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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 16SEP2024 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
¶0056 recites surgical lights 122. All other instances of part 122 recite the data collection module. Data collection module is seen in Figure 9 to be labeled as part 922
¶0107 recites “input/output devices 320, control devices 322 (e.g., keyboard and pointing devices), drive units 324 including a storage medium 326, and a signal generation device 320 that are communicatively connected to a bus 316.” Part 320 cannot be used to designate multiple components (i.e. input/output devices & signal generation device). Figure 3 of the drawings designates part 320 as the input/output device.
¶0107 recites “signal generation device 320”. Figure 3 of the drawings designates the signal generation device as part 330.
¶0124 recites “interface 420”. Part 420 has already been designated as a console. The terminology should remain consistent throughout the specification.
¶0124 recites “controller 450” when all other mentions of part 450 refer to a data system. The terminology should remain consistent throughout the specification.
¶0126 recites “interfaces of displays 401” when all other mentions of part 401 disclose “consultant device 401”. Terminology should remain consistent.
¶0177 recites “room viewer 466” when all other mentions of part 466 disclose “control module 466”. Terminology should remain consistent.
¶0183 recites “display module 524” when other mentions of part 524 recites “operator input 524”. Terminology should remain consistent.
¶0215 recites “cloud 920” where as shown in figure 9, cloud should be labeled as cloud 932. Part 920 refers to the base module 920 as seen in ¶0233.
¶0216 recites “controller 910” when other mentions of part 910 recites “user interface 910”. Terminology should remain consistent.
¶0216 recites “The controller 910 is in communication with communications interface 912 and may further be allowed to control at least one robotic arm 912 a”. Terminology should remain consistent for part 912.
¶0220 recites “The robotic arm 914”. This should say robotic arm 912.
¶0226 recites “A sensor 914 may be discrete or part of an array or assembly, such as integrated into a catheter. One or more of the sensors 914”. Sensor assembly should be part 916 such as seen in Figure 9.
¶0285 recites “step 9220”. This should instead say step 1220 to follow figure 12.
Appropriate correction is required.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “466” has been used to designate both a surgical site and controls in Figure 4C. 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. 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.
The drawings are objected to because Figure 13 should have part 1306 not 1206. 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.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of US Patent No 12,089,905.
Claims 1, 8, & 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, & 15 of US Patent No 12,089,905. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 8, & 15 of US Patent No 12,089,905 is more specific to all that is recited in Claims 1, 8, & 15 of the instant application, which is a more generic representation of the same device. That is, claims 1, 8, & 15 of the instant application fall entirely within the scope of claims 1, 8, & 15 of US Patent No 12,089,905 and the claims are fully encompassed by claims 1, 8, & 15 of US Patent No 12,089,905. The subject matter claimed is in similar context and topics, though ordered differently and/or reworded to appear different. The claims of US Patent No 12,089,905 appear to be the compliment of the instant application Claims 1, 8, & 15. This is a nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 3, 10, & 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 10, & 17 of US Patent No 12,089,905. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 3, 10, & 17 of US Patent No 12,089,905 is more specific to all that is recited in Claims 3, 10, & 17 of the instant application, which is a more generic representation of the same device. That is, claims 3, 10, & 17of the instant application fall entirely within the scope of claims 3, 10, & 17 of US Patent No 12,089,905 and the claims are fully encompassed by claims 3, 10, & 17 of US Patent No 12,089,905. The subject matter claimed is in similar context and topics, though ordered differently and/or reworded to appear different. The claims of US Patent No 12,089,905 appear to be the compliment of the instant application Claims 3, 10, & 17. This is a nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 4, 11, & 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 11, & 18 of US Patent No 12,089,905. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 4, 11, & 18 of US Patent No 12,089,905 is more specific to all that is recited in Claims 4, 11, & 18 of the instant application, which is a more generic representation of the same device. That is, Claims 4, 11, & 18 of the instant application fall entirely within the scope of claims 4, 11, & 18 of copending US Patent No 12,089,905 and the claims are fully encompassed by claims 4, 11, & 18 of US Patent No 12,089,905. The subject matter claimed is in similar context and topics, though ordered differently and/or reworded to appear different. The claims of US Patent No 12,089,905 appear to be the compliment of the instant application Claims 4, 11, & 18. This is a nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 5, 12 , & 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 12 , & 19 of US Patent No 12,089,905. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5, 12 , & 19 of US Patent No 12,089,905 is more specific to all that is recited in Claims 5, 12 , & 19 of the instant application, which is a more generic representation of the same device. That is, claims 5, 12 , & 19 of the instant application fall entirely within the scope of claims 5, 12 , & 19 of US Patent No 12,089,905 and the claims are fully encompassed by claims 5, 12 , & 19 of US Patent No 12,089,905. The subject matter claimed is in similar context and topics, though ordered differently and/or reworded to appear different. The claims of US Patent No 12,089,905 appear to be the compliment of the instant application Claims 5, 12 , & 19. This is a nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 6, 13, & 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 & 14 of US Patent No 12,089,905. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 7 & 14 of US Patent No 12,089,905 is more specific to all that is recited in Claims 6, 13, & 20 of the instant application, which is a more generic representation of the same device. That is, claims 6, 13, & 20 of the instant application fall entirely within the scope of claims 7 & 14 of US Patent No 12,089,905 and the claims are fully encompassed by claims 7 & 14 of US Patent No 12,089,905. The subject matter claimed is in similar context and topics, though ordered differently and/or reworded to appear different. The claims of US Patent No 12,089,905 appear to be the compliment of the instant application Claims 6, 13, & 20. This is a nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2, 7, 9, 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 10, & 17 of US Patent No 12,089,905. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 3, 10, & 17of US Patent No 12,089,905 is more specific to all that is recited in Claims 2, 7, 9, 14, and 16 of the instant application, which is a more generic representation of the same device. Regarding claims 3, 10, & 17, the claims recites “move the robotic surgical apparatus based on the surgical step”, which is an obvious variation of claims 2, 9, & 16 of the instant application; see US 2019/0125361.That is, claims 2, 7, 9, 14, and 16 of the instant application fall entirely within the scope of claims 3, 10, & 17 of US Patent No 12,089,905 and the claims are fully encompassed by claims 3, 10, & 17 of US Patent No 12,089,905. The subject matter claimed is in similar context and topics, though ordered differently and/or reworded to appear different. The claims of US Patent No 12,089,905 appear to be the compliment of the instant application Claims 2, 7, 9, 14, and 16. This is a nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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:
“computing system” in Claim 15;
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Claim limitation “computing system”, has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because they use a generic placeholder “system” coupled with functional language without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation. Though the “computing system” is described in the specification: [0095]In embodiments, the system 100 uses quantum computing. Quantum computing refers to the use of a computational device or method that uses properties of quantum states defined by quantum mechanics such as superposition, entanglement, etc., to perform computations. Quantum devices use qubits, which are the quantum equivalent of bits in a classical computing system. Qubits have at least two quantum states or probable outcomes. These outcomes, combined with a coefficient representing the probability of each outcome, describes the possible states, or bits of data, which can be represented by the qubits according to the principle of quantum superposition. These states can be manipulated to shift the probability of each outcome, or additionally, add additional possible outcomes to perform computations, the final state of which can be measured to achieve the result.”, no specific device is named. For the purpose of examination, the examiner is interpreting computing system as a processor. The specification further discloses other computing systems (see ¶0107, ¶0108], & ¶0110).
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for method, system, and non-transitory computer-readable medium using general purpose computers as disclosed in in ¶0107, ¶0108 & ¶0110 of the Specification, does not reasonably provide enablement for using the “quantum computing” disclosed in ¶0095. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
In making a determination as to whether an application has met the requirements for enablement under 35 U.S.C. 112(a), the following factors enumerated In re Wands, 8 USPQ2d 1400, at 1404 (CAFC 1988) are considered:
(1) the breadth of the claims,
(2) the amount of direction or guidance presented,
(3) the presence or absence of working examples,
(4) the nature of the invention,
(5) the state of the prior art,
(6) the relative skill of those in the art,
(7) the predictability or unpredictability of the art, &
(8) the quantity of experimentation necessary.
While it is not essential that every factor be examined in detail, those factors deemed most relevant should be considered.
Breadth of the Claim and Nature of the Invention
Claim 1, 8, and 15 and all dependent claims thereof are directed to method, system, and non-transitory computer-readable medium for controlling a robotic surgical apparatus. As set forth above in the Claim Interpretation section, the limitation “computing system” in claim 15 and all dependent claims thereof is being interpreted under 35 U.S.C. 112(f) and would read on computing systems disclosed in ¶0095, ¶0107, ¶0108, & ¶0110. While computing systems disclosed in ¶0107, ¶0108, & ¶0110 of the specification includes general purpose computers, ¶0095 discloses that the computing system can include quantum computing. Similarly, method of claim 1 and system of claim 2 also would encompass use of computing system that would include both general purpose computers and quantum computing.
Working Examples/The Amount of Direction
While the specification discloses the general suggestion of using quantum computing in ¶0095 and ¶0096, the specification does not provide any working examples or specific details of computing algorithm to implement control of robotic surgical apparatus by using quantum computing.
The State of the Prior Art, the Relative Skill of Those in the Art, the Predictability or Unpredictability of the Art
MPEP 2164.03 states the following:
“The "predictability or lack thereof" in the art refers to the ability of one skilled in the art to extrapolate the disclosed or known results to the claimed invention. If one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention pertains, then there is predictability in the art. On the other hand, if one skilled in the art cannot readily anticipate the effect of a change within the subject matter to which that claimed invention pertains, then there is lack of predictability in the art. Accordingly, what is known in the art provides evidence as to the question of predictability.”
For the quantum computing field, the following articles provide current progress and advances in quantum computing.
Jiang et al. (Advancements in superconducting quantum computing, National Science Review, Volume 12, Issue 8, August 2025, nwaf246, https://doi.org/10.1093/nsr/nwaf246)
Introduction section, “Quantum computing represents a revolutionary computational paradigm that employs quantum processors—physical systems engineered to operate according to quantum mechanical principles—to perform information processing via the encoding, manipulating and measuring of quantum states. The unique quantum phenomena of entanglement and superposition enable quantum computers to offer significant advantages over classical counterparts for specific problem sets. Among the various hardware approaches to practical quantum computing, superconducting quantum computing (SQC) stands out as a promising method.”
Near-term applications section, “Although quantum computing has yet to achieve widespread commercial applications, the continued advancement of quantum hardware and software suggests that its potential value will gradually become apparent in the coming years. Furthermore, the increasing collaboration between industry organizations and academic institutions is accelerating this process, pushing quantum computing technology from the laboratory into real-world applications. As these advancements continue, the promise of quantum computing to solve complex, real-world problems becomes ever more tangible.”
Raseena (Quantum computing: foundations, algorithms, and emerging applications, Front. Quantum Sci. Technol., 4:1723319, 2025, doi: 10.3389/frqst.2025.1723319)
Abstract section, “Quantum computing is an emerging paradigm that leverages the principles of quantum mechanics to solve computational problems beyond the reach of classical computers.”
1. Introduction section, “Imagine a machine that does not compute by flipping a long string of zeros and ones, but by coaxing tiny quantum objects into behaving like complex waves of
possibility. That’s the intuitive leap behind quantum computing: instead of bits that are definitely 0 or 1, quantum computers use qubits that can exist in superpositions of states, become entangled so their fates are linked across space, and exploit interference to amplify correct answers while canceling wrong ones. These phenomena: superposition, entanglement, and interference are the conceptual tools that let quantum algorithms explore many possible solutions at once in ways classical algorithms cannot. Because of those properties, quantum machines have the potential to transform domains where classical approaches struggle.”
9.2 Trend & prediction section, “Experts often forecast that quantum computers will initially complement classical systems, rather than fully replace them, targeting niche areas where quantum advantage emerges (Preskill, 2018; Dalzell, 2023). Some believe within the next decade, we may see “quantum utility”—device-scale applications where quantum methods give practical gains in specific domains (e.g., chemistry, optimization) (Preskill, 2018; Dalzell, 2023). Beyond that, fault-tolerant universal quantum computing may arrive in ~15–20 years (or more), depending on engineering progress (Preskill, 2018; Dalzell, 2023). Predictions are cautious: many believe scaling, error correction, verification, and cost are still vast hurdles before broad deployment (Preskill, 2018; Dalzell, 2023).”
Devadas (Quantum machine learning: A comprehensive review of integrating AI with quantum computing for computational advancements, MethodsX, 2025 Apr 18, 14:103318. doi: 10.1016/j.mex.2025.103318. PMID: 40331033; PMCID: PMC12053761)
Conclusion section, “This all-encompassing research has delved into the multi-faceted advancements in quantum machine learning, with a special focus on quantum-enhanced K-Nearest Neighbors and Quantum Neural Networks. This research points out the transformative potential of quantum machine learning across diverse domains such as healthcare, image classification, drug discovery, and natural language processing. Quantum-enhanced methods, including advanced distance metrics, hybrid architectures, and quantum circuit designs, have shown superior accuracy, efficiency, and robustness compared to classical approaches. However, major challenges persist, such as dependency on quantum hardware, noise sensitivity, scalability issues, and high computational demands. Most studies remain limited to small-scale or benchmark datasets, thus requiring broader generalization and application to complex real-world problems. Advances in the fields of scalable, noise-resistant quantum hardware, efficient training algorithms, and hybrid quantum-classical models will help break through these barriers. Increasing the applicability scope and optimizing resource usage will also increase the practicality of the quantum applications. In conclusion, although significant challenges remain, the progress made in quantum machine learning underscores its potential to revolutionize machine learning, bridging theoretical innovation with practical impact.”
Above articles illustrate that while significant advancements have been made in the field of quantum computing, practical application of quantum computing in solving real-world problems remains challenging. In medical fields, applicant’s own specification acknowledges potential promise for quantum computing in ¶0096:
“In medical fields, quantum computing shows the greatest promise for drug discovery and simulating the interaction of drugs with biologic systems, however the same technology can also be used to predict the interaction of a biologic system with an implanted device, preventing rejection of an implant by a patient's body.”
As such, practical application of quantum computing remains unpredictable as the field currently faces many challenges and further progress needs to be made in practical application of quantum computing in real-world problems biomedical application.
The Quantity of Experimentation Necessary
MPEP 2164.03 states the following:
“The amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). The "amount of guidance or direction" refers to that information in the application, as originally filed, that teaches exactly how to make or use the invention. The more that is known in the prior art about the nature of the invention, how to make, and how to use the invention, and the more predictable the art is, the less information needs to be explicitly stated in the specification. In contrast, if little is known in the prior art about the nature of the invention and the art is unpredictable, the specification would need more detail as to how to make and use the invention in order to be enabling.”
Together with the lack of predictability in the field of quantum computing application as discussed above and no working examples provided in applicant’s own specification, an undue amount of experimentation would be required to practice the claimed invention of controlling a robotic surgical apparatus using quantum computing.
Taking all the factors into consideration, the as-filed specification does not describe how to make and use the claimed invention of controlling a robotic surgical apparatus using quantum computing without undue experimentation.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As discussed above in the scope of enablement rejection, claim 1, 8, and 15 and all dependent claims thereof are directed to method, system, and non-transitory computer-readable medium for controlling a robotic surgical apparatus. As set forth above in the Claim Interpretation section, the limitation “computing system” in claim 15 and all dependent claims thereof is being interpreted under 35 U.S.C. 112(f) and would read on computing systems disclosed in ¶0095, ¶0107, ¶0108, & ¶0110. While computing systems disclosed in ¶0107, ¶0108, & ¶0110 of the specification includes general purpose computers, ¶0095 discloses that the computing system can include quantum computing. Similarly, method of claim 1 and system of claim 2 also would encompass use of computing system that would include both general purpose computers and quantum computing.
MPEP 2161.01(I) states the following:
“When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.”
“The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172; Capon v. Eshhar, 418 F.3d 1349, 1357-58, 76 USPQ2d 1078, 1083-84 (Fed. Cir. 2005). Computer-implemented inventions are often disclosed and claimed in terms of their functionality. For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software. The critical inquiry is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”
Given the complexity and unpredictability of quantum computing as discussed above in the scope of enablement rejection and lack of any specific details or algorithms in the as-filed specification of how quantum computing would be implemented to carry out the steps to control robotic surgical apparatus as claimed, claims 1-20 lack written description support. Since the as-filed specification does not provide algorithms or steps/procedure taken to control robotic surgical apparatus with sufficient details, one of ordinary skill in the art would not understand how the inventor intended the claimed function to be performed.
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 1-20 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, 8, & 15:
The claim recites “determining one or more instruments are available for performing at least a portion of a surgical step to be performed on a portion of an anatomy of a patient by the robotic surgical apparatus”. It is unclear how the system determines the presence of instruments as there is no supporting structures or methods that would describe the type of determination being made. For the purposes of examination, the examiner is interpreting the determination being performed by using a sensor. Clarification is required.
The claim recites “determining at least one outcome of a simulation with the one or more instruments and the robotic surgical apparatus when the robotic surgical apparatus is positioned at a first location in an operating room”. It is unclear what is occurring in the simulation as to obtain an outcome. Clarification is required.
Claims 2-7, 9-14, & 16-20 are further rejected for depending upon rejected claims 1, 8, & 15.
Prior Art
Limitation “determining one or more instruments are available for performing at least a portion of a surgical step to be performed on a portion of an anatomy of a patient by the robotic surgical apparatus; determining at least one outcome of a simulation with the one or more instruments and the robotic surgical apparatus when the robotic surgical apparatus is positioned at a first location in an operating room, wherein the simulation indicates that an end effector of the robotic surgical apparatus is unable to use the one or more instruments to perform the portion of the surgical step;” as recited in independent claims 1, 8, & 15 of the instant application 18/886,412 is substantially similar to limitation “determining one or more instruments are available for performing at least a portion of a surgical step to be performed on a portion of an anatomy of patient; determining at least one outcome of a pre-operative simulation with the one or more instruments and the end effector, when the robotic surgical apparatus is position at the first location, wherein the pre-operative simulation indicates that the end effector is unable to use the one or more instruments to perform the portion of the surgical step.” from Application 18/321,084. Application 18/321,084 was deemed allowable in the Notice of Allowance mailed on 23MAY2024. 18/321,084 is a CON of instant application 18/886,412, and are the instant claims are allowable for the same reasons as stated for the parent application.
Conclusion
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/MEGAN T FEDORKY/Examiner, Art Unit 3796
/UNSU JUNG/Supervisory Patent Examiner, Art Unit 3792
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