DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-29 are pending.
Claim Rejections - 35 USC § 102
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.
Claims 1-7, 9-11, and 13-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KOPPERSCHMIDT et al. (US 20190336705 A1, 2019-11-07) (hereinafter “KOPPERSCHMIDT”).
Regarding claims 1-7, 9-11, 13-22, and 23-29, KOPPERSCHMIDT teaches gripper assembly (and a method) for holding a tool, said gripper assembly comprising: a housing configured for mounting on a robotic arm (e.g., [0068]-[0071]); a gripper mechanism coupled to the housing and comprising two pairs of opposed bodies (e.g., 110, 112) axially spaced-apart along a tool-receiving passage (e.g., 108), wherein each pair of opposed bodies comprises a variable-diameter circular aperture for receiving a tool therebetween (e.g., Fig. 4); and a gear assembly configured to drive said two pairs of opposed bodies at the same time to close each variable-diameter circular aperture about the tool to grasp the tool when the tool is present in the tool-receiving passage (e.g., [0141]) (as recited in claims 2 and 14); wherein the gear assembly is configured to rotate the opposed bodies about their respective axes (e.g., [0149] (as recited in claims 3 and 15); wherein the variable-diameter circular aperture comprises an opposed circumferentially oriented tapered groove formed on a cylindrical or spherical peripheral surface on each opposed body, wherein rotation of the opposed bodies about their respective axes in a first direction increases the variable diameter and rotation in an opposite direction decreases the variable diameter (e.g., Fig. 4) (as recited in claim 4); wherein the opposed bodies are configured to rotate about their respective axes to orient tapered grooves on their respective surfaces to form a gripping surface with a generally continuous circular periphery with (1) a diameter that depends on the rotational positions of the opposed bodies and (2) a center that remains fixed relative to the gripper mechanism regardless of the rotational positions of the opposed bodies (e.g., Fig. 4) (as recited in claims 5 and 17); wherein the opposed bodies are configured to counterrotate (e.g., Fig. 4 and associated text) (as recited in claim 6); wherein the gear assembly is configured to be connected to a motor in the robot arm (e.g., [0068]-[0071]) (as recited in claim 7); wherein the gripper mechanism further comprises a pair of jaws pivotally attached to the housing (e.g., Fig. 4) (as recited in claim 9); wherein each jaw carries one of the opposed bodies of each pair (e.g., Fig. 4 and associated text) (as recited in claim 10); wherein the jaws are configured to move the tapered grooves on the opposed bodies into and out of proximity to facilitate positioning tools therebetween (e.g., Fig. 4 and associated text) (as recited in claim 11); wherein the opposed bodies are configured to control an amount of friction applied to a tool held by the opposed bodies in response to a degree of rotation of the opposed bodies (e.g., Fig. 4 and associated text) (as recited in claims 13 and 16); wherein the cylindrical or spherical peripheral surface consists essentially of a partial cylindrical surface (e.g., Fig. 4 and associated text) (as recited in claim 18); wherein the opposed bodies are rotated to adjust the diameter of the circular aperture in the gripper mechanism to match a circumference of the elongate tool being held by the gripper mechanism (e.g., Fig. 4 and associated text) (as recited in claim 19); wherein the opposed bodies are further rotated to adjust a holding friction between the opposed bodies and the elongate tool (e.g., Fig. 4 and associated text) (as recited in claim 20); wherein the friction is adjusted to allow the elongate tool to be rotated, advanced, and/or retracted relative to the gripper while still being held by the gripper (e.g., Fig. 4 and associated text) (as recited in claim 21); further comprising at least one of manually rotating and manually translating the elongate tool in an axial direction while said elongate tool is being held by the gripper (e.g., [0031]) (as recited in claim 22); wherein the elongate surgical tool has a circular periphery when held by the gripping mechanism (e.g., Fig. 4 and associated text) (as recited in claim 23); wherein the elongate surgical tool has a non-circular periphery where held by the gripper mechanism but is still circumferentially centered in the gripper mechanism (e.g., Fig. 4 and associated text; [0157]-[0162]) (as recited in claim 24); further comprising selectively attaching and detaching the gripper mechanism to a motor (e.g., [0141]) (as recited in claim 25); further comprising performing a surgical procedure with the tool while held by the gripper mechanism (e.g., Fig. 4 and associated text; [0019], [0152]) (as recited in claim 26); wherein the gripper mechanism is positioned in a non-sterile field during the surgical procedure (e.g., [0046]) (as recited in claim 27); further comprising sterilizing the gripper mechanism after performing the surgical procedure (e.g., [0121]) (as recited in claim 28); further comprising opening a pair of jaws on the gripper to create a space between said jaws and closing the jaws to capture the elongate tool, wherein each jaw carries one of the opposed bodies of each of the two pairs of opposed bodies (e.g., Fig. 4 and associated text) (as recited in claim 29).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over KOPPERSCHMIDT in view of KERR et al. (US 20100286691 A1, 2010-11-11) (hereinafter “KERR”).
Regarding claims 9 and 12, as discussed above, KOPPERSCHMIDT teaches gripper assembly (and a method) for holding a tool, except comprising the worm gear and lever assembly.
KERR teaches use of various gears, cams, and other mechanisms to actuate jaw members. See, e.g., [0034], [0040]. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of KERR with the invention taught by KOPPERSCHMIDT such that the invention further comprises wherein the gear assembly includes a
vertical shaft having a worm gear which drives gear wheels connected to each of the opposed bodies (as recited in claim 8); further comprising a lever assembly coupled to the shaft and configured to transfer axial translation of the shaft to open and close the jaws (as recited in claim 12) in order to satisfy the particular mechanical requirements of a surgical procedure.
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 1-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12114946 B2. Although the language claims at issue are not identical, the claims are not patentably distinct from each other because they are directed to the same invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT T LUAN whose telephone number is (571)270-1860. The examiner can normally be reached on 9am-5pm, M-F (generally).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gary Jackson, can be reached on 571-272-4697. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Scott Luan
/SCOTT LUAN/Primary Examiner, Art Unit 3792
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