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 .
Election/Restrictions
Applicant's election with traverse of Group I (system claims 1-12 and 20) and Species A (system shown I Figs. 1-5C) in the reply filed on April 6, 2026 is acknowledged. The traversal is on the ground(s) that it would not be a burden to search the system and the method. This is not found persuasive because as noted in the restriction requirement, a non-overlapping area of search would be required between the groups. For methods, it is required to search NPL more heavily. While systems/device claims the structure is searched using text searches that may bring results outside of the typical classifications the current invention is classified in. As for the claims having generic claims, if this is true, it still does not mean a species restriction was not correct.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim(s) 1-4 and 10-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sarin (US 2005/0245820).
Claim 1, Sarin discloses a surgical system comprising: a first tracker (Fig. 2; paragraphs [0022]-[0029]) comprising a first plurality of trackable elements (Fig. 2; paragraphs [0022]-[0029]); a second tracker (Fig. 2; paragraphs [0022]-[0029]) comprising a second plurality of trackable elements (Fig. 2; paragraphs [0022]-[0029] while Fig. 2 only shows one of the trackers having multiple tracking elements, the written specification mentions that multiple spheres can be used on the trackers); the first tracker and the second tracker adapted to be independently secured to a bone and separated by a distance (Fig. 2); a localizer (Fig. 1; 26) configured to track the first and second plurality of trackable elements (Fig. 1; paragraphs [0017]-[0019]); and at least one controller (paragraphs [0042]-[0044]) coupled to the localizer (paragraphs [0042]-[0044]) and being configured to: define a tracking arrangement to be tracked based on a combination of the first and second plurality of trackable elements (Figs. 1-4; paragraphs [0022]-[0029]); register a geometry of the tracking arrangement relative to the bone (paragraphs [0031]-[0035]); track the bone by detection of the registered geometry of the tracking arrangement (paragraph [0038]); detect a condition wherein at least one trackable element has been displaced relative to the registered geometry (paragraphs [0042]-[0045]); register a position of an anatomical landmark of the bone (paragraph [0038]); and identify, based on the registered position of the anatomical landmark, the at least one trackable element that has been displaced relative to the registered geometry (paragraphs [0042]-[0045]).
Claim 2, Sarin discloses the surgical system of claim 1, wherein the at least one controller identifies the at least one trackable element that has been displaced relative to the registered geometry by being configured to: compute a distance between the anatomical landmark and each of the trackable elements of the first and second plurality (paragraphs [0066]-[0068]).
Claim 3, Sarin discloses the surgical system of claim 2, wherein the at least one controller identifies the at least one trackable element that has been displaced relative to the registered geometry by being configured to: compare the distance between the anatomical landmark and each of the trackable elements of the first and second plurality to the registered geometry of the tracking arrangement (paragraphs [0042]-[0045] and [0066]-[0068]).
Claim 4, Sarin discloses the surgical system of claim 1, further comprising a navigation pointer comprising a pointer tip and a pointer tracker (paragraphs [0031]-[0035]), wherein the pointer tip is located at a fixed distance relative to the pointer tracker (paragraphs [0031]-[0035]), wherein the localizer is configured to track the pointer tip by detection of the pointer tracker (paragraphs [0031]-[0035]), and wherein the at least one controller registers the position of the anatomical landmark of the bone by being configured to: detect a position of the pointer tip as the pointer tip touches the anatomical landmark (paragraphs [0031]-[0035]).
Claim 10, Sarin discloses the surgical system of claim 1, wherein the anatomical landmark is predefined (paragraphs [0038] and [0066]-[0068]), and further comprising a display (paragraphs [0020] and [0044]), and wherein the at least one controller is configured to generate an instruction on the display to acquire predefined anatomical landmark (paragraphs [0020[ and [0044]).
Claim 11, Sarin discloses the surgical system of claim 1, wherein: the first tracker comprises a first tracker support (Fig. 2; 118) that is affixed to the bone at a first contact point (Fig. 2); and the second tracker comprises a second tracker support (108) that is affixed to the bone at a second contact point (Fig. 2); wherein the anatomical landmark is further defined as the first contact point or the second contact point (paragraph s[0031]-[0035] and [0038]).
Claim 12, Sarin discloses the surgical system of claim 1, wherein the at least one controller is configured to: further identify whether the at least one trackable element that has been displaced belongs to the first tracker or the second tracker (Fig. 1; paragraphs [0031]-[0035]).
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.
Claim(s) 5 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sarin (US 2005/0245820), in view of Quaid et al. (US 2006/0142657; “Quaid”).
Claim 5, Sarin discloses the surgical system of claim 1.
However, Sarin does not disclose using a video camera.
Quaid teaches a surgical system (Fig. 1; abstract) further comprising a machine vision system including a video camera (paragraphs [0093]-[0095]), wherein the at least one controller registers the position of the anatomical landmark of the bone by being configured to: utilize the video camera of the machine vision system to detect a position of the anatomical landmark (paragraphs [0093]-[0095] and [0130]-[0132]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to utilize the video camera, as taught by Quaid, in the system of Sarin, in order to detect objects (paragraphs [0093]-[0095] and [0130]-[0132]).
Claim 20, Sarin discloses a surgical system comprising: a first tracker (Fig. 2; paragraphs [0022]-[0029]) and a second tracker (Fig. 2; paragraphs [0022]-[0029]) wherein the first and second trackers are adapted to be independently secured to a bone and separated by a distance (Fig. 2); a navigation pointer comprising a pointer tip and a pointer tracker (paragraphs [0031]-[0035]); at least one controller (paragraphs [0042]-[0044]) being configured to: define a tracking arrangement to be tracked based on a combination of the first and second trackers (Figs. 1-4; paragraphs [0022]-[0029]); register a geometry of the tracking arrangement relative to the bone (paragraphs [0031]-[0035]); track the bone by detection of the registered geometry of the tracking arrangement (paragraph [0038]); detect a condition wherein at least one of the first and second trackers has been displaced relative to the registered geometry (paragraphs [0042]-[0045]); utilize the navigation pointer or a camera to register a position of an anatomical landmark of the bone (paragraph [0038]); and identify, based on the registered position of the anatomical landmark, the at least one of the first and second trackers that has been displaced relative to the registered geometry (paragraphs [0042]-[0045]).
However, Sarin does not disclose using a video camera.
Quaid teaches a surgical system (Fig. 1; abstract) further comprising a camera unit (paragraphs [0093]-[0095]) comprising optical sensors and a video camera (paragraphs [0093]-[0095]), wherein the optical sensors are configured to track a first tracker, a second tracker, and a pointer tracker (paragraphs [0093]-[0095] and [0130]-[0132]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to utilize the camera unit, as taught by Quaid, in the system of Sarin, in order to detect objects (paragraphs [0093]-[0095] and [0130]-[0132]).
Claim(s) 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sarin (US 2005/0245820), in view of Kang et al. (US 2007/0270685; “Kang”).
Claim 6, Sarin discloses the surgical system of claim 1.
However, Sarin does not disclose the system comprising a robotic manipulator.
Kang teaches a robotic manipulator (Fig. 1; paragraphs [0034]-[0041]) configured to support and move a surgical instrument that includes an instrument tip, wherein the robotic manipulator is coupled to the at least one controller, and wherein the at least one controller registers the position of the anatomical landmark of the bone by being configured to: detect a position of the instrument tip as the instrument tip contacts the anatomical landmark (paragraphs [0063] and [0075]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the robot of Kang to the system of Sarin, since a robot is known to make very precise movements that eliminate human error, which can facilitate and improve the performance during the procedure (paragraph [0007]).
Claim 7, Sarin in view of Kang discloses the surgical system of claim 6, Sarin discloses wherein an instrument tracker is attached the surgical instrument and the localizer is configured to track the instrument tracker (paragraphs [0033] and [0049]), and wherein the at least one controller detects the position of the instrument tip as the instrument tip contacts the anatomical landmark by being configured to: obtain a known relationship between the instrument tip and the instrument tracker paragraphs [0042]-[0045] and [0066]-[0068]); obtain a tracked relationship between the instrument tracker and the localizer; and combine the known relationship and the tracked relationship to determine a third relationship between the instrument tip and the localizer (paragraphs [0033, [0042]-[0045], [0049], and [0066]-[0068].
Claim 8, Sarin in view of Kang discloses the surgical system of claim 6, Kang teaches wherein the robotic manipulator comprises a base (Fig. 2A; 34), a base tracker (45) is attached the base (Fig. 2A), and the localizer is configured to track the base tracker, and wherein the at least one controller detects the position of the instrument tip as the instrument tip contacts the anatomical landmark by being configured to: obtain a known relationship between the instrument tip and the base; obtain a tracked relationship between the base tracker and the localizer; and combine the known relationship and the tracked relationship to determine a third relationship between the instrument tip and the localizer (paragraphs [0050]-[0075]).
Claim 9, Sarin in view of Kang discloses the surgical system of claim 6, Kang teaches wherein the at least one controller is configured to: operate the robotic manipulator to manipulate the bone with the surgical instrument (paragraph [0075]); and generate an instruction to interrupt operation of the robotic manipulator in response to detection of the condition (paragraph [0075]).
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 1-12 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12178522.
Although the claims at issue are not identical, they are not patentably distinct from each other because the method claim of the patent require all the devices presented in the current system claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zade Coley whose telephone number is (571)270-1931. The examiner can normally be reached M-F (9-5) PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached at (571)272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zade Coley/Primary Examiner, Art Unit 3775
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