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 Status
This action is in response to applicant’s filing on 11/4/2024. Claims 1-20 are pending and considered below.
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 1-30 of U.S. Patent Number 11,564,761. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Comparing claims 1-15 of U.S. Patent Number 11,564,761 to claims 1-13 of the instant application:
“A robotic surgical system comprising: a surgical tool; a manipulator configured to support the surgical tool, the manipulator comprising a plurality of links; a force/torque sensor to measure forces and torques applied to the surgical tool; and a control system configured to:” of U.S. Patent Number 11,564,761 is the same as “A robotic surgical system comprising: a surgical tool; a manipulator configured to support the surgical tool, the manipulator comprising a plurality of links; a force/torque sensor to measure forces and torques applied to the surgical tool; and a control system configured to:” of the instant application;
“obtain a milling path for the surgical tool wherein the milling path is three-dimensional and predetermined” of U.S. Patent Number 11,564,761 is equivalent to “obtain a virtual boundary for the surgical tool, the virtual boundary being a virtual tube that is three-dimensional and elongated to predefine a tool path for the surgical tool” of the instant application;
“define virtual constraints to constrain movement of the surgical tool to be along the milling path, wherein the virtual constraints are defined with respect to two degrees of freedom each being normal to the milling path, and wherein movement of the surgical tool with respect to one degree of freedom tangential to the milling path is unconstrained by the virtual constraints” of U.S. Patent Number 11,564,761 is equivalent to “define virtual constraints on movement of the surgical tool inside the virtual tube, the virtual constraints being defined to constrain movement of the surgical tool to be along the tool path defined by the virtual tube” of the instant application;
“receive an input from the force/torque sensor in response to user forces and torques manually applied to the surgical tool by a user” of U.S. Patent Number 11,564,761 is the same as “receive an input from the force/torque sensor in response to user forces and torques manually applied to the surgical tool by a user” of the instant application;
“simulate dynamics of the surgical tool in a virtual simulation based on the virtual constraints and the input from the force/torque sensor” of U.S. Patent Number 11,564,761 is the same as “simulate dynamics of the surgical tool in a virtual simulation based on the virtual constraints and the input from the force/torque sensor” of the instant application; and
“command the manipulator to advance the surgical tool along the milling path based on the virtual simulation” of U.S. Patent Number 11,564,761 is equivalent to “command the manipulator to advance the surgical tool along the tool path based on the virtual simulation” of the instant application.
Comparing claims 16-30 of U.S. Patent Number 11,564,761 to claims 14-18 of the instant application:
“A method for operating a robotic surgical system, the robotic surgical system comprising a surgical tool, a manipulator configured to support the surgical tool, and a force/torque sensor to measure forces and torques applied to the surgical tool, the method comprising the steps of:” of U.S. Patent Number 11,564,761 is equivalent to “A method for operating a robotic surgical system, the robotic surgical system comprising a surgical tool, a manipulator configured to support the surgical tool, a force/torque sensor to measure forces and torques applied to the surgical tool, and a control system, the method comprising the control system performing the steps of:” of the instant application;
“obtaining a milling path for the surgical tool wherein the milling path is three-dimensional and predetermined” of U.S. Patent Number 11,564,761 is equivalent to “obtaining a virtual boundary for the surgical tool, the virtual boundary being a virtual tube that is three-dimensional and elongated to predefine a tool path for the surgical tool” of the instant application;
“defining virtual constraints to constrain movement of the surgical tool to be along the milling path, wherein the virtual constraints are defined with respect to two degrees of freedom each being normal to the milling path, and wherein movement of the surgical tool with respect to one degree of freedom tangential to the milling path is unconstrained by the virtual constraints” of U.S. Patent Number 11,564,761 is equivalent to “defining virtual constraints on movement of the surgical tool inside the virtual tube, the virtual constraints being defined to constrain movement of the surgical tool to be along the tool path defined by the virtual tube” of the instant application;
“receiving input from the force/torque sensor in response to user forces and torques manually applied to the surgical tool by a user” of U.S. Patent Number 11,564,761 is equivalent to “receiving an input from the force/torque sensor in response to user forces and torques manually applied to the surgical tool by a user” of the instant application;
“simulating dynamics of the surgical tool in a virtual simulation based on the virtual constraints and the input from the force/torque sensor” of U.S. Patent Number 11,564,761 is the same as “simulating dynamics of the surgical tool in a virtual simulation based on the virtual constraints and the input from the force/torque sensor” of the instant application; and
“commanding the manipulator to advance the surgical tool along the milling path based on the virtual simulation” of U.S. Patent Number 11,564,761 is equivalent to “commanding the manipulator for advancing the surgical tool along the tool path based on the virtual simulation” of the instant application.
Comparing claims 1-15 of U.S. Patent Number 11,564,761 to claims 19-20 of the instant application:
“A robotic surgical system comprising: a surgical tool; a manipulator configured to support the surgical tool, the manipulator comprising a plurality of links; a force/torque sensor to measure forces and torques applied to the surgical tool; and a control system configured to:” of U.S. Patent Number 11,564,761 is the same as “A robotic surgical system comprising: a surgical tool; a manipulator configured to support the surgical tool, the manipulator comprising a plurality of links; a force/torque sensor to measure forces and torques applied to the surgical tool; and a control system configured to:” of the instant application;
“obtain a milling path for the surgical tool wherein the milling path is three-dimensional and predetermined” of U.S. Patent Number 11,564,761 is equivalent to “obtain a virtual boundary for the surgical tool, the virtual boundary being a virtual tube path that is predefined, three-dimensional and elongated” of the instant application;
“define virtual constraints to constrain movement of the surgical tool to be along the milling path, wherein the virtual constraints are defined with respect to two degrees of freedom each being normal to the milling path, and wherein movement of the surgical tool with respect to one degree of freedom tangential to the milling path is unconstrained by the virtual constraints” of U.S. Patent Number 11,564,761 is equivalent to “define virtual constraints on movement of the surgical tool inside the virtual tube path, the virtual constraints being defined to constrain the surgical tool to within the virtual tube path” of the instant application;
“receive an input from the force/torque sensor in response to user forces and torques manually applied to the surgical tool by a user” of U.S. Patent Number 11,564,761 is the same as “receive an input from the force/torque sensor in response to user forces and torques manually applied to the surgical tool by a user” of the instant application;
“simulate dynamics of the surgical tool in a virtual simulation based on the virtual constraints and the input from the force/torque sensor” of U.S. Patent Number 11,564,761 is the same as “simulate dynamics of the surgical tool in a virtual simulation based on the virtual constraints and the input from the force/torque sensor” of the instant application; and
“command the manipulator to advance the surgical tool along the milling path based on the virtual simulation” of U.S. Patent Number 11,564,761 is equivalent to “command the manipulator to advance the surgical tool along the virtual tube path based on the virtual simulation” of the instant application.
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.
Claims 1-3, 5, 7, 9-12, 14, 16-17 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bowling et al. (US-2015/0289941-A1, hereinafter Bowling).
Regarding claim 1, Bowling discloses:
a surgical tool (paragraph [0062] and FIG. 1, manipulator-50, end effector-110, and surgical instrument-160);
a manipulator configured to support the surgical tool, the manipulator comprising a plurality of links (paragraphs [0067-0071] and FIG. 4, shoulders-67,69, arms-68,70, links-74,76,78,80, and coupler-88);
a force/torque sensor to measure forces and torques applied to the surgical tool (paragraph [0086] and FIG. 13D, force torque sensor-108);
a control system configured to: (paragraphs [0087], [0093] and [0109]; and FIG. 11, manipulator controller-124, joint motor controllers-126, tool controller-132, and navigation processor-218);
obtain a virtual boundary for the surgical tool (paragraphs [0175-0190] and FIG. 17, path segments-297,310, and target position-302);
the virtual boundary being a virtual tube that is three-dimensional and elongated to predefine a tool path for the surgical tool (paragraphs [0132] and [0262-0269]; and FIG. 21A, TRANSFORM EAPP POSE AND VELOCITY FROM INTGTR TO CRD.SYS.BONE-482, ALL BOUNDARY TILES OUTSIDE OF DEFINED DISTANCE? - 486, OUTPUT COMMANDED POSE AND COMMANDED VELOCITY-488, and BOUNDING VOLUME INTERSECTS BOUNDARY TILE? - 492);
define virtual constraints on movement of the surgical tool inside the virtual tube, the virtual constraints being defined to constrain movement of the surgical tool to be along the tool path defined by the virtual tube (paragraphs [0212-0217] and FIG. 16D, force torque sensor-108, energy applicator force calculator-358, force transformer-362, tool orientation force regulator-368, and force overrider-375);
receive an input from the force/torque sensor in response to user forces and torques manually applied to the surgical tool by a user (paragraphs [0212-0217]);
simulate dynamics of the surgical tool in a virtual simulation based on the virtual constraints and the input from the force/torque sensor (paragraphs [0216-0217]); and
command the manipulator to advance the surgical tool along the tool path based on the virtual simulation (paragraphs [0216-0217]).
Regarding claim 2, Bowling further discloses:
wherein the virtual tube is defined by a triangle mesh surface having a plurality of mesh triangles (paragraph [0127] and FIG. 15A, bone-202, and surface-242).
Regarding claim 3, Bowling further discloses:
wherein the control system is configured to intraoperatively generate the triangle mesh surface for the virtual tube (paragraphs [0121-0128] and FIG. 13A, boundary generator-232, and tool path generator-234).
Regarding claim 5, Bowling further discloses:
wherein: the control system is configured to define the virtual constraints with respect to a surface of the virtual tube to maintain the surgical tool within the virtual tube and on the tool path (paragraphs [0227] and [0384-0385]; and FIG. 13B, cut guide-390); and
movement of the surgical tool with respect to one degree of freedom defined along a length of the virtual tube is unconstrained by the virtual constraints to enable the surgical tool to freely move along the length of the virtual tube based on input from the force/torque sensor (paragraphs [0227] and [0384-0385]).
Regarding claim 7, Bowling further discloses:
wherein the virtual tube comprises: an entrance at a first end of the virtual tube to enable the surgical tool to enter the virtual tube, and an exit at an opposing second end of the virtual tube to enable the surgical tool to escape the virtual tube (paragraphs [0132] and [0170-0171]; and FIG. 15C, tool path-248, segments-256,262,266, and points-258,260,264,268).
Regarding claim 9, Bowling further discloses:
wherein the virtual tube is three-dimensionally curved and the tool path is three-dimensionally curved (paragraphs [0132-0133], [0156-0157], [0170-0171] and [0177-0180]; FIG. 15C, tool path-248, segments-256,262,266, and points-258,260,264,268; and FIG. 16B, curvature calculator-291).
Regarding claim 10, Bowling further discloses:
wherein the virtual tube is helically shaped (paragraph [0497]).
Regarding claim 11, Bowling further discloses:
wherein the virtual tube predefines the tool path relative to a tissue to guide movement of the surgical tool to remove material from the tissue (paragraphs [0127-0128] and FIG. 15A, bone-202, and surface-242).
Regarding claim 12, Bowling further discloses:
wherein the virtual tube predefines the tool path to guide movement of the surgical tool from a first location to a second location (paragraphs [0132] and [0170-0171]; and FIG. 15C, tool path-248, segments-256,262,266, and points-258,260,264,268).
Regarding claim 14, Bowling further discloses:
A method for operating a robotic surgical system, the robotic surgical system comprising a surgical tool (paragraph [0062] and FIG. 1, manipulator-50, end effector-110, and surgical instrument-160);
a manipulator configured to support the surgical tool (paragraphs [0067-0071] and FIG. 4, shoulders-67,69, arms-68,70, links-74,76,78,80, and coupler-88);
a force/torque sensor to measure forces and torques applied to the surgical tool (paragraph [0086] and FIG. 13D, force torque sensor-108);
a control system, the method comprising the control system performing the steps of: (paragraphs [0087], [0093] and [0109]; and FIG. 11, manipulator controller-124, joint motor controllers-126, tool controller-132, and navigation processor-218);
obtaining a virtual boundary for the surgical tool (paragraphs [0175-0190] and FIG. 17, path segments-297,310, and target position-302);
the virtual boundary being a virtual tube that is three-dimensional and elongated to predefine a tool path for the surgical tool (paragraphs [0132] and [0262-0269]; and FIG. 21A, TRANSFORM EAPP POSE AND VELOCITY FROM INTGTR TO CRD.SYS.BONE-482, ALL BOUNDARY TILES OUTSIDE OF DEFINED DISTANCE? - 486, OUTPUT COMMANDED POSE AND COMMANDED VELOCITY-488, and BOUNDING VOLUME INTERSECTS BOUNDARY TILE? - 492);
defining virtual constraints on movement of the surgical tool inside the virtual tube, the virtual constraints being defined to constrain movement of the surgical tool to be along the tool path defined by the virtual tube (paragraphs [0212-0217] and FIG. 16D, force torque sensor-108, energy applicator force calculator-358, force transformer-362, tool orientation force regulator-368, and force overrider-375);
receiving an input from the force/torque sensor in response to user forces and torques manually applied to the surgical tool by a user (paragraphs [0212-0217]);
simulating dynamics of the surgical tool in a virtual simulation based on the virtual constraints and the input from the force/torque sensor (paragraphs [0216-0217]); and
commanding the manipulator for advancing the surgical tool along the tool path based on the virtual simulation (paragraphs [0216-0217]).
Regarding claim 16, Bowling further discloses:
comprising the control system: defining the virtual constraints with respect to a surface of the virtual tube for maintaining the surgical tool within the virtual tube and on the tool path (paragraphs [0227] and [0384-0385]; and FIG. 13B, cut guide-390).
Regarding claim 17, Bowling further discloses:
comprising the control system: unconstraining movement of the surgical tool with respect to one degree of freedom defined along a length of the virtual tube for enabling the surgical tool to freely move along the length of the virtual tube based on input from the force/torque sensor (paragraphs [0227] and [0384-0385]).
Regarding claim 19, Bowling further discloses:
a surgical tool (paragraph [0062] and FIG. 1, manipulator-50, end effector-110, and surgical instrument-160);
a manipulator configured to support the surgical tool, the manipulator comprising a plurality of links (paragraphs [0067-0071] and FIG. 4, shoulders-67,69, arms-68,70, links-74,76,78,80, and coupler-88);
a force/torque sensor to measure forces and torques applied to the surgical tool (paragraph [0086] and FIG. 13D, force torque sensor-108);
a control system configured to: (paragraphs [0087], [0093] and [0109]; and FIG. 11, manipulator controller-124, joint motor controllers-126, tool controller-132, and navigation processor-218);
obtain a virtual boundary for the surgical tool (paragraphs [0175-0190] and FIG. 17, path segments-297,310, and target position-302);
the virtual boundary being a virtual tube path that is predefined, three-dimensional and elongated (paragraphs [0132] and [0262-0269]; and FIG. 21A, TRANSFORM EAPP POSE AND VELOCITY FROM INTGTR TO CRD.SYS.BONE-482, ALL BOUNDARY TILES OUTSIDE OF DEFINED DISTANCE? - 486, OUTPUT COMMANDED POSE AND COMMANDED VELOCITY-488, and BOUNDING VOLUME INTERSECTS BOUNDARY TILE? - 492);
define virtual constraints on movement of the surgical tool inside the virtual tube path, the virtual constraints being defined to constrain the surgical tool to within the virtual tube path (paragraphs [0212-0217] and FIG. 16D, force torque sensor-108, energy applicator force calculator-358, force transformer-362, tool orientation force regulator-368, and force overrider-375);
receive an input from the force/torque sensor in response to user forces and torques manually applied to the surgical tool by a user (paragraphs [0212-0217]);
simulate dynamics of the surgical tool in a virtual simulation based on the virtual constraints and the input from the force/torque sensor (paragraphs [0216-0217]); and
command the manipulator to advance the surgical tool along the virtual tube path based on the virtual simulation (paragraphs [0216-0217]).
Regarding claim 20, Bowling further discloses:
wherein: the control system is configured to define the virtual constraints with respect to a surface of the virtual tube path to maintain the surgical tool within the virtual tube path (paragraphs [0227] and [0384-0385]; and FIG. 13B, cut guide-390); and
movement of the surgical tool with respect to one degree of freedom defined along a length of the virtual tube path is unconstrained by the virtual constraints to enable the surgical tool to freely move along the length of the virtual tube path based on input from the force/torque sensor (paragraphs [0227] and [0384-0385]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMARA L WEBER whose telephone number is (303)297-4249. The examiner can normally be reached 8:30-5:00 MTN.
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, Faris Almatrahi can be reached at 3134464821. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
TAMARA L. WEBER
Examiner
Art Unit 3667
/TAMARA L WEBER/ Examiner, Art Unit 3667
Prosecution Insights