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 without traverse of Group I in the reply filed on 04/29/2026 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/29/2026.
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 damping element in claim 1 which is disclosed as:
The embodiment of Figures 2A-3C, comprising a skirt
The embodiment of Figures 6A-6D, comprising biasing elements
The embodiment of Figures 7A-7B, comprising a deformable juncture
The embodiment of Figures 8A-8C, comprising an expandable element positioned within the patient
The embodiment of Figure 10A, comprising an inertial mass resisted by a viscous fluid
The embodiment of Figure 11A, comprising an inertial mass resisted by springs
The embodiment of Figure 11B, comprising an inertial mass resisted by magnetic material
The embodiment of Figure 12A-13C, comprising damping sleeves
The embodiment of Figure 14, comprising damping materials in the joints
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.
Claim Rejections - 35 USC § 102
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.
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) 1-5 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0172858 (Doyle).
1. An apparatus (FIG. 5) for use during surgery (FIG. 5; P0003-P0005), the apparatus comprising:
a robotic arm (slave 700 having multiple systems 300 at FIG. 5 and P0070-P0074) having a first segment coupled to a second segment by a first joint (e.g., see system 300 for forward/reverse pivoting at FIG. 5 and P0070-P0073 having a chain 100 and a track 110 where the claimed “first joint” is a proximal joint of this system 300)(FIG. 1B; P0052 and P0074);
a tool driver (e.g., see system 300 for forward/reverse pivoting lateral swivel and/or extension/retraction having a system 300 at FIG. 5 and P0074) having a second joint (e.g., see this system having a chain 100 and a track 110 where the claimed “second joint” is a distal joint of this system 300) coupling the tool driver to the second segment of the robotic arm (FIG. 5; P0074);
a cannula (tool 704) comprising a proximal portion and a distal portion wherein the proximal portion is coupled to the tool driver (FIG. 5; P0070); and
a damping element (stabilizing mechanism 181 which is at least equivalent to those damping elements disclosed in this application) coupled to one of the robotic arm or the tool driver (FIG. 3B; P0064-P0065).
2. The damping element comprises a flexible covering disposed on a portion of the robotic arm (FIG. 3B; P0064-P0065).
3. The first segment and the second segment comprise a number of robotic arm links and the damping element is coupled to at least one robotic arm link of the number of robotic arm links (FIG. 3B; P0064-P0065).
4. The damping element comprises a damping foam material injected into a cavity of the at least one robotic arm link (FIG. 3B; P0065).
5. The damping element comprises a honeycomb structure (e.g., see honeycomb structure as shown in FIG. 3B) including an elastomeric material embedded within the at least one robotic arm link (FIG. 3B; P0064-P0065).
7. The damping element comprises an elastomeric material coupled to the first joint (FIG. 3B and 5; P0064-P0065 and P0070-P0073).
8. The damping element comprises an elastomeric material coupled to the second joint (FIG. 3B and 5; P0064-P0065 and P0074).
9. The damping element is disposed between the tool driver and the cannula (FIG. 5; P0074).
Claim Rejections - 35 USC § 103
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.
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(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0172858 (Doyle), as applied above, and further in view of US 2016/0030118 (Devengenzo).
Doyle discloses the invention substantially as claimed as discussed above and further discloses the second segment being a linkage and the damping element comprises a layer of damping material disposed in the linkage (FIG. 3B; P0064-P0065). However, Doyle does not disclose the linkage being a parallelogram. Devengenzo teaches a linkage in the same field of endeavor being a parallelogram (FIG. 9; P0056) for the purpose of rotating the linkage about various axes (FIG. 9; P0056). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the linkage of Doyle to be a parallelogram as taught by Devengenzo in order to rotate the linkage about various axes.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0172858 (Doyle), as applied above, and further in view of US 6,132,368 (Cooper).
Doyle discloses the invention substantially as claimed as discussed above but does not disclose the apparatus has a sterile adapter. Cooper teaches an apparatus in the same field of endeavor having a sterile adapter (drape 70) coupled to the tool driver and a second damping element (e.g., the drape 70 would absorb and dissipate (at least to some extent) energy from vibrations such that it can reasonably be considered “a second damping element”) coupled to the sterile adapter (FIG. 3A; col. 7, lns. 13-23) for the purpose of shielding the apparatus from the surgical site so that most of its component do not have to be sterilized (FIG. 3A; col. 7, lns. 13-23). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Doyle to include a sterile adapter as taught by Cooper in order to shield the apparatus from the surgical site so that most of its component do not have to be sterilized.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TODD J SCHERBEL whose telephone number is (571)270-7085. The examiner can normally be reached Mon - Fri 9:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at 571-272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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TJ SCHERBEL
Primary Examiner
Art Unit 3771
/TODD J SCHERBEL/Primary Examiner, Art Unit 3771
Prosecution Insights