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 . 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 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.
Joint Inventors
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.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/06/2024 (1), 12/06/2024 (2), and 12/12/2025, were filed before the mailing of a First Office Action on the Merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Priority/Benefit
The current application is a continuation of US application 17/421,753 which itself claims provisional benefit to 62/801,734. Examiner has checked and verified that the provisional application supports the subject matter of the instant application, and as such, the earlier filed date of 02/06/2019 is granted.
Status of Claims
This action is in response to Applicant’s filing on 09/10/2024. Claims 2-21 are pending and examined below.
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 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US Patent No. 12082898 discloses a method of controlling a tool of a surgical robot with a processing unit such that the tool follows input of an input handle of a user console, wherein the surgical robot includes a first arm supporting a camera and a second arm supporting the tool, the surgical robot defining a world frame, and a range of motion of the second arm defining a tool frame, the second arm being configured to manipulate the tool within the tool frame, the method comprising: receiving movement of the input handle in a master frame of the user console (Col. 12 lines 6-15) and translating the movement of the input handle in the master frame to movement of the tool in a camera frame of the camera providing real-time images of a surgical site, the camera defining the camera frame and configured to capture real-time images of the surgical site, wherein translating the movement of the input handle in the master frame to movement of the tool in the camera frame includes applying a flip rotation matrix to movement of the input handle in the master frame to translate movement of the input handle to the camera frame (Col. 12 lines 16-25).
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of US Patent No. 12082898 discloses wherein translating the movement of the input handle in the master frame to movement of the tool in the camera frame includes applying a display rotation matrix to movement of the input handle in the master frame to translate movement of the input handle to a display frame of a display of the user console, the display providing visualization of the real-time images of the surgical site (Col. 12 lines 33-40).
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of US Patent No. 12082898 discloses wherein the display rotation matrix rotates the movement 30 degrees about an axis of the master frame (Col. 12 lines 41-43).
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of US Patent No. 12082898 discloses wherein the flip rotation matrix includes rotating movement 180 degrees about an axis of the display frame (Col. 12 lines 44-46).
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of US Patent No. 12082898 discloses receiving a flip flag (Col. 12 line 48), and applying the flip rotation matrix when the flip flag indicates that the real-time images from the camera are flipped before being viewed on a display (Col. 12 lines 49-51).
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US Patent No. 12082898 discloses translating the movement of the tool in the camera frame to movement of the tool in the world frame (Col. 12 lines 26-27), translating the movement of the tool in the world frame to movement of the tool in the tool frame (Col. 12 lines 28-29), and transmitting control commands to a motor controlling the tool such that the tool follows movement of the input handle (Col. 12 lines 30-32).
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of US Patent No. 12082898 discloses wherein translating the movement of the tool in the camera frame to the movement of the tool in the world frame includes: determining yaw and pitch angles of the camera frame relative to the world frame (Col. 12 lines 52-56), and applying a world frame rotation matrix including the yaw and pitch angles of the camera frame relative to the world frame to translate the movement of the tool in the camera frame to movement of the tool in the world frame (Col. 12 lines 57-61).
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of US Patent No. 12082898 discloses wherein translating the movement of the tool in the camera frame to the movement of the tool in the world frame includes: receiving an offset of the camera (Col. 12 lines 62-65), and adjusting the movement in the camera frame by the offset of the camera by applying an adjustment rotation matrix including the offset of the camera to the movement of the tool in the camera frame (Col. 12 line 66 to Col. 13 line 2).
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of US Patent No. 12082898 discloses wherein translating the movement of the tool in the world frame to movement of the tool in the tool frame includes: determining yaw and pitch angles of the tool frame relative to the world frame (Col. 13 lines 3-7), and applying a transpose of a tool frame rotation matrix including the yaw and pitch angles of the tool frame relative to the world frame to translate the movement of the tool in the world frame to movement of the tool frame (Col. 13 lines 8-12).
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of US Patent No. 12082898 discloses verifying the camera is fixed during the movement of the input handle before transmitting the control commands to the motor controlling the tool (Col. 13 lines 14-16).
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of US Patent No. 12082898 discloses a robotic surgical system comprising: a surgical robot including a first arm supporting a camera and a second arm supporting a tool, the camera defining a camera frame and configured to capture real-time images of a surgical site, the second arm defining a tool frame and configured to manipulate the tool within the tool frame, the surgical robot defining a world frame; a user console including an input handle and a display, the input handle moveable within a master frame defined by the user console, the display configured to display the real-time images of the surgical site captured by the camera (Col. 13 lines 17-28), a processing unit configured to: receive movement of the input handle in the master frame (Col. 13 lines 29-31), and translate the movement of the input handle in the master frame to movement of the tool in the camera frame, wherein translating the movement of the input handle in the master frame to movement of the tool in the camera frame includes applying a flip rotation matrix to movement of the input handle in the master frame to translate movement of the input handle to the camera frame (Col. 13 lines 32-39).
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of US Patent No. 12082898 discloses wherein the display defines a display frame that is rotated relative to one axis of the master frame (Col. 13 lines 46-48).
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of US Patent No. 12082898 discloses wherein the display is rotated 30 degrees about the one axis of the master frame (Col. 13 lines 50-51).
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of US Patent No. 12082898 discloses wherein the display is configured to flip the real-time images provided by the camera 180 degrees before displaying the real-time images (Col. 13 lines 52-55).
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of US Patent No. 12082898 discloses wherein the processing unit is configured to receive a flip flag indicative of the real-time images being flipped on the display and to apply a flip rotation matrix to movement of the tool to translate the movement of the tool to the camera frame (Col. 14 lines 2-6).
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of US Patent No. 12082898 discloses wherein the processing unit is configured to receive yaw and pitch angles of the camera frame relative to the world frame and to apply a world frame rotation matrix including the yaw and pitch angles of the camera frame relative to the world frame to translate the movement of the tool in the camera frame to movement of the tool in the world frame (Col. 14 lines 8-13).
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of US Patent No. 12082898 discloses wherein the processing unit is configured to receive an offset angle of the camera and to apply an adjustment rotation matrix including the offset angle of the camera to adjust the movement of the tool in the camera frame (Col. 14 lines 15-18).
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 of US Patent No. 12082898 discloses wherein the processing unit is configured to receive yaw and pitch angles of the tool frame relative to the world frame and to apply a transpose of a tool frame rotation matrix including the yaw and pitch angles of the tool frame relative to the world frame to translate the movement of the tool in the world frame to movement of the tool in the tool frame (Col. 14 lines 20-25).
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of US Patent No. 12082898 discloses translate the movement of the tool in the camera frame to movement of the tool in the world frame (Col. 13 lines 40-41), translate the movement of the tool in the world frame to movement of the tool in the tool frame (Col. 13 lines 42-43), and transmit control commands to the second arm such that the tool follows movement of the input handle (Col. 13 lines 44-45).
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12082898. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 19 of US Patent No. 12082898 discloses receive movement of an input handle in a master frame of a user console (Col. 14 lines 33-34), and translate the movement of the input handle in the master frame into movement of a tool in a camera frame of a camera providing real-time images of a surgical site, wherein translating the movement of the input handle in the master frame to movement of the tool in the camera frame includes applying a flip rotation matrix to movement of the input handle in the master frame to translate movement of the input handle to the camera frame (Col. 14 lines 35-43).
Potential Allowable Subject Matter
Examiner notes that claims 2-21 are rejected on the grounds of nonstatutory double patenting, however, the independent claims contain similar subject matter as to what was previously indicated as allowable subject matter in the parent application 17/421,753. Examiner has performed another thorough search and has not found a piece of prior art, either alone or in combination with other prior art, that discloses, teaches, suggests, or renders obvious the claim limitations. The rationale for the indication of potential allowable subject matter is the same as seen in the parent application, namely the inclusion of applying a flip rotation matrix to movement of the input handle in a master frame. Examiner further notes that although the previously cited art of Zhao (US 20120290134 A1) in the parent application is a close piece of art, the disclosure therein does not explicitly state a flip rotation matrix being applied to movement of an input handle in a master frame. Zhao does disclose an inverse matrix being applied to transform tooling in an image frame to a tool frame, however, there is no mention of any sort of flip rotation matrix (or inverse) being applied to movement of an input handle in a master frame. As such, claims 2-21 are considered to have potential allowable subject matter over the prior art; however, there is still the pending requirement for the submission of a terminal disclaimer to overcome the current double patenting rejection against all pending claims.
Conclusion
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/CHRISTOPHER A BUKSA/Examiner, Art Unit 3658