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 .
Response to Amendment
This office action is responsive to the amendment filed on 7/7/2026. As directed by the amendment, the status of the claim(s) are:
Claim(s) 1, 12, 18 has/have been amended;
Claim(s) 1-20 is/are presently pending.
Response to Arguments
Applicant statement regarding double patenting rejection is acknowledged, the double patenting rejection has been updated in light of claim amendments.
Applicant argues on p. 8 of remarks that the combination of Gombert and Eaton does not teach the amended limitations of the independent claims of “detect that the portion has been moved from the first position due to a disturbance caused by a manual movement of the manipulator assembly by an operator; in response to the detection that the portion has been moved from the first position, cause the one or more actuators to move the portion toward a second position in the sequence of predetermined positions until a stop condition is detected, even if the manual movement of the manipulator assembly ends before the portion reaches the second position.” since Eaton teaches “the opposite teachings of that the movement ends if the exerted force is no longer detected, See Eaton [0099].” After review, this is not persuasive because Eaton teaches in [0099] (emphasis added) “Upon determination as to the direction of the exerted force, the controller 520 may instruct appropriate actuators 305 to direct movement of the measuring arm 105 at a pre-selected rate of speed and/or distance for a selected period of time or until the exerted force is no longer detected.” The “or” means that Eaton teaches an embodiment in which the arm is actuated for a predetermined time/speed after a manually exerted force in a desired direction is detected and keeps actuating for this predetermined time/speed regardless of whether this force is no longer detected.
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(s) 1-9, 11-16, 18-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, 2, 3, 4, 5, 6, 7, 8, 10, 11 of U.S. Patent No. 11766301 in view of Gombert (US 20170160721 A1; 6/8/2017; cited in previous office action).
Regarding claim 1, U.S. Patent No. 11766301 teaches a system comprising:
a manipulator assembly (claim 3).
U.S. Patent No. 11766301 does not teach comprising a plurality of links. However, U.S. Patent No. 11766301 does teach a link (claim 3). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of U.S. Patent No. 11766301 to include a plurality of links because this is an obvious duplication of parts; MPEP 2144.04.
U.S. Patent No. 11766301 coupled by a plurality of joints. Note that it would be inherent that plurality of links’ connection point would be known as joints. However, for the sake of completeness and to avoid doubt, Gombert teaches in the same field of endeavor (Abstract) a plurality of links coupled by a plurality of joints (Fig. 1; [0038]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of U.S. Patent No. 11766301 to include these features as taught by Gombert because this enables better articulation of the device (Fig. 1; [0038]).
The combination of U.S. Patent No. 11766301 and Gombert teaches one or more actuators coupled to drive the manipulator assembly to move at least a portion of the manipulator assembly (U.S. Patent No. 11766301 claim 1 “move the moveable component”; Gombert (Fig. 1; [0038] “electric motors”); and
a controller comprising processing circuitry, the controller coupled with the manipulator assembly and the one or more actuators (U.S. Patent No. 11766301 claim 1 “controller”)
wherein the controller is configured to:
cause the one or more actuators to hold the portion at a first position in a sequence of predetermined positions (U.S. Patent No. 11766301 claim 1 “hold”; claim 11 “sequence”);
detect that the portion has been moved from the first position due to a disturbance (U.S. Patent No. 11766301 claim 1 “due to a disturbance”) caused by a manual movement of the manipulator assembly by an operator (Gombert [0057]);
in response to the detection that the portion has been moved from the first position, cause the one or more actuators to move the portion toward a second position in the sequence of predetermined positions until a stop condition is detected, even if the manual movement of the manipulator assembly ends before the portion reaches the second position (U.S. Patent No. 11766301 claim 1 “until a stop condition is detected, even if the disturbance ends before the stop condition is detected… hold the moveable component at a second position.; claim 11 “each motion in the sequence of motions is performed in response to a corresponding movement of the moveable component from a corresponding position”; Gombert [0057]); and
cause the one or more actuators to hold the portion at the second position, when the portion has reached the second position (U.S. Patent No. 11766301 claim 1 “hold the moveable component at a second position”).
Claim 12 is rejected under substantially the same basis as claim 1 above.
Claim 18 is rejected under substantially the same basis as claim 1 above.
Regarding claim 2, in the combination of U.S. Patent No. 11766301 and Gombert, U.S. Patent No. 11766301 teaches the system is a surgical system (claim 2); and
movement of the portion toward the second position causes the portion to move into a portion of a surgical drape (claim 2).
Regarding claim 3, in the combination of U.S. Patent No. 11766301 and Gombert, U.S. Patent No. 11766301 teaches wherein the portion comprises a link of the plurality of links (claim 3).
Claim 13 is rejected under substantially the same basis as claim 3 above.
Regarding claim 4, in the combination of U.S. Patent No. 11766301 and Gombert, U.S. Patent No. 11766301 teaches wherein to detect that the portion has been moved from the first position, the controller is configured to detect that the portion has moved with a motion having a motion component in a direction from the first position toward the second position (claim 4 “wherein the first motion is in a direction of the disturbance”; claim 1 “move the moveable component according to a first motion”; claim 11 “the first motion is included in a sequence of motions of the moveable component; and each motion in the sequence of motions is performed in response to a corresponding movement of the moveable component from a corresponding position.”).
Claim 14 is rejected under substantially the same basis as claim 4 above.
Claim 19 is rejected under substantially the same basis as claim 4 above.
Regarding claim 5, in the combination of U.S. Patent No. 11766301 and Gombert, U.S. Patent No. 11766301 teaches wherein to detect that the portion has been moved from the first position, the controller is configured to detect that the portion has been moved from the first position by more than a threshold amount for at least a first predetermined duration of time (claim 5).
Regarding claim 6, in the combination of U.S. Patent No. 11766301 and Gombert, U.S. Patent No. 11766301 teaches wherein to detect that the portion has been moved from the first position, the controller is configured to detect a pattern of two or more changes in a position of the portion from the first position (claim 6).
Regarding claim 7, in the combination of U.S. Patent No. 11766301 and Gombert, U.S. Patent No. 11766301 teaches wherein to detect that the portion has been moved from the first position, the controller is configured to detect one or more external taps on the manipulator assembly (claim 7).
Regarding claim 8, in the combination of U.S. Patent No. 11766301 and Gombert, U.S. Patent No. 11766301 teaches wherein each of the one or more external taps cause the portion to move in a direction toward the second position (claim 7; claim 11).
Regarding claim 9, in the combination of U.S. Patent No. 11766301 and Gombert, U.S. Patent No. 11766301 teaches wherein the stop condition comprises a detection that the portion has reached the second position (claim 8 “wherein the stop condition comprises the moveable component reaching the second position”).
Regarding claim 11, in the combination of U.S. Patent No. 11766301 and Gombert, U.S. Patent No. 11766301 teaches wherein the controller is further configured to:
detect that the portion has been moved from the second position due to a second disturbance (claim 10); and
in response to a detection that the portion has been moved from the second position, cause the one or more actuators to move the portion toward a third position in sequence of predetermined positions (claim 10; claim 11; sequence of motions would include a third position).
Regarding claim 15, in the combination of U.S. Patent No. 11766301 and Gombert, U.S. Patent No. 11766301 teaches detecting that the portion has been moved from the first position comprises detecting one or more external taps on the manipulator assembly (claim 7); and
each of the one or more external taps cause the portion to move in a direction toward the second position (claim 7; claim 11).
Claim 20 is rejected under substantially the same basis as claim 15 above.
Regarding claim 16, in the combination of U.S. Patent No. 11766301 and Gombert, U.S. Patent No. 11766301 teaches wherein detecting the stop condition comprises detecting that the portion has reached the second position (claim 8 “wherein the stop condition comprises the moveable component reaching the second position”).
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) 1, 3-4, 7-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gombert (US 20170160721 A1; 6/8/2017; cited in previous office action) in view of Eaton (US 20050150123 A1; 7/14/2005; cited in previous office action).
Regarding claim 1, Gombert teaches a system comprising:
a manipulator assembly comprising a plurality of links coupled by a plurality of joints (Fig. 1; [0038]);
one or more actuators coupled to drive the manipulator assembly to move at least a portion of the manipulator assembly (Fig. 1; [0038] “electric motors”); and
a controller comprising processing circuitry, the controller coupled with the manipulator assembly and the one or more actuators (Fig. 1, 13)
wherein the controller is configured to:
cause the one or more actuators to hold the portion at a first position in a sequence of predetermined positions ([0022]).
Gombert does not teach detect that the portion has been moved from the first position due to a disturbance caused by a manual movement of the manipulator assembly by an operator;
in response to the detection that the portion has been moved from the first position, cause the one or more actuators to move the portion toward a second position in the sequence of predetermined positions until a stop condition is detected, even if the manual movement of the manipulator assembly ends before the portion reaches the second position.
However, Eaton teaches in the same field of endeavor (Fig. 1) detect that the portion has been moved from the first position due to a disturbance caused by a manual movement of the manipulator assembly by an operator ([0097]-[0099] “an operator may exert a force against a selected section of the inner member 132 in a desired direction. This force need not necessarily be large enough to move the entire measuring arm 105 but rather be sufficient to result in some degree of movement of the inner member 130 … Upon determination as to the direction of the exerted force, the controller 520 may instruct appropriate actuators 305 to direct movement of the measuring arm 105 at a pre-selected rate of speed and/or distance for a selected period of time or until the exerted force is no longer detected. Based on this principal, manually-guided movement of the measuring arm 105 can be accomplished to facilitate manual positioning of the measuring arm 105 in such a manner so as to significantly reduce operator fatigue and effort in aligning and calibrating the instrument 100”; note that in Fig. 1 inner member 130 is part of arm 105). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Gombert to include these features as taught by Eaton because this enables “assisted-movement mode” ([0096]) which “reduces operator fatigue” ([0099]).
The combination of Gombert and Eaton teaches in response to the detection that the portion has been moved from the first position, cause the one or more actuators to move the portion toward a second position in the sequence of predetermined positions until a stop condition is detected, even if the manual movement of the manipulator assembly ends before the portion reaches the second position (Gombert Fig. 3; [0009]; [0057]; [0059]; Eaton [0099] “at a pre-selected rate of speed and/or distance for a selected period of time”; [0100]-[0101]).
Claim 12 is rejected under substantially the same basis as claim 1 above.
Claim 18 is rejected under substantially the same basis as claim 1 above.
Regarding claim 3, in the combination of Gombert and Eaton, Gombert teaches wherein the portion comprises a link of the plurality of links (Fig. 1; [0038]-[0039]).
Claim 13 is rejected under substantially the same basis as claim 3 above.
Regarding claim 4, the combination of Gombert and Eaton teaches wherein to detect that the portion has been moved from the first position, the controller is configured to detect that the portion has moved with a motion having a motion component in a direction from the first position toward the second position (Gombert [0057]; Eaton [0099] “desired direction”). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Gombert to include these features as taught by Eaton because this enables “assisted-movement mode” ([0096]) which “reduces operator fatigue” ([0099]).
Claim 14 is rejected under substantially the same basis as claim 4 above.
Claim 19 is rejected under substantially the same basis as claim 4 above.
Regarding claim 7, the combination of Gombert and Eaton teaches wherein to detect that the portion has been moved from the first position, the controller is configured to detect one or more external taps on the manipulator assembly (Gombert [0057]; Eaton [0100]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Gombert to include these features as taught by Eaton because this enables “assisted-movement mode” ([0096]) which “reduces operator fatigue” ([0099]).
Regarding claim 8, the combination of Gombert and Eaton teaches wherein each of the one or more external taps cause the portion to move in a direction toward the second position (Gombert [0022]; [0057]; Eaton [0096]-[0100]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Gombert to include these features as taught by Eaton because this enables “assisted-movement mode” ([0096]) which “reduces operator fatigue” ([0099]).
Regarding claim 9, the combination of Gombert and Eaton teaches wherein the stop condition comprises a detection that the portion has reached the second position (Gombert [0017]; [0057]).
Claim 16 is rejected under substantially the same basis as claim 9 above.
Regarding claim 10, the combination of Gombert and Eaton teaches wherein:
the stop condition comprises a detection of an event selected from the group consisting of: the portion moving a predetermined distance (Gombert [0017]; [0057]), and a speed of the portion being below a threshold speed, and the speed of the portion remaining below the threshold speed for a predetermined duration of time; and
the controller is further configured to, in response to a detection of the stop condition:
cause the one or more actuators to hold the portion at a third position, the third position being a position of the portion when the stop condition is detected (Gombert Fig. 1; Fig. 3; [0005]; [0017]-[0022]; [0057]; the reference is teaching that there are snap points in between reference point and a stop condition is when the device has moved a predetermined distance to a snap point which reads on “third position”) and
in response to a second detection that the portion has been moved from the third position, cause the one or more actuators to move the portion toward the second position (Gombert Fig. 1; Fig. 3; [0005]; [0017]-[0022]; [0057]; the reference is teaching that snap points are set and device moves from snap point(s) to next point towards the reference point/desired movement; there is a control loop in which at the snap point, device can wait for an input of movement/tap which reads on “second detection” after which device moves to next point).
Claim 17 is rejected under substantially the same basis as claim 10 above.
Regarding claim 11, the combination of Gombert and Eaton teaches wherein the controller is further configured to:
detect that the portion has been moved from the second position due to a second disturbance (Gombert Fig. 3; [0057]; Eaton [0096-[0099]); and
in response to a detection that the portion has been moved from the second position, cause the one or more actuators to move the portion toward a third position in sequence of predetermined positions (Gombert Fig. 1; Fig. 3; [0005]; [0017]-[0022]; [0057]; the reference is teaching that snap points are set and device moves from snap point(s) to next point towards the reference point/desired movement; there is a control loop in which at the snap point, device can wait for an input of movement/tap which reads on “second detection” after which device moves to next point; Eaton [0096]-[0099]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Gombert to include these features as taught by Eaton because this enables “assisted-movement mode” ([0096]) which “reduces operator fatigue” ([0099]).
Regarding claim 15, the combination of Gombert and Eaton teaches wherein:
detecting that the portion has been moved from the first position comprises detecting one or more external taps on the manipulator assembly (Gombert [0057]; Eaton [0100]).; and
each of the one or more external taps cause the portion to move in a direction toward the second position (Gombert [0022]; [0057]; Eaton [0096]-[0100]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Gombert to include these features as taught by Eaton because this enables “assisted-movement mode” ([0096]) which “reduces operator fatigue” ([0099]).
Claim 20 is rejected under substantially the same basis as claim 15 above.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gombert and Eaton as applied to claim 1 above, and further in view of Romo (US 20160184032 A1; 6/30/2016; cited in previous office action).
Regarding claim 6, the combination of Gombert and Eaton does not teach wherein to detect that the portion has been moved from the first position, the controller is configured to detect a pattern of two or more changes in a position of the portion from the first position. Note that Gombert does teach two different thresholds for which the disturbance is compared to (Fig. 3; [0059]). However, Romo teaches in the same field of endeavor (Abstract; Fig. 41; [0015]) wherein to detect that the portion has been moved from the first position, the controller is configured to detect a pattern of two or more changes in a position of the portion from the first position (Fig. 41, 4140; [0328]; [0015] "The user may exert a force on the robotic arm, such as a tap, a push, a pull, a double tap or plurality of taps, a hold, or a shake, to name a few."; the double tap of the reference reads on the recited "pattern of two or more changes in a position of the moveable component from the first position"). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Gombert and Eaton to include these features as taught by Romo because this enables control of the device by detecting a variety of different user inputs ([0015]).
Allowable Subject Matter with respect to 102/103
The prior art of record does not disclose or fairly suggest either singly or in combination the claimed invention of claim 2 when taken as a whole, comprising, in addition to the other recited claim elements, the system is a surgical system; and
movement of the portion toward the second position causes the portion to move into a portion of a surgical drape.
The prior art of record does not disclose or fairly suggest either singly or in combination the claimed invention of claim 5 when taken as a whole, comprising, in addition to the other recited claim elements, wherein to detect that the portion has been moved from the first position, the controller is configured to detect that the portion has been moved from the first position by more than a threshold amount for at least a first predetermined duration of time.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Jonathan T Kuo whose telephone number is (408)918-7534. The examiner can normally be reached M-F 10 a.m. - 6 p.m. PT.
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/JONATHAN T KUO/ Primary Examiner, Art Unit 3792
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