DETAILED ACTION
Election/Restrictions
Applicants’ election without traverse species 2, figures 26a-b, claims 9-16 in the reply filed on 8/24/2026 is acknowledged.
Claims 1-8, 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 8/24/2026.
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.
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) 9, 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wallace et al U.S 2002/0111621.
Claim 9: Wallace et al disclose a surgical instrument as best seen in figures 5-7, comprising: a surgical effector 58; a wrist 50 coupled to the surgical effector; and first and second cable segments C1,C2,C3,C4, in figures 7,10 that extend through the wrist to the surgical effector 58 to actuate the surgical effector; wherein the wrist comprises a clevis (the area at 14.3 and 52, fig. 5), defining: a first opening to receive the first and second cable segments C1,C2; a first redirect surface at the area 58.9 defining a first portion of the perimeter of the first opening, the first redirect surface configured to be engaged by the first cable
segment; and a second redirect surface at the area 58.10, fig. 7 defining a second portion of the perimeter of the first opening, the second redirect surface configured to be engaged by the second cable segment (see paragraph 61).
Claims 11-13: Wallace et al disclose wherein the first 58.9 and second redirect surfaces 58.10 each comprise a curved surface as best seen in fig. 7; wherein the first and second redirect surfaces each comprise a rotatable ball at the area 8 with bending (see paragraphs 70, 85); wherein the clevis 14.3/52, fig. 5 comprises a first end and a second end, wherein the second end is closer to the surgical effector 58 than the first end, and wherein the first 58.9 and second redirect surfaces 58.10 extend away from one another as the first and second redirect surfaces extend toward the second
End as best seen in fig. 7.
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) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wallace et al.
Claim 10: Wallace et al disclose the invention substantially as claimed, but is silent regarding wherein the first and second redirect surfaces are each coated with a material to reduce friction between the first and second direct surfaces and the first and second cable segments, respectively. It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the device with the first and second redirect surfaces are each coated with a material to reduce friction between the first and second direct surfaces and the first and second cable segments, since it has been held to be within the general skill of a worker in the art to select a known material on the basic of its suitability of the intended use or as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claims 14-16 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.
Conclusion
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/VI X NGUYEN/Primary Examiner, Art Unit 3771
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