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 (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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Goldberg et al. (US 2014/0081455) in view of El-Galley et al. (US 2005/0143724).
Regarding claim 6, Goldberg discloses a method automatically assigning foot pedals of a surgical system to electrosurgical instruments (see Figs. 1 and 4), the method comprising: receiving a signal that a first electrosurgical foot pedal is actuated (see command signal when a foot pedal is depressed, [0030]); determining a number of electrosurgical instruments connected to the surgical robot in response to actuation of the first electrosurgical foot pedal (see detection of two surgical instruments, surgical instruments 102 and 103, [0035] and [0048], Fig. 1); assigning the first electrosurgical foot pedal to a first electrosurgical instrument connected to the surgical robot after the first electrosurgical foot pedal is actuated (see teleoperated surgical system 100 may assign an auxiliary function, in response to actuation of foot pedal 124a, [0079]), and generating a first electrosurgical firing command after the foot pedal is assigned (see, for example, monopolar energy sent to the tool in response to actuation of the foot pedal after assignment, [0079]). However, Goldberg fails to further disclose generating a first prompt for a clinician interfacing with the robotic surgical system to select one of the first or second electrosurgical instruments to assign to the first electrosurgical foot pedal in response to actuation of the first electrosurgical foot pedal; receiving a selection of the first electrosurgical instrument from the clinician; and assigning the first electrosurgical foot pedal to the first electrosurgical instrument in response to receiving the selection of the first electrosurgical instrument and before generating the first electrosurgical fire command.
El-Galley teaches an electrosurgical system with multiple electrosurgical devices (see Figs. 1 and 5) comprising a display on a user console for selecting an instrument for use from multiple instruments and assigning the input from foot pedals to the selected instrument based on a selection from the user before actual use of the electrosurgical devices, wherein the prompts/buttons for selection can be virtual buttons/prompts displayed on a touch screen (see [0045]-[0049]). 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 modified the method as disclosed by Goldberg to further include generating a first prompt for a clinician interfacing with the robotic surgical system to select one of the first or second electrosurgical instruments to assign to the first electrosurgical foot pedal in response to actuation of the first electrosurgical foot pedal; receiving a selection of the first electrosurgical instrument from the clinician; and assigning the first electrosurgical foot pedal to the first electrosurgical instrument in response to receiving the selection of the first electrosurgical instrument and before generating the first electrosurgical fire command in light of El-Galley, the motivation being to provide the additional advantage of increased flexibility in which foot pedal is assigned to what device and what function for that device (see El-Galley [0047]-[0048]).
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.
Claims 2-21 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,114,950. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 12,114,950 anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Allowable Subject Matter
Claims 2-19 would be allowable if rewritten to overcome the non-statutory Double Patenting rejections, as set forth in this Office action.
Claim 21 would be allowable if rewritten to overcome the non-statutory Double patenting rejections, as set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, Goldberg et al. (US 2014/0081455), El-Galley et al. (US 2005/0143724), and Berry et al. (US 2015/0257814), fails to reasonably teach or suggest assigning the second electrosurgical foot pedal to the second electrosurgical instrument in response to receiving the selection of the first electrosurgical instrument when read in combination with the incorporated requirements of claims 2 and 14. The prior art of record generally teaches assigning a first and second instrument sequentially, however the prior art of record fails to specifically teach or suggest assigning the second electrosurgical foot pedal to the second electrosurgical instrument in response to receiving the selection of the first electrosurgical instrument as claimed.
Regarding claim 21, the closest prior art generally teaches generation of a first prompt to assign the first electrosurgical instrument to a foot pedal, however the closest prior art fails to reasonably teach or suggest regenerating the first prompt when delivering electrosurgical energy to the first electrosurgical instrument fails as specifically claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN W COLLINS whose telephone number is (408)918-7607. The examiner can normally be reached M-F 9:00 AM-5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached on 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794
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