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 .
This is in response to Applicant communication filed on 10/2/24, wherein:
Claims 1-20 are currently pending.
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: a yaw mechanism, a pitch mechanism, a plunge mechanism” in claims 1, 13, 17.
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.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. (US 12,150,722). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims 1-20 of the copending and claims 1-20 of the US Patent (US 12,150,722) show for example: A gross positioning system for use with a robotic surgical device, the system comprising: (a) a positioning body; (b) a yaw mechanism operably coupled to the positioning body at a first rotational joint and configured to rotate about a yaw axis; (c) a pitch mechanism operably coupled to the positioning body at a second rotational joint and configured to rotate about a pitch axis that intersects the yaw axis at an incision; and (d) a plunge mechanism slidably coupled to the pitch mechanism such that the plunge mechanism can move along a plunge axis.
Although claims 1-20 of US Patent No. (US 12,150,722) have additional features. However, it has been held that deleting elements when the function of element is not desired is obvious. See MPEP 2144.04 Section II. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify or to omit the additional elements of claims 1-20 of the US Patent No. US 12,150,722 to arrive at the claims 1-20 of the copending because the person would have realized that the remaining element would perform the same functions as before. “Omission of element and its function in combination is obvious expedient if the remaining elements perform same functions as before.” See In re Karlson (CCPA) 136 USPQ 184, decide Jan 16, 1963, Appl. No. 6857, U. S. Court of Customs and Patent Appeals.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-20 are rejected under 35 U.S.C. 102(a)(1)as being anticipated by REICHENBACH ET AL (US 2018/0140377) from Applicant’s IDS filed on 1/3/25. Herein after RECHENBACH.
As for claim 1, REICHENBACH discloses a gross positioning system for use with a robotic surgical device {figure 2A-B,gross position device 20, abstract}, the system comprising:
(a) a positioning body {see at least abstract, figures 2A-2C, item 28, par. 0009, 0056 which discloses gross positioning device 20 has a body 28};
(b) a yaw mechanism operably coupled to the positioning body at a first rotational joint and configured to rotate about a yaw axis {see at least figures 3 and 4, items 30, 50 and pars. 0058-0059 which discloses a first arm link 30 is rotatably coupled to the base 28 at first joint 50; figures 8-9, pars. 0065-0067 discloses the yaw rotation, pitch rotation and roll (plunge) rotation of the axes 90, 92, 94 relating to each of the joints 50, 60, 70of the robot device 74};
(c) a pitch mechanism operably coupled to the positioning body at a second rotational joint and configured to rotate about a pitch axis that intersects the yaw axis at an incision {see at least figures 3 and 5, items 32, 60 and par. 0061 which discloses e.g. the first arm link 30 and the second arm link 32 are rotatably coupled to each other at a second joint 60…… the second link 32 is fixed coupled to the bracket 62 such that actuation of the second motor 64 causes rotation of the motor 64 in relation to the bracket 62, thereby causing rotation of the second link 32 in relation to the first link 30 around the joint 60; see also figures 8-9, pars. 0065-0067 discloses the yaw rotation, pitch rotation and roll (plunge) rotation of the axes 90, 92, 94 relating to each of the joints 50, 60, 70of the robot device 74}; and
(d) a plunge mechanism slidably coupled to the pitch mechanism such that the plunge mechanism can move along a plunge axis {see at least figures 3, 6-7, items 34, 36 and pars. 0062-0064 discloses e.g. the coupling component 36 is slidably coupled to the third link 34 such that the coupling component 36 (and thus the robotic device 74) can be positioned anywhere along the longitudinal length of the third link 34. As such, the robotic device 74 can be moved toward and away from the third joint 70 as desired to position the device 74 along the longitudinal axis of the third link 34; see also figures 8-9, pars. 0065-0067 discloses the yaw rotation, pitch rotation and roll (plunge) rotation of the axes 90, 92, 94 relating to each of the joints 50, 60, 70 of the robot device 74}.
As for claim 2, REICHENBACH discloses wherein the plunge mechanism is configured to be couplable to a robotic surgical device {see at least figures 3, 6-7, items 34, 36 and pars. 0062-0064}.
As for claim 4, REICHENBACH discloses wherein the yaw mechanism further comprises a motor operably engaged with an output shaft configured to rotate the positioning body around the first rotational joint {see at least figures 3-4, pars. 0058-0059}.
As for claim 5, REICHENBACH discloses, wherein the yaw mechanism further comprises: (a) a drive gear coupled to the motor; (b) a driven gear operably engaged with the drive gear; (c) a screw coupled to the driven gear; and (d) a wheel is coupled to the output shaft, wherein the wheel is operably engaged with the screw {see at least figures 3-4, pars. 0058-0059}.
As for claim 6, REICHENBACH discloses wherein the pitch mechanism further comprises a motor operably engaged with a curved output rail configured to rotate the plunge mechanism around the second rotational joint {see at least figures 3, 5 and par. 0061}.
As for claim 7, REICHENBACH discloses wherein the pitch mechanism further comprises: (a) a screw coupled to the motor; (b) a wheel operably engaged with the screw; and (c) a rotatable gear operably coupled to the wheel, wherein the rotatable gear is operably engaged with the curved output rail {see at least figures 3, 5 and par. 0061}.
As for claim 8, REICHENBACH discloses wherein the plunge mechanism further comprises a motor operably engaged with an elongate output rail configured to translationally move the plunge mechanism along the plunge axis {see at least figures 3, 6-7, items 34, 36 and pars. 0062-0064}.
As for claim 9, REICHENBACH discloses wherein the plunge mechanism further comprises a clamp configured to be coupleable to the robotic surgical device {see at least figures 3, 6-7, items 34, 36 and pars. 0062-0064}.
As for claim 10, REICHENBACH discloses wherein a first axis of rotation of the first rotational joint, a second axis of rotation of the second rotational joint, and the plunge axis intersect at a single point of intersection {see at least figure 8, pars. 0065-0067.
As for claim 11, REICHENBACH discloses two or more lasers configured to emit light beams intersecting at the single point of intersection {see at least figures 13A-13B, pars. 0074-0075}.
As for claim 12, REICHENBACH discloses a controller operably coupled to the gross positioning system and the robotic surgical device, wherein the gross positioning system and robotic surgical device are configured to operate together to position the robotic surgical device within a body cavity of a patient {see at least figures 1, 3 and 10}.
As for claim 13, REICHENBACH discloses a gross positioning system for use with a robotic surgical device, the system comprising:
(a) a positioning body {see at least abstract, figures 2A-2C, item 28, par. 0009, 0056 which discloses gross positioning device 20 has a body 28};
(b) a yaw mechanism operably coupled to the positioning body at a first rotational joint and configured to rotate about a yaw axis {see at least figures 3 and 4, items 30, 50 and pars. 0058-0059 which discloses a first arm link 30 is rotatably coupled to the base 28 at first joint 50};
(c) a pitch mechanism operably coupled to the positioning body at a second rotational joint and configured to rotate about a pitch axis that intersects the yaw axis at an incision {see at least figures 3 and 5, items 32, 60 and par. 0061 which discloses e.g. the first arm link 30 and the second arm link 32 are rotatably coupled to each other at a second joint 60…… the second link 32 is fixed coupled to the bracket 62 such that actuation of the second motor 64 causes rotation of the motor 64 in relation to the bracket 62, thereby causing rotation of the second link 32 in relation to the first link 30 around the joint 60};
(d) a plunge mechanism slidably coupled to the pitch mechanism such that the plunge mechanism can move along a length of a plunge axis, wherein the plunge mechanism is configured to translationally move the robotic surgical device along the length of the plunge axis {see at least figures 3, 6-7, items 34, 36 and pars. 0062-0064 discloses e.g. the coupling component 36 is slidably coupled to the third link 34 such that the coupling component 36 (and thus the robotic device 74) can be positioned anywhere along the longitudinal length of the third link 34. As such, the robotic device 74 can be moved toward and away from the third joint 70 as desired to position the device 74 along the longitudinal axis of the third link 34 and
see also figures 8-9, pars. 0065-0067 discloses the yaw rotation, pitch rotation and roll (plunge) rotation of the axes 90, 92, 94 relating to each of the joints 50, 60, 70of the robot device 74};
(e) the robotic surgical device operably coupled to the plunge mechanism {see at least figures 3, 6 and par. 0062}, the robotic surgical device comprising: (i) a device body {see at least figures 2A-2B, 3, 6 discloses robotic device 22, 74, pars. 0062, 0064, 0077}; and (ii) an arm operably coupled to the device body, the arm comprising an end effector {see at least figures 2A-2B, 3, 6, pars. 0057, 0062, 0064}; wherein the robotic surgical device is positionable through an insertion point in a patient such that the arm and at least a portion of the device body is positionable within a body cavity of the patient at a desired yaw angle, pitch angle, and plunge depth {see at least figures 2A-2B, 3, 6, pars. 0057, 0062, 0064, 0077 discloses e.g. device 22, device 74 within the surgical space in the cavity of the patient through the incision. The three links 30, 32, 34 rotate about the respective axes 90, 92, 94 to position the device 22, 74}.
As for claim 14, REICHENBACH discloses wherein a first axis of rotation of the first rotational joint, a second axis of rotation of the second rotational joint, and the plunge axis intersect at a single point of intersection {see at least figure 8, pars. 0010, 0068 and claim 2}.
As for claim 15, REICHENBACH discloses wherein the single point of intersection is disposed at some point along a portion of the robotic surgical device {see at least figure 8, pars. 0010, 0068 and claim 2}.
As for claim 16, REICHENBACH discloses wherein the single point of intersection is disposed at an insertion point of a patient and the arm is partially disposed through the single point of intersection {see at least figure 8, pars. 0010, 0068 and claim 2}.
As for claim 17, the limitations of this claim has been noted in the rejection above. It is therefore rejected for the same reason sets forth above.
As for claim 18, REICHENBACH discloses wherein the support arm further comprises: (a) a clamp configured to couple with a bed rail; (b) a rod coupled to the clamp; (c) a first elongate arm operably coupled to the rod at a third rotational joint; and (d) a second elongate arm operably coupled to the first elongate arm at a fourth rotational joint and operably coupled to the positioning body at a fifth rotational joint {see at least figures 3, 6 and pars. 0054, 0062-0064}.
As for claim 19, REICHENBACH discloses wherein the third rotational joint, the fourth rotational joint, and the fifth rotational joint are each configured to rotate around parallel axes {see at least par. 0070-0071}.
As for claim 20, REICHENBACH discloses the insertion point is a single point of intersection of the yaw axis, the pitch axis, and the plunge axis {see at least figure 8, pars. 0010, 0068 and claim 2}.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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.
Farritor et al (US 2020/0214775): Robotically assisted surgical system and related devices and methods.
Denlinger et al (US 2020/0289228): a robotic surgical tool, a tissue proximity detection system configured to intraoperatively detect a distance between the robotic surgical tool and an anatomical structure, and a user input device.
Jo et al (US 8,231,610): a robotic surgical system provided with a pivotal mechanism for adjusting a pivot point of a surgical instrument.
Abbott et al (US 2019/0223967): teleoperated manipulator system includes a manipulator assembly and a tool actuation assembly coupled to the manipulator assembly. The tool actuation assembly inserts a tool, such as a surgical instrument, along an insertion axis and also rotates the tool around the insertion axis.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kira Nguyen whose telephone number is (571)270-1614. The examiner can normally be reached on Monday to Friday 9:00-5:00 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoi Tran can be reached on 571-272-6919. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KIRA NGUYEN/Primary Examiner, Art Unit 3656