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 .
Claim Objections
Claim 15 is objected to because of the following informalities: Claim 15 recites “the first guide of the at least one third intermediate guide” in lines 2-3 which should read “the respective first guide of the at least one third intermediate guide” for consistency purposes. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: Claim 15 recites “the second guide of the at least one third intermediate guide” which should read “the respective second guide of the at least one third intermediate guide” for consistency purposes. Appropriate correction is required.
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 17-21 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.
Claim 17 recites “a third plurality of control links comprising a plurality of distal first ends including a plurality of respective guide connection features having a first protruding structure located distal of the second guide and a second protruding structure located proximal of the second guide, wherein the instrument interface is disposed immediately between the first and second protruding structures of the third plurality of control links to transmit at least one of the push force or pull force thereto” in lines 11-16. Claim 17 depends from claim 16 which recites “a first plurality of control links comprising a plurality of distal first ends including a plurality of respective guide connection features having a first protruding structure located distal of the instrument interface and a second protruding structure located proximal of the instrument interface, wherein the instrument interface is disposed immediately between the first and second protruding structures of the first plurality of control links to selectively transmit both a push force and a pull force thereto” in lines 4-9.
Applicant has support for a first plurality of control links (third plurality of control links 260; Fig. 9) having first and second protruding structures (262), wherein the instrument interface (270) is disposed immediately between the first and second protruding structures of the first plurality of control links (Fig. 9) and a third plurality of control links (first plurality of control links 220; Fig. 7) having first and second protruding structures (222), a first protruding structure located distal of the second guide (236) and a second protruding structure located proximal of the second guide (236; Fig. 7), wherein the second guide (236) is disposed immediately between the first and second protruding structures of the third plurality of control links (Fig. 7), not the instrument interface. In other words, the claimed third plurality of control links have protruding structures located both distally and proximally of both the second guide and the instrument interface, which applicant lacks support for. Instead, applicant has support for a first set of control links (third 260) having the instrument interface (270) between protruding structures thereof and a third set of control links (first 220) having the second guide (236) between protruding structures thereof (Figs. 7, 9). Accordingly, claim 17 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.
Claims 18-21 are rejected based on their dependency to rejected claim 17.
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 2-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,234,783 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 2, U.S. Patent No. 11,234,783 B2 claims an insertion device for a robotic surgery apparatus (claim 1, column 20, lines 2-3), the insertion device comprising: a tool interface configured to engage a surgical tool configured to perform robotic surgery (claim 1, column 20, lines 19-20); and a plurality of control links (third plurality of control links) each comprising a first distal end portion including a guide connection feature having: a protruding structure located distal of and in contact with the tool interface (claim 1, column 20, lines 39-43); and a second protruding structure located proximal of and in contact with the tool interface, wherein the first and second protruding structures directly engage the tool interface to selectively transmit both a push force and a pull force thereto (claim 1, column 20, lines 44-48).
Regarding claim 3, U.S. Patent No. 11,234,783 B2 claims further comprising: a first guide (third guide) comprising a first plurality of channels arranged in an annular array, wherein each channel of the first plurality of channels is open in a radially outward direction (claim 1, column 20, lines 12-15), wherein each of the plurality of control links extends through a respective channel of the first plurality of channels of the first guide (claim 1, column 20, lines 48-51).
Regarding claim 4, U.S. Patent No. 11,234,783 B2 claims further comprising: a second guide including a second plurality of channels arranged in an annular array, wherein each channel of the second plurality of channels is open in a radially outward direction (claim 1, column 20, lines 8-11); and a third guide (first guide) including a third plurality of channels arranged in an annular array, wherein each channel of the third plurality of channels is open in a radially outward direction (claim 1, column 20, lines 4-7), wherein the first plurality of guide channels, the second plurality of guide channels and the third plurality of guide channels are axially aligned with one another (claim 1, column 20, lines 15-18).
Regarding claim 5, U.S. Patent No. 11,234,783 B2 claims wherein the plurality of control links includes a first plurality of control links (third), and wherein the insertion device further comprises: a second plurality of control links each including: a first end portion that engages the first guide, and a second end portion that engages the third guide, wherein each control link of the second plurality of control links extends through a respective channel of the second plurality of channels of the second guide (claim 1, column 20, lines 33-38).
Regarding claim 6, U.S. Patent No. 11,234,783 B2 claims wherein the insertion device further comprises: a third plurality of control links (first plurality of control links) each comprising a first distal end portion including a guide connection feature having: a first protruding structure located distal of and in contact with the second guide (claim 1, column 20, lines 21-25); and a second protruding structure located proximal of and in contact with the second guide, wherein the first and second protruding structures directly engage the second guide to transmit at least one of the push force or the pull force thereto (claim 1, column 20, lines 26-30).
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,234,783 B2. Although the claims at issue are not identical, they are not patentably distinct from each.
Regarding claim 7, U.S. Patent No. 11,234,783 B2 claims wherein each channel of the first plurality of channels (third plurality of channels) of the first guide (third guide) is sized to receive a respective control link of any one of the first (third) plurality of control links, the second plurality of control links, or the third plurality of control links (claim 8, column 21, lines 31-35).
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11,234,783 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 16, U.S. Patent No. 11,234,783 B2 claims an insertion device for a robotic surgery apparatus (claim 19, column 22, lines 25-26), the insertion device comprising: an instrument interface configured to engage a surgical instrument (claim 19, column 22, lines 30-31); and a first plurality of control links (third plurality of control links) comprising a plurality of distal first ends including a plurality of respective guide connection features having a first protruding structure located distal of the instrument interface and a second protruding structure located proximal of the instrument interface, wherein the instrument interface is disposed immediately between the first and second protruding structures of the first plurality of control links to selectively transmit both a push force and a pull force thereto (claim 19, column 22, lines 49-57).
Claims 2-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,121,316 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 2, U.S. Patent No. 12,121,316 B2 claims an insertion device for a robotic surgery apparatus (claim 1, column 20, lines 5-6), the insertion device comprising: a tool interface configured to engage a surgical tool configured to perform robotic surgery (claim 1 column 20, lines 15-16); and a plurality of control links (third plurality of control links) each comprising a first distal end portion including a guide connection feature having: a protruding structure located distal of and in contact with the tool interface (claim 2, column 20, lines 43-47); and a second protruding structure located proximal of and in contact with the tool interface, wherein the first and second protruding structures directly engage the tool interface to selectively transmit both a push force and a pull force thereto (claim 2, column 20, lines 48-52).
Regarding claim 3, U.S. Patent No. 12,121,316 B2 claims further comprising: a first guide (third guide) comprising a first plurality of channels arranged in an annular array, wherein each channel of the first plurality of channels is open in a radially outward direction (claim 2, column 20, lines 30-33), wherein each of the plurality of control links (third control links) extends through a respective channel of the first plurality of channels of the first guide (claim 2, column 20, lines 53-55).
Regarding claim 4, U.S. Patent No. 12,121,316 B2 claims a second guide including a second plurality of channels arranged in an annular array, wherein each channel of the second plurality of channels is open in a radially outward direction (claim 1, column 20, lines 11-14); and a third guide (first guide) including a third (first) plurality of channels arranged in an annular array, wherein each channel of the third plurality of channels is open in a radially outward direction, wherein the first plurality of guide channels (claim 1, column 20, lines 7-10), the second plurality of guide channels and the third plurality of guide channels are axially aligned with one another (claim 1, column 20, lines 33-36).
Regarding claim 5, U.S. Patent No. 12,121,316 B2 claims wherein the plurality of control links includes a first plurality of control links (third), and wherein the insertion device further comprises: a second plurality of control links each including: a first end portion that engages the first guide, and a second end portion that engages the third guide, wherein each control link of the second plurality of control links extends through a respective channel of the second plurality of channels of the second guide (claim 2, column 20, lines 37-42).
Regarding claim 6, U.S. Patent No. 12,121,316 B2 claims wherein the insertion device further comprises: a third plurality of control links (first plurality of control links) each comprising a first distal end portion including a guide connection feature having: a first protruding structure located distal of and in contact with the second guide; and a second protruding structure located proximal of and in contact with the second guide, wherein the first and second protruding structures directly engage the second guide to transmit at least one of the push force or the pull force thereto (claim 1, column 20, lines 17-26).
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,121,316 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 7, U.S. Patent No. 12,121,316 B2 claims wherein each channel of the first (third) plurality of channels of the first guide (third guide) is sized to receive a respective control link of any one of the first (third) plurality of control links, the second plurality of control links, or the third (first) plurality of control links (claim 5, column 21, lines 4-8).
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,121,316 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 16, U.S. Patent No. 12,121,316 B2 claims an insertion device for a robotic surgery apparatus (claim 13, column 21, lines 43-44), the insertion device comprising: an instrument interface configured to engage a surgical instrument (claim 13, column 21, lines 47-48); and a first plurality of control links (third plurality of control links) comprising a plurality of distal first ends including a plurality of respective guide connection features having a first protruding structure located distal of the instrument interface and a second protruding structure located proximal of the instrument interface, wherein the instrument interface is disposed immediately between the first and second protruding structures of the first plurality of control links to selectively transmit both a push force and a pull force thereto (claim 14, column 22, lines 8-17).
Allowable Subject Matter
Claims 8-15 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record, Malkowski et al. (US 2012/0253131 A1) or Danitz (US 8,182,417 B2) does not disclose or fairly suggest, either singly or in combination of any of the prior art of record, the claimed invention of independent claim 2, which recites, inter alia “a plurality of control links each comprising a first distal end portion including a guide connection feature having: a protruding structure located distal of and in contact with the tool interface; and a second protruding structure located proximal of and in contact with the tool interface, wherein the first and second protruding structures directly engage the tool interface to selectively transmit both a push force and a pull force thereto”.
Malkowski discloses an insertion device (100) comprising a tool interface (110) and a plurality of control links (cable set C32, C42; Fig. 2E) but fails to disclose the protruding structures as claimed.
Danitz ‘417 teaches control links (cables 202, 204, 206; Figs. 1A, 7A) each comprising a first distal protruding structure (cap 205) and a second proximal protruding structure (cap 207) but they do not both directly engage the tool interface to selectively transmit both a push force and a pull force as claimed (Fig. 1A).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Boulais et al. (US 7,591,783 B2) is noted for teaching guides with radially outward open channels. Cooper et al. (US 7,320,700 B2) is noted for teachings a guide with channels open in a radially outward direction. Simaan et al. (US 2013/0090763 A1) is noted for teaching links passing through channels. Danitz et al. (US 2005/0107667 A1) is noted for various protruding structures (Figs. 4A-4C).
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/SARAH A LONG/Primary Examiner, Art Unit 3771