DETAILED ACTION
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the motor in said body configured to allow motorized actuation of said at least one first gear must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-59 objected to because of the following informalities: Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: Holder in claims 3, and 19 (see page 13, final paragraph for details of the claimed holder).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1-3, 5, 16, 18-21, 32-36, 54-59 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.
Regarding claims 1 and 32, the applicant’s term “axially” is introduced in relation to the distal end, and then re-introduced in relation to the rod. It is presumed these “axially” defined orientations are one in the same? If not, it’s unclear what the applicant means by each axially as the first recitation of axially is undefined.
Additionally, it is not clear what the “first gear” is protruding from, as shown in the applicants figures 4a and 4b, the first gear 414 is provided within the distal end housing in the axial direction (shown by cross-section of 4b) and not shown in figure 4a. It’s unclear as to how the first gear protrudes.
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.
Claim(s) 1, and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Anmelder (DE 10 2005 040 573) in view of He (US Pat No 9,038,505).
Regarding claim 1, Anmelder discloses a manual release tool configured for manually rotating a gear of a motor unit of a motorized robotic system, comprising:
a. a body (12);
b. a handle on a proximal side of said body;
c. a distal end of said body comprising at least one first gear (26) protruding axially from said distal end;
the at least one first gear configured to operatively interact with at least one second gear of said motor unit of said motorized robotic system (capable of interacting);
It is noted that Anmelder fails to disclose the features of the knob. However, He discloses a similar tool wherein the mechanical elements are rotated by a knob (53) which rotates a gear (32). It would have been obvious to one having ordinary skill in the art to have modified the device of Anmelder with the teachings of He to achieve the predictable result of easily and manually providing the actuation for the end tool/gear.
The combination discloses force is transmitted by said knob to said at least one first gear using an axially oriented rod; the force being converted into rotation of said at least one first gear perpendicular to a longitudinal axis of said body and conveyed in a plane of said narrow distal end of said body by rotation of said at least one first gear in said plane.
Regarding claim 2, the combination discloses said conveying is performed by a series of side by side gears operatively connected to said at least one first gear.
Claim(s) 32, 34, 35, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Anmelder (DE 10 2005 040 573) in view of Hu et al (US Pat No 10,525,572).
Regarding claim 32, Anmelder discloses a manual release tool configured for manually rotating a gear of a motor unit of a motorized robotic system, comprising:
a. a body (12);
b. a knob (18) rotatable around an axis of the body and located on a proximal side of said body;
c. a distal end of said body comprising at least one first gear (26) protruding axially from said distal end;
said at least one first gear configured to operatively interact with at least one second gear of said motor unit of said motorized robotic system (capable of interacting);
It is noted that Anmelder fails to disclose the features of the knob and the motor provided in the body. However, Hu discloses a similar tool wherein the mechanical elements are rotated by a motor (31) which rotates a gear (24). It would have been obvious to one having ordinary skill in the art to have modified the device of Anmelder with the teachings of Hu to achieve the predictable result of easily and integrally providing the actuation for the end tool/gear.
The combination discloses the force is transmitted by said motor to said at least one first gear using an axially oriented rod; said force being converted into rotation of said at least one first gear perpendicular to a longitudinal axis of said body and conveyed in a plane of said narrow distal end of said body by rotation of said at least one first gear in said plane.
Regarding claim 34, the combination discloses circuitry (e.g. for button 33) configured to control said at least one motor.
Regarding claim 35, the combination discloses circuitry is operable by a user using one or more of a button (33), an external device connected via wireless connection and a GUI.
Regarding claim 36, Anmelder discloses conveying is performed by a series of side by side gears operatively connected to said at least one first gear.
Allowable Subject Matter
Claims 3, 5, 16, 18, 19, 20, 21, 33, and 54-59 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cited art generally discloses features believed to be relevant to applicant’s claimed invention, relating to a tool which operates by rotating the handle to actuate the end of the tool.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Patrick Cicchino whose telephone number is (571)270-1954. The examiner can normally be reached Monday-Friday, 8:30AM to 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Patrick Cicchino/Primary Examiner, Art Unit 3619
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