DETAILED ACTION
This Office Action is in response to the Amendment filed 21 April 2026. Claim(s) 4-14 are currently pending. The Examiner acknowledges the amendments to claim(s) 4, cancelled claim(s) 1-3 and new claim(s) 5-14.
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 .
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
No claim limitation has been interpreted under 35 U.S.C. 112(f) because each term (e.g., ‘instrument holder’ ) connotes sufficient structure to a POSITA. See MPEP § 2181. If applicant contends otherwise, please point to supporting disclosure.”
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.
Claim 4-14 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.
Claim 4 recites the limitation "the ends" in line 23. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the ends" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the motor" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the motor" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites “the instrument holder further comprises a motor interconnected between the track and the instrument holder” is indefinite since the motor is part of the instrument holder but is claimed to be in between the track and an itself.
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) 4 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carol et al. (US 2001/0039422A1, “Carol”).
Regarding claims 4 and 5, Carol discloses a surgical head clamp and robotics platform capable of securing a head of a patient and positioning an instrument relative to the head, the surgical head clamp and robotics platform includes a frame (146;Fig. 1) capable of at least partially receiving the head of a patient. The frame includes a plurality of pins (150 and two pin bracket/carriage; Fig. 3; [0052]) movably disposed in the frame. Each pin is capable of adjustably extending toward the head of the patient relative to the frame for immobilizing the head of the patient in the frame (Figs. 1, 3). A robotic arm (16; Fig. 1) mounted adjacent to the frame and including an elongated arcuate track (104;[0042]). The robotic arm is capable of rotating about an axis passing through the ends of the arcuate track via prove alignment ball (86) [0042]. An instrument holder (106) is capable of holding the instrument (24) and is movably mounted to the track [0042] to advance the instrument holder on a curvilinear path in both directions along the track and capable of selectively positioning the instrument holder and instrument relative to the frame and head of the patient [0042].
Regarding claim 9, Carol discloses that the frame is in a plane and the instrument holder is offset from the plane to minimize interference with imaging access or surgical to the head of the patient (Fig. 1).
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) 10 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carol in view of Stratton et al. (US 2012/0065496A1, “Stratton”).
Regarding claims 10 and 14, Carol does not disclose that the robotics platform is formed of PEEK, titanium, polymer, carbon fiber, ceramic, glass-filled polymer or other composite, other non-ferromagnetic materials compatible with MRI and x-ray imaging.
In the same field of endeavor, stereotaxic devices, Stratton teaches a stereotaxic device formed of MRI compatible material, ceramic or glass-filled polymer material [0050]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the material of the device of Carol with the material, as taught by Stratton, as this modification involves the simple substitution of one material for another for the predictable result of providing a material that is stiff and MRI compatible [0050].
Response to Arguments
Applicant’s arguments with respect to claim(s) 4-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Barbier et al. (US 4,360,028) and Appenrodt et al. (US 2008/0269777A1) disclose an instrument holder disposed on a track.
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 JOCELIN C TANNER whose telephone number is (571)270-5202. The examiner can normally be reached M-F 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571)272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOCELIN C TANNER/Primary Examiner, Art Unit 3771
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