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 .
Interview Summary
The reply filed 23 December 2025 includes a complete and accurate record of the substance of the 04 December 2025 interview.
Response to Amendment
Receipt is acknowledged of an amendment, filed 23 December 2025, which has been placed of record and entered in the file.
Status of the claims:
Claims 1-20 are pending.
Claims 1, 5, 14, 16, , and 18 are amended.
Specification and Drawings:
Amendments to the specification have been submitted in the amendment filed 23 December 2025.
Amendments to the drawings have not been submitted in the amendment filed 23 December 2025.
Response to Arguments
With respect to the objection to the specification, the amendment and applicant’s arguments have been fully considered and are persuasive. The objection is hereby withdrawn.
With respect to the rejection of claims 1-20 under 35 U.S.C. 112(b), the claim amendments and applicant’s arguments have been fully considered and are persuasive. The rejection is hereby withdrawn.
With respect to the rejection of claims 1-20 under 35 USC 102(a)(2) over Shelton et al. (US Patent Publ. No. 2023/0171304), the claim amendments and applicant’s arguments have been fully considered and are persuasive. The rejection is hereby withdrawn.
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. 12,185,947. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the patent “anticipate” application claims 1-20. It is apparent that the application claims differ from the patent claims in that the patent claims are more specific. Any remaining differences are only differences in verbiage without any difference in meaning. Application claims 1-20 are not patentably distinct from patent claims 1-20 because the more specific patent claims anticipate the broader application claims.
Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
The application claims and patent claims match up as follows:
Application Claims
Patent Claims (US Patent No. 12,185,947)
1. A computer-assisted device
1. A computer-assisted device
A drive system configured to actuate a moveable element of an end effector
A drive system configured to actuate a moveable element toward a first commanded position
A control unit coupled to the drive system
A control unit coupled to the drive system
The control unit is configured to
The control unit is configured to
Actuate, using the drive system, the moveable element
Actuate, using the drive system, the moveable element toward the first commanded position
Monitor a force or torque applied by the drive system to actuate the moveable element toward the first commanded position
Actuate, using the drive system, the moveable element to a first commanded position
Determine that the moveable element has reached a predefined trigger position
In response to the moveable element reaching the first commanded position, determine, based on an amount of force or torque applied to actuate the moveable element to the first commanded position, a force or torque limit to be applied when actuating the moveable element beyond the first commanded position toward a second commanded position
In response to determining that the moveable element has reached the predefined trigger position, determine a force or torque limit to be applied during further actuation of the moveable element based on the monitored force or torque applied by the drive system
Further actuate the moveable element toward the second commanded position while limiting a force or torque applied by the drive system to the determined force or torque limit
Further actuate the moveable element to a second commanded position while limiting a force or torque applied by the drive system to the determined force or torque limit
2. the computer-assisted device is a medical device
2. the computer-assisted device is a medical device
3. a cutting blade for cutting a grasped material or a stapling sled for pushing one or more staples through the grasped material
3. a cutting blade for cutting a grasped material or a stapling sled for pushing one or more staples through the grasped material
4. the force or torque limit corresponds to a limit in a magnitude of the force or torque applied by the drive system
4. the force or torque limit corresponds to a limit in a magnitude of the force or torque applied by the drive system
5. the second commanded position is selected as a setpoint that is past a maximum position for the moveable element
5. the second commanded position is selected to actuate the moveable element past a maximum position for the moveable element
6. the first and second commanded positions are included in a plurality of commanded positions in a trajectory for moving the moveable element through a range of motion
6. the first and second commanded positions are included in a plurality of commanded positions in a trajectory for moving the moveable element through a range of motion
7. the first commanded position is located a first distance before a maximum position of the moveable element
8. the predefined trigger position is located a first distance before a maximum position of the moveable element
8. the first distance is determined based on a velocity of the moveable element
8. the first distance is determined based on a velocity of the moveable element
9. the control unit is configured to determine the force or torque limit based on one or more local maxima in a magnitude of the force or torque applied by the drive system to actuate the moveable element to the first commanded position
9. the control unit is configured to determine the force or torque limit based on one or more local maxima in a magnitude of the monitored force or torque applied by the drive system to actuate the moveable element to the first commanded position
10. the one or more local maxima are selected from a group consisting of: a last local maximum in the magnitude of the force or torque applied by the drive system to actuate the moveable element to the first commanded position; or a global maximum in the magnitude of the force or torque applied by the drive system to actuate the moveable element to the first commanded position
10. the one or more local maxima consists of: a last local maximum in the monitored force or torque applied by the drive system to actuate the moveable element before the moveable element has reached the predefined trigger position; or a global maximum in the monitored force or torque
11. the control unit is configured to determine the force or torque limit based on an aggregation of the one or more local maxima
11. the control unit is configured to determine the force or torque limit based on an aggregation of the one or more local maxima
12. the control unit is configured to add an offset to the force or torque limit
12. the control unit is configured to add an offset to the force or torque limit
13. the control unit is configured to determine that the moveable element has reached a maximum position when the force or torque applied by the drive system reaches the force or torque limit
13. the control unit is configured to determine that the moveable element has reached a maximum position when the force or torque applied by the drive system reaches the force or torque limit
14. a method
14. a method
Actuating, by a control unit of a computer-assisted device using a drive system, a movable element
Actuating, by a control unit of a computer-assisted device using a drive system, a movable element toward a first commanded position
Monitoring a force or torque applied by the drive system to actuate the moveable element toward the first commanded position
Actuating, using the drive system, the moveable element to a first commanded position
Determining that the moveable element has reached a predefined trigger position
In response to the moveable element reaching the first commanded position, determining, based on an amount of force or torque applied to actuate the moveable element to the first commanded position, a force or torque limit to be applied when actuating the moveable element beyond the first commanded position toward a second commanded position
In response to determining that the moveable element has reached the predefined trigger position, determining a force or torque limit to be applied during further actuation of the moveable element based on the monitored force or torque applied by the drive system
Further actuating the moveable element toward the second commanded position while limiting a force or torque applied by the drive system to the determined force or torque limit
Further actuating the moveable element to a second commanded position while limiting a force or torque applied by the drive system to the determined force or torque limit
15. the force or torque limit corresponds to a limit in a magnitude of the force or torque applied by the drive system
15. the force or torque limit corresponds to a limit in a magnitude of the force or torque applied by the drive system
16. the second commanded position is selected as a setpoint that is past a maximum position for the moveable element
16. the second commanded position is selected to actuate the moveable element past a maximum position for the moveable element
17. determining the force or torque limit based on one or more local maxima in a magnitude of the force or torque applied by the drive system to actuate the moveable element to the first commanded position
17. determining the force or torque limit based on one or more local maxima in a magnitude of the force or torque applied by the drive system to actuate the moveable element to the first commanded position
18. a non-transitory machine-readable medium comprising instructions and associated with a computer-assisted device to perform the method
14. a non-transitory machine-readable medium comprising instructions and associated with a computer-assisted device to perform the method
Actuating, using a drive system, a movable element
Actuating, using a drive system, a movable element toward a first commanded position
Monitoring a force or torque applied by the drive system to actuate the moveable element toward the first commanded position
Actuating, using the drive system, the moveable element to a first commanded position
Determining that the moveable element has reached a predefined trigger position
In response to the moveable element reaching the first commanded position, determining, based on an amount of force or torque applied to actuate the moveable element to the first commanded position, a force or torque limit to be applied when actuating the moveable element beyond the first commanded position toward a second commanded position
In response to determining that the moveable element has reached the predefined trigger position, determining a force or torque limit to be applied during further actuation of the moveable element based on the monitored force or torque applied by the drive system
Further actuating the moveable element toward the second commanded position while limiting a force or torque applied by the drive system to the determined force or torque limit
Further actuating the moveable element to a second commanded position while limiting a force or torque applied by the drive system to the determined force or torque limit
19. the first commanded position is located a first distance before a maximum position of the moveable element; and the method further comprises determining the first distance based on a velocity of the moveable element
19. the predetermined trigger position is located a first distance before a maximum position of the moveable element; and the method further comprises determining the first distance based on a velocity of the moveable element
20. determining the force or torque limit based on one or more local maxima in a magnitude of the force or torque applied by the drive system to actuate the moveable element to the first commanded position
20. determining the force or torque limit based on one or more local maxima in a magnitude of the monitored force or torque applied by the drive system to actuate the moveable element
Claims 1-20 would be allowable if a proper Terminal Disclaimer and the requisite fee is filed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Linda J. Hodge whose telephone number is (571)272-0571. The examiner can normally be reached Monday-Friday 8:00-5:00.
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, Shelley Self can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA J. HODGE/Primary Examiner, Art Unit 3731
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