 would be allowable if rewritten or amended to overcome the double patenting rejection(s) set forth in this Office action.
The following is an examiner' s statement of reasons for allowance:
The closest prior art of record, Wang, does not disclose or fairly suggest, either singly or in combination of any of the prior art of record, the claimed invention of Independent Claims 9 and 17, which recite, inter alia “an end effector operably coupled to the arm”.
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Regarding claim 9, Wang discloses a robotic surgical system (10, Fig. 1) comprising:
(a) a robotic surgical device (system with arms 16, 18, 20, 22, and 24) comprising:
(i) an elongate body (77 of instruments 26, 28, 30 and 32, as seen in Fig. 3);
(ii) a shoulder joint (see annotated Fig. 3 above) disposed at a distal portion of the elongate body (as seen in Fig. 3);
(iii) an arm (76, Fig. 3) operably coupled to the shoulder joint (as seen in annotated Fig. 3 above), the arm comprising an arm actuator (126, Fig. 6) disposed within the arm, wherein the arm is configured to be positioned entirely within the cavity of the patient (12) (as seen in Fig. 3);
(iv) a sensor (134, Fig. 6) operably coupled to the device;
(b) a processor (54, Fig. 1) operably coupled to the sensor (paragraph 26, 43, controller 54 contains processors); and
(c) a user controller (50, 52, Fig. 1-2) operably coupled to the processor (paragraph 26), the user controller comprising:
(i) a controller upper arm (upper portion of 70, Fig. 3, paragraph 31);
(ii) a controller forearm (68) operably coupled to the controller upper arm (Fig. 3, paragraph 31);
(iii) a controller grasper (100) operably coupled to the controller forearm (grasper 100 is part of handle 64 which is coupled to a wrist 66 and the wrist 66 is coupled to the forearm 68, paragraph 31, as seen in Fig. 3); and
(iv) at least one actuator (force actuator of paragraph 36) associated with the user controller, the at least one actuator operably coupled to the processor (54) (paragraph 36),
wherein the sensor (134) is configured to sense force or torque at the robotic surgical device and transmit signals indicative of force or torque to the processor (54) (paragraph 43), and
wherein the processor is configured to transmit instructions to actuate at least one of the at least one actuator proportional to the signals indicative of force or torque, thereby providing haptic feedback at the controller (paragraph 29, 43).
However, Wang does not disclose an end effector operably coupled to the arm. It would not be obvious to additionally include an end effector operably coupled to the arm as the arm of the system is already capable of manipulating an element in a patient (paragraph 32-33). The addition of an additional end effector would not provide a benefit to the disclosed system. The utility of such a modification is that it allows for the user to manipulate tissue with the surgical system (paragraph 53, 55-56 of applicant’s specification).
Regarding claim 17, Wang discloses a robotic surgical system (10, Fig. 1) comprising:
(a) a robotic surgical device (system with arms 16, 18, 20, 22, and 24) comprising:
(i) an elongate tubular body (77 of instruments 26, 28, 30 and 32, as seen in Fig. 3);
(ii) at least one shoulder (see annotated Fig. 3 above) coupled to the elongate tubular body at a distal portion of the elongate tubular body (as seen in Fig. 3);
(iii) at least one arm (76, Fig. 3) operably coupled to the at least one shoulder (as seen in annotated Fig. 3 above), wherein the at least one arm is configured to be positionable entirely within the cavity of the patient (12) (as seen in Fig. 3);
(iv) a sensor (134, Fig. 6) operably coupled to the at least one shoulder or the at least one arm of the device (Fig. 6);
(b) a processor (54, Fig. 1) operably coupled to the sensor (paragraph 26, 43, controller 54 contains processors); and
(c) a user controller (50, 52, Fig. 1-2) operably coupled to the processor (paragraph 26), the user controller comprising:
(i) a controller arm (68);
(ii) a controller grasper (100) operably coupled to the controller arm (grasper 100 is part of handle 64 which is coupled to a wrist 66 and the wrist 66 is coupled to the arm 68, paragraph 31, as seen in Fig. 3); and
(iii) at least one actuator (force actuator of paragraph 36) associated with the user controller, the at least one actuator operably coupled to the processor (54) (paragraph 36),
wherein the sensor (134) is configured to sense force or torque at the robotic surgical device and transmit a signal indicative of force or torque information to the processor (54) (paragraph 43),
wherein the processor is configured to transmit instructions to actuate the at least one actuator corresponding to the signal indicative of force or torque, thereby providing haptic feedback at the controller (paragraph 29, 43).
However, Wang does not disclose an end effector operably coupled to the arm. It would not be obvious to additionally include an end effector operably coupled to the arm as the arm of the system is already capable of manipulating an element in a patient (paragraph 32-33). The addition of an additional end effector would not provide a benefit to the disclosed system. The utility of such a modification is that it allows for the user to manipulate tissue with the surgical system (paragraph 53, 55-56 of applicant’s specification).
Because none of the prior art documents of record teach a robotic surgical system as recited in Claims 9 and 17 it would not have been obvious to one of ordinary skill in the art at the time the invention was made to arrive at the technical solutions of Claims 9 and 17 according to the prior art documents or a combination thereof. Therefore, in view of the prior art at its deficiencies, Applicant' s invention is rendered novel and non-obvious and thus is allowable as claimed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHOA TAN LE whose telephone number is (703)756-1252. The examiner can normally be reached Monday - Friday 8am - 4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at 571-272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHOA TAN LE/Examiner, Art Unit 3771 /MOHAMED G GABR/Primary Examiner, Art Unit 3771