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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claim 1-6, drawn to a medical manipulator system, classified in A61B 1/0016.
II. Claim 7-12, drawn to a drive device, classified in A61B 1/0016.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination of invention I is an entire system with multiple parts encompassing it. The subcombination has separate utility such as being used in any medical manipulator system which has a movable portion and a detachable driven portion.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: as the groups of inventions are independent or distinct a search and/or examination burden is present, requiring different fields of search and likely different non-prior art issues.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
This application contains claims directed to the following patentably distinct species:
a. Species A: First embodiment of an electric endoscope system disclosed in FIG. 1
b. Species B: Second embodiment of an electric endoscope system disclosed in FIG. 23
c. Species C: Third embodiment of an electric endoscope system disclosed in FIG. 25
d. Species D: Fourth embodiment of an electric endoscope system disclosed in FIG. 29
e. Species E: Fifth embodiment of an electric endoscope system disclosed in FIG. 47
f. Species F: Sixth embodiment of an electric endoscope system disclosed in FIG. 52
g. Species G: Seventh embodiment of an electric endoscope system disclosed in FIG. 57
h. Species H: Eighth embodiment of an electric endoscope system disclosed in FIG. 61
i. Species I: Ninth embodiment of an electric endoscope system disclosed in FIG. 85
j. Species J: Tenth embodiment of an electric endoscope system disclosed in FIG. 90
k. Species K: Eleventh embodiment of an electric endoscope system disclosed in FIG. 95
The species are independent or distinct because they are substantially dissimilar and structurally divergent surgical device structures. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, Claim 1 is generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: as the groups of inventions are independent or distinct a search and/or examination burden is present, requiring different fields of search and likely different non-prior art issues.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Thomas Spinelli on 02/13/2026 a provisional election was made without traverse to prosecute the invention of Restriction Group 1 and Species A, claim 1-6. Affirmation of this election must be made by applicant in replying to this Office action. Claim 7-12 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 112
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 1rejected 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 1 recites “ the drive device is capable of simultaneously connecting a first manipulator and a second manipulator that are the medical manipulators, and all of the driven portions of the first manipulator and the second manipulator are attachable to the drive device” which is indefinite since it is unclear whether or not the first and second medical manipulators are positively recited elements or are just intended use features, since the claim previously recites “a medical manipulator” but when discussing the first and second medical manipulator states “are the medical manipulators.” The examiner suggests amending the claim language to more clearly indicate the structure or purpose of the first and second manipulators.
Examiner’s Comments
The present rejection(s) reference specific passages from cited prior art. However, Applicant is advised that the rejections are based on the entirety of each cited prior art. That is, each cited prior art reference “must be considered in its entirety”. (See MPEP 2141.02(VI)) Therefore, Applicant is advised to review all portions of the cited prior art if traversing a rejection based on the cited prior art
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Komuro (US 20170143438 A1).
Regarding Claim 1, Komuro discloses
A medical manipulator system (manipulator system 1, FIG. 1) comprising:
a medical manipulator (treatment tool 3, FIG. 1) having a movable portion (plurality of bendable joints 32, FIG. 1); and
a drive device (drive unit 2, FIG. 1) to which the medical manipulator is detachably connected (depicted in FIG. 5),
wherein the medical manipulator includes a driven portion (attachment/detachment mechanism 4) to which a driving force for driving the movable portion is input (par. 37 discloses driving forces are transmitted to attachment/ detachment mechanism, par. 34 discloses treatment tool is driven via driving force),
the drive device includes:
a drive portion (driving members 21 + output shafts 22, FIG. 1) that is attached to the driven portion when the medical manipulator is connected and drives the driven portion (FIG. 1, par. 37 disclose attachment/ detachment mechanism is attached to output shafts, par. 35 discloses driving members and output shafts produce driving force); and
a controller (control unit 7, FIG. 1 + system control unit 130, FIG. 15) that controls the drive portion (par. 34 discloses control unit gains control of the drive unit),
a number of the drive portions is greater than a number of the driven portions (FIG. 1 discloses there are more driving members and output shafts than there are attachment/ detachment mechanisms, i.e. 4 driving members having 4 output shafts, making it a total of 8 drive portions versus 4 driven members),
the drive device is capable of simultaneously connecting a first manipulator (first treatment tool 3a, FIG. 16) and a second manipulator (second treatment tool 3b, FIG. 16) that are the medical manipulators (depicted in FIG. 16), and
all of the driven portions of the first manipulator and the second manipulator are attachable to the drive device (par. 37 discloses transmission members of the attachment/ detachment mechanism are attached to driving unit via output shafts).
Regarding Claim 2, Komuro discloses
The medical manipulator system according to claim 1, wherein the controller is capable of independently controlling the drive portion that drives the driven portion of the first manipulator and the drive portion that drives the driven portion of the second manipulator (par. 35 discloses respective driving members are separately controlled by the control unit, i.e. different driving members, such as respective driving members for the first and second treatment members, are independently controlled).
Regarding Claim 3, Komuro discloses
The medical manipulator system according to claim 2, wherein
the controller controls the drive portion that drives the driven portion of the first manipulator by a normal operation program (par. 43 discloses initial flow run for control of individual driving members, i.e. driving member for first manipulator), and
controls the drive portion that drives the driven portion of the second manipulator by a check program (par. 41, 97 disclose control unit activates and/or deactivates driving members based on sensor unit responses, i.e. check program).
Regarding Claim 6, Komuro discloses
The medical manipulator system according to claim 1, wherein
the medical manipulator has a memory (engagement sensor unit 43, FIG. 1) in which information related to the driven portion is stored (par. 43 discloses engagement sensor unit has information related to the engagement of the first and second engagement portions of the attachment/ detachment mechanism), and
the controller controls the drive portion based on information acquired from the memory (par. 43 discloses control unit operates based on the information sensed from the engagement sensor unit).
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) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Komuro (US 20170143438 A1) as applied to claim 1 above, and further in view of Yoshimura (US 20170209227 A1).
Regarding Claim 4, Komuro discloses all of the elements of the current invention disclosed in claim 1, however, Komuro does not disclose wherein when the controller detects an abnormality in at least a part of the drive portion, the controller notifies a user to attach the driven portion to another drive portion in which no abnormality has been detected.
Yoshimura teaches an analogous medical manipulator system (1, FIG. 1) having an elongated member (3, i.e., medical manipulator) with a bending assembly (4, i.e., movable portion). The manipulator (3) has a driven portion (coupling member 5, FIG. 1) attached to a drive unit (21, i.e. drive portion, FIG. 1) which generates power for the driven portion [0035-0036]. In situations when the drive portion is not put into operation for reasons such as power supply shutdown, malfunctions, transmission issues, or any abnormality of the like, a controller (control unit 25 + 91, FIG. 11A, 14) is adapted to control a regulator (6, i.e. other drive unit, FIG. 1, 11A) to keep the bending assembly in operation [0078, 0094]. Moreover, an operator (O, i.e. user) is notified of current operation status via the control unit (91) and the operator operates the manipulator accordingly [0093].
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to provide the manipulator system of Komuro with the regulator of Yoshimura in order to keep operation of a bending assembly working even in situations when there are malfunctions in a drive unit [Yoshimura - 0039].
Regarding Claim 5, Komuro in view of Yoshimura teaches all of the elements of the current invention disclosed in claim 4, and Suzuki further teaches wherein, when the drive portion to which the driven portion is attached is changed from the drive portion in which the abnormality has been detected to the other drive portion,
the controller transfers at least a part of information required to drive the driven portion from a program controlling the drive portion in which the abnormality has been detected to a program controlling the other drive portion (par. 82-83 disclose control unit transmits operation of the coupling member, from a state where it was pushed/ pulled by the drive unit, to a state where it is then operated by the regulator, such that the moving operation of the bending portion is continued).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDUL HADI ABBASI whose telephone number is (571)272-4076. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 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, Anhtuan 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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/ABDUL HADI ABBASI/Examiner, Art Unit 3795
/RYAN N HENDERSON/Primary Examiner, Art Unit 3795