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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Jan. 16, 2025 and Juned 24, 2025 have been considered by the Examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “switch of the drive output unit” must be shown or the feature(s) canceled from claims 10 and 18. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10 and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 10 includes the limitation, “a proximal surface of the movable body actuates a switch of the drive output unit when the movable body is moved proximally along the axis” and claim 18 includes the limitation, “a proximal surface of the movable body actuates a switch of the drive output unit when the movable body is moved from the distal position towards the proximal position”.
Neither of these limitations are clearly described or shown in the drawing figures and thus fail to comply with the written description requirement.
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 10 and 18 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.
Claim 10 includes the limitation, “a proximal surface of the movable body actuates a switch of the drive output unit when the movable body is moved proximally along the axis” and claim 18 includes the limitation, “a proximal surface of the movable body actuates a switch of the drive output unit when the movable body is moved from the distal position towards the proximal position”.
The limitations were not clearly described in the specification and not shown in the drawing figures as filed. As such the metes and bounds of the claims are not clearly set forth and cannot be ascertained.
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 3-5 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Orban, III (US 2012/0239060).
Orban discloses and shows an apparatus comprising:
a frame (Fig. 32A/B, item 1000) having a first end portion and a second end portion, the frame comprising a first skid plate and a second skid plate (1023,1022), the first skid plate and the second skid plate each extending from the first end portion of the frame to the second end portion of the frame, the first skid plate and the second skid plate defining an opening at the first end portion of the frame and a parking slot at the second end portion of the frame;
a movable body (250) configured to move within the frame along an axis; and
an intermediate disk (251) rotatably mounted within the movable body, the intermediate disk configured to engage a driven disk (504) of an instrument (500);
wherein:
the movable body is configured to move proximally along the axis on a condition that a first mounting protrusion of the instrument is moved along the first skid plate from the opening towards the parking slot and a second mounting protrusion of the instrument is moved along the second skid plate from the opening towards the parking slot (see Figs. 31A-31E for first and second mounting portions, not labeled); and
the movable body is configured to move distally along the axis on a condition that the first mounting protrusion and the second mounting protrusion are within the parking slot to retain the first mounting protrusion and the second mounting protrusion within the parking slot.
Cl. 4 – a proximal surface of the first mounting protrusion and a proximal surface of the second mounting protrusion each contact a distal surface of the movable body to move the movable body proximally along the axis on the condition that the first mounting protrusion and the second mounting protrusion are moved along the first skid plate from the opening towards the parking slot.
Cl. 5 – the intermediate disk (251) is configured to engage a drive output disk (504) of a drive output unit of an instrument manipulator assembly (504) on the condition that the frame is coupled to the drive output unit.
Cl. 9 – the axis is a first axis; the first skid plate defines a second axis that is non-normal to the first axis; and the first mounting protrusion is configured to move along the second axis when moved along the first skid plate from the opening towards the parking slot.
Allowable Subject Matter
Claims 6-8, 11 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 13-17 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOBBY RUSHING, JR whose telephone number is (571)270-0501. The examiner can normally be reached Monday - Friday, 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at (571) 270-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOBBY RUSHING, JR/ Primary Examiner, Art Unit 3618