DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Notice to Applicant
2. This communication is in response to the communication filed 6/18/2026. Claims 1, 4, 9, 12, 16, and 19 are currently amended. Claims 1-20 are currently pending.
Claim Rejections - 35 USC § 112
3. 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.
3.1. Claims 1-20 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.
3.2. The terms “minimal,” “intermittent,” and “full” in claims 1, 9, and 16 are a relative term which renders the claim indefinite. These terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the limitations “minimal interaction level,” “intermittent interaction level,” and “full interaction level” are indefinite.
Claim Rejections - 35 USC § 101
4. The amended claims recite, “based on the selected interaction level, generating a control signal configured to adjust operation of the identified piece of equipment in accordance with the selected interaction level.” This is a technological improvement that facilitates safeguarding the surgical system’s stability and patient safety; and performance of the surgical system. Moreover, the amended claims are similar to the eligible claims of Example 46 and 42 of the USPTO’s Subject Matter Eligibility Guidance Examples. Accordingly, the amended claims are eligible subject matter under 35 U.S.C. § 101.
Allowable Subject Matter
5. The prior art does not appear to reasonably teach and/or suggest, “wherein the minimal interaction level, the intermittent interaction level, and the full interaction level correspond to respective
increasing degrees of data exchange between the surgical smart system and the identified piece of equipment; selecting an interaction level from the plurality of interaction levels based on the selected interaction level being associated with a surgical preference and based at least on an operating condition of the identified piece of equipment; and based on the selected interaction level, generating a control signal configured to adjust operation of the identified piece of equipment in accordance with the selected interaction level,” as recited in amended independent claim 1 and similarly in amended independent claims 9 and 16.
Response to Arguments
6. Applicant's arguments filed 6/18/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed hereinbelow in the order in which they appear in the response filed 6/18/2026.
6.1. Applicant argues, on page 11 of the response, that the terms “minimal,” “intermittent,” and “full” are not relative terms which render the claims indefinite because the amendment clarifies that the recited interaction levels correspond to objectively ordered degrees of data exchange between the surgical smart system and the identified piece of equipment.
In response, it is submitted that the terms “minimal,” “intermittent,” and “full” are relative terms which render the claims indefinite because the terms are not sufficiently defined by the claims, Applicant’s specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the limitations “minimal interaction level,” “intermittent interaction level,” and “full interaction level” are indefinite.
Furthermore, while the amended claims recite the different interaction levels “correspond to respective increasing degrees of data exchange between the surgical smart system and the identified piece of equipment,” these limitations still do not sufficiently define the terms “minimal,” “intermittent,” and “full.” While the amended limitations arguably enable one of ordinary skill in the art to discern the general relationship between the terms (i.e., progressing from minimal to intermittent to full involves successive increases in data exchange), the amended limitations do not enable one of ordinary skill in the art to objectively discern delineations between the terms, that is, actual cutoffs between the terms (e.g., a numerical value such as a percent, etc.).
Accordingly, it is submitted that the limitations “minimal interaction level,” “intermittent interaction level,” and “full interaction level” are relative terms and thus the claims 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.
Conclusion
7. THIS ACTION IS MADE FINAL. 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 Michael Tomaszewski whose telephone number is (313)446-4863. The examiner can normally be reached M-F 5:30 am - 2:30 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, Peter H Choi can be reached at (469) 295-9171. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL TOMASZEWSKI/Primary Examiner, Art Unit 3681
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