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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 5-7 and 9-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In re claim 3, the limitation, “the circular opening” lacks antecedent basis.
In re claim 5, the limitation, “the marker” is unclear. Specifically, it is unclear whether the recited “the marker” is directed to a new limitation that lacks antecedent basis, or if it directed to the earlier recited “position marker” (claim 5).
For examination purposes, the limitation, “the marker” is interpreted as being directed to the earlier recited “position marker”.
In re claim 6, the limitation, “the grip” is unclear. Specifically, it is unclear whether the recited “the grip” is directed to a new limitation that lacks antecedent basis, or if it directed to the earlier recited “tool grip” (claim 1).
For examination purposes, the limitation, “the grip” is interpreted as being directed to the earlier recited “tool grip”.
In re claim 7, regarding the limitation, “the circular opening”, see in re claim 3 above.
In re claim 9, the limitation, “the enclosure” lacks antecedent basis.
In re claim 11, regarding the limitation, “the circular opening”, see in re claim 3 above.
In re claim 13, regarding the limitation, “the grip”, see in re claim 6 above.
In re claim 14, regarding the limitation, “the circular opening”, see in re claim 3 above.
Appropriate correction is required.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10 of U.S. Patent No. US 12,239,385 (Wolf). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Application
Reference (US 12,239,385)
Claim 1. A tool adapter, comprising:
Claim 1. A tool adapter, comprising:
an adapter arm having a proximal end terminating with a connection and a distal end comprising a circular coupling,
an adapter arm having a proximal end terminating with a connection and a distal end comprising a circular opening,
the circular coupling having a center and defining an axis orthogonal to the circular coupling and passing through the center; and
the circular opening having a center and defining an axis orthogonal to the circular opening and passing through the center;
a tool grip rotatingly connected to the circular coupling so as to permit rotation of the tool grip about the axis, the tool grip being configured to fixedly retain a tool along the axis.
and a tool grip comprising a collet configured on compression to grip a tool in order to fixedly retain the tool to the tool grip along the axis, the tool grip being rotatingly connected to the circular opening so as to permit rotation about the axis with respect to the adapter arm of the collet and the tool while the tool is fixedly retained to the tool grip.
Claims 9-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10 of U.S. Patent No. US 12,239,385 in view of Yang et al. (US 2015/0182293). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Application
Reference (US 12,239,385)
Claim 9. providing an adapter arm having a proximal end terminating with a connection and a distal end comprising a circular coupling,
Claim 10. A tool adapter, comprising: an adapter arm having a proximal end terminating with a connection and a distal end comprising a circular opening,
the circular coupling having a center and defining an axis orthogonal to the circular coupling and passing through the center;
the circular opening having a center and defining an axis orthogonal to the circular opening and passing through the center;
rotatingly connecting a tool grip to the circular coupling so as to permit rotation of the tool grip about the axis, the tool grip being configured to fixedly retain a tool along the axis;
and a tool grip comprising a collet configured on compression to grip a tool in order to fixedly retain the tool to the tool grip along the axis, the tool grip being rotatingly connected to the circular opening so as to permit rotation about the axis with respect to the adapter arm of the collet and the tool while the tool is fixedly retained to the tool grip
fixedly connecting a position marker to the connection of the proximal end of the adapter arm in a preset spatial relationship with the axis,
wherein the connection of the proximal end is configured to fixedly connect to a position marker, the position marker being in a preset spatial relationship with the axis, and wherein the position marker is configured to be tracked spatially, so that tracking of the position marker provides tracking of the tool retained by the tool grip.
the position marker comprising optical elements enabling the marker to be tracked spatially, so that tracking of the position marker provides tracking of the tool fixed to the enclosure
further comprising the position marker, wherein the position marker comprises optical elements enabling the position marker to be tracked spatially
Claim 10 of Wolf fails to disclose a method for conducting image guided surgery, comprising: presenting an image of the tracked tool to a professional performing the surgery.
Yang discloses a method [0002, 0095] for conducting image guided surgery ([0019]: tracking system provides image registration for devices with marker attachments; [0003]: provides marker arrangements for surgical guidance during surgery; [0054]), comprising: presenting an image of the tracked tool to a professional performing the surgery [0004, 0018, 0058].
Yang further teaches that markers [0048, 0064] comprising optical elements [0048, 0064] enable the markers to be tracked spatially [0048], and provides surgical guidance to surgeons so they can localize a position of a surgical instrument relative to a human body during surgery [0002-0003].
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the method for conducting image guided surgery recited in claim 10 of Wolf to provide a method for conducting image guided surgery, comprising: presenting an image of the tracked tool to a professional performing the surgery, as taught by Yang, because the markers can be tracked spatially and provides surgical guidance to surgeons so they can localize a position of a surgical instrument relative to a human body during surgery.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (US 2015/0182293).
In re claim 1, Yang discloses a tool adapter (Fig. 15(a): 100/280), comprising:
an adapter arm (100) having a proximal end (see Examiner fig. 1 below) terminating with a connection (150: 100 has terminates with connection to the position markers 150) and a distal end (see Examiner fig. 1 below: distal end is left side comprising of spring collect 275) comprising a circular coupling (see Examiner fig. 1 below: circular coupling is coupling between 275 and 280 which are circular and share a center when connected),
the circular coupling having a center (see Examiner fig. 1 below) and defining an axis orthogonal to the circular coupling (axis forming at a 90 degrees angle from the center of the circular coupling) and passing through the center(see Examiner fig. 1 below: axis orthogonal to circular coupling would pass through center of a circular opening); and
a tool grip (280) rotatingly connected to the circular coupling (280, 275) so as to permit rotation of the tool grip about the axis (Fig. 15(a) and Fig. 15(b): 280, 130, longitudinal axis of shaft 130; [0080]),
the tool grip being configured to fixedly retain a tool (Fig. 15(b): 130) along the axis (280, 130, longitudinal axis of shaft 130).
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Examiner Fig. 1 – Annotated Fig. 15(a)-(c) (Yang)
In re claim 2, Yang discloses wherein the tool grip comprises a collet (275) housed in a collet holder (inner and threaded portion of 280), and wherein the collet is configured on compression to grip the tool ([0080]: fasting the spring collet 275 applies compression which fastens marker assembly 100 to shaft 130; [0064]: 100 is removably secured to shaft 130 of medical instrument 110).
In re claim 3, Yang discloses wherein the collet holder is held by the circular opening (see Examiner fig. 1 below: collet holder is within circular opening space and would be held by the circular opening), and is configured to be unable to translate along the axis ([0080]; the spring collet 275 is fixed with the marker assembly 100 and therefore interpreted as to be unable to translate along the axis).
In re claim 4, Yang discloses comprising a collet fastening head (275: threaded part of 275) configured to screw onto the collet holder (Fig. 15(c): 275, 280) so as implement the compression of the collet [0080].
In re claim 5, Yang discloses comprising
a position marker (150; [0064]) fixedly connected to the connection of the proximal end in a preset spatial relationship with the axis ([0065]: angled relative to axis 130; [0064]),
the marker comprising optical elements [0048, 0064] enabling the marker to be tracked spatially [0048], so that tracking of the marker provides tracking of the tool retained by the tool grip [0048-0049].
In re claim 9, regarding the limitations, “a method…comprising:
providing an adapter arm having a proximal end terminating with a connection and a distal end comprising a circular coupling,
the circular coupling having a center and defining an axis orthogonal to the circular coupling and passing through the center;
rotatingly connecting a tool grip to the circular coupling so as to permit rotation of the tool grip about the axis, the tool grip being configured to fixedly retain a tool along the axis”,
see in re claim 1 above.
Regarding the limitations, “a method for conducting image guided surgery, comprising:
fixedly connecting a position marker to the connection of the proximal end of the adapter arm in a preset spatial relationship with the axis,
the position marker comprising optical elements enabling the marker to be tracked spatially, so that tracking of the position marker provides tracking of the tool fixed to the enclosure;
….presenting an image of the tracked tool to a professional performing the surgery”,
Yang discloses a method [0002, 0095] for conducting image guided surgery ([0019]: tracking system provides image registration for devices with marker attachments; [0003]: provides marker arrangements for surgical guidance during surgery; [0054]), comprising:
fixedly connecting a position marker to the connection of the proximal end of the adapter arm in a preset spatial relationship with the axis (see in re claim 5 above),
the position marker comprising optical elements enabling the marker to be tracked spatially (see in re claim 5 above), so that tracking of the position marker provides tracking of the tool fixed to the enclosure (fig. 15(a)-(c): position markers 150 provide tracking of tool 130 which is fixed to a combination of 275 and 280 (enclosure); [0064-0065, 0080]);
presenting an image of the tracked tool to a professional performing the surgery [0004, 0018, 0058].
In re claim 10, regarding the limitations,
“wherein the tool grip comprises a collet housed in a collet holder, and
wherein the collet is configured on compression to grip the tool”,
see in re claim 2 above.
In re claim 11, regarding the limitations, “wherein the collet holder
is held by the circular opening, and
is configured to be unable to translate along the axis”,
see in re claim 3 above.
In re claim 12, regarding the limitations, “comprising configuring a collet fastening head to screw onto the collet holder so as implement the compression of the collet” see in re claim 4 above.
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.
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.
Claims 6-7 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2015/0182293) in view of Barnes et al. (US 2018/0028266).
In re claim 6, Yang fails to disclose
comprising a torque limiting device coupled to the tool grip and
configured to apply a preset threshold torque to the grip so that rotation of the tool grip is permitted when the threshold torque is exceeded.
Barnes teaches an analogous medical tool device to be used during surgery [0006] comprising
a tool grip (Fig. 2: 162/160) being rotatingly connected to a circular opening ([0045]: rotation of the attachment 162 is permitted with respect to the adapter arm when additional force is applied to overcome the bias force which return the pins 250 to their original position) so as to permit rotation about an axis (Fig. 4: axis 226) with respect to an adapter arm (Fig. 2: right side of 162 which tool 170 is inserted into) of the tool grip and a tool (170; [0034]) while the tool is fixedly retained by the tool grip ([0033-0034]: tool 170 is fixed to 162 of the tool grip, see also Fig. 2; [0042-0046]: 162 of the tool grip rotates to unlock and lock internal components within collet assembly 140 while tool 170 is fixed [0033-0034]);
comprising a torque limiting device (Fig. 4: 140, 162, 224, 250, 252; [0045]: rotating the D-ring 224 causes the fixation pins 224 to be moved into the J grooves 252, which causes the internal components within the collect assembly 140 to lock) coupled to the tool grip (Fig. 2: 162/160; [0034]: attachment 162 supports the tool 170 and connects to attachment connection portion 160) and
configured to apply a preset threshold torque to the tool grip so that rotation of the tool grip with respect to the adapter arm is permitted when the threshold torque is exceeded ([0045]: rotation of the attachment 162 (i.e., tool grip) is permitted with respect to the adapter arm when additional force is applied to overcome the bias force which return the pins 250 to their original position).
Barnes further teaches that the connection of attachment 162 and collect 140 may result in various degrees of rotation (i.e., misalignment) due to manufacturing tolerances and wear [0047], which is why it’s important to create a locking mechanism which requires a certain amount of force to lock or unlock the assembly [0045].
Therefore, it would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the tool adapter yielded by the proposed combination, to provide a torque limiting device coupled to the tool grip and configured to apply a preset threshold torque to the grip so that rotation of the tool grip is permitted when the threshold torque is exceeded, as taught by Barnes, because doing so will allow for the locking mechanism to make the device more rigid and fixed.
In re claim 7, the proposed combination fails to yield wherein the torque limiting device comprises a plurality of pins retained within the tool grip and configured to exert force against the circular opening.
Barnes teaches wherein the torque limiting device comprises a plurality of pins (250; [0045]) retained within the tool grip (250, 162/160) and configured to exert force against a circular opening (Fig. 4: the axis going the direction of 294).
For the same reasons as claim 6 above, it would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the tool adapter yielded by the proposed combination, to provide wherein the torque limiting device comprises a plurality of pins retained within the tool grip and configured to exert force against the circular opening, as taught by Barnes, because doing so will allow for the locking mechanism to make the device more rigid and fixed.
In re claim 13, regarding the limitations,
“comprising coupling a torque limiting device to the tool grip and
configuring the device to apply a preset threshold torque to the grip so that rotation of the tool grip is permitted when the threshold torque is exceeded”,
see in re claim 6 above.
In re claim 14, regarding the limitations,
“wherein the torque limiting device comprises a plurality of pins retained within the tool grip and
configured to exert force against the circular opening”,
see in re claim 7 above.
Claims 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2015/0182293) in view of McCurry et al (US 5,620,188).
In re claim 8, Yang fails to disclose comprising a total indicated runout (TIR) controller coupled to the tool grip and configured to apply a pre-determined TIR to the tool.
McCurry teaches a router collet assembly (Col. 1, lines 37-48), which is analogous in being attached to a removable tool that is rotated about a central axis (Col. 1, lines 37-48), and comprises of a total indicated runout (TIR) controller (Fig. 2a: nut 34) coupled to a tool grip (Col. 4, lines 24-37: bore of collet 32 which grips shank of rotary cutting tool; Fig. 2a: nut 34 is coupled to bore of collet 32) and configured to apply a pre-determined total indicated runout (TIR) to the tool (Col. 1, lines 40-48: nut limits the rotation by applying a pre-determined total indicated runout (axial rotation being controlled) to the rotary cutting tool i.e. the tool; Col. 1, lines 64-67).
McCurry further teaches that the nut’s engagement with the collet can be controlled (Col. 4, lines 27-37), so that when the nut is rotated clockwise, the cutting tool is secured (Col, 24-40), and when the nut is rotated counter-clockwise, the cutting tool is released (Col. 4, lines 40-49).
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the tool adapter yielded by proposed combination, to comprise a total indicated runout (TIR) controller coupled to the tool grip and configured to apply a pre-determined TIR to the tool, as taught by McCurry, because doing so will allow the collet’s engagement with the tool to be controlled based on the direction that the total indicated runout (TIR) controller is rotated.
In re claim 15, regarding the limitations,
“comprising coupling a total indicated runout (TIR) controller to the tool grip and
configuring the controller to apply a pre-determined TIR to the tool”,
see in re claim 8 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Krag et al. (US 2007/0265491) discloses a system [0015] to accurately know a relative position between an instrument [0015] and a target location within a human body [0015] using a marker [0015].
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUMAISA R BAIG whose telephone number is (571)270-0175. The examiner can normally be reached Mon-Fri: 8am- 5pm.
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, David Hamaoui can be reached at (571) 270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUMAISA RASHID BAIG/Examiner, Art Unit 3796
/DAVID HAMAOUI/SPE, Art Unit 3796
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