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 filed 06/10/2025 has been considered by the Examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 1-11 and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,285,230 (hereinafter ‘230 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1 of the instant application, claim 1 of the ‘230 Patent discloses:
An end effector for a robotic surgical tool (Claim 1, lines 1-3), comprising:
a first jaw providing a first jaw extension (Claim 1, line 4);
a second jaw providing a second jaw extension (Claim 1, line 5);
an articulable wrist operatively coupled to the first and second jaws (Claim 1, line 6) and including:
a distal clevis (Claim 1, line 8);
first and second pulleys rotatably mounted to the distal clevis at a pivot axis, the first jaw extension being pinned to the first pulley and the second jaw extension being pinned to the second pulley (Claim 1, lines 9-12);
a linkage mounted to the first and second jaws and defining a slot (Claim 1, lines 13-14); and
an alignment arm rotatably mounted to the first pulley at the pivot axis and providing an alignment bar translatable within the slot (Claim 1, lines 15-17).
Claim 1 of the ‘230 Patent anticipates instant claim 1. Therefore, the instant claim 1 is not patentable over claim 1 of the ‘230 Patent.
Regarding claim 2 of the instant application, claim 2 of the ‘230 Patent discloses:
The end effector of claim 1, wherein the first and second jaw extensions are pinned to the first and second pulleys, respectively, eccentric to the pivot axis (Claim 2, lines 1-3).
Claim 2 of the ‘230 Patent anticipates instant claim 2. Therefore, the instant claim 2 is not patentable over claim 2 of the ‘230 Patent.
Regarding claim 3 of the instant application, claim 3 of the ‘230 Patent discloses:
The end effector of claim 1, wherein the slot extends parallel to a longitudinal axis of the end effector (Claim 3, lines 1-2).
Claim 3 of the ‘230 Patent anticipates instant claim 3. Therefore, the instant claim 3 is not patentable over claim 3 of the ‘230 Patent.
Regarding claim 4 of the instant application, claim 4 of the ‘230 Patent discloses:
The end effector of claim 1, wherein the alignment bar translates distally and proximally within the slot as the first and second jaws open and close (Claim 4, lines 1-3).
Claim 4 of the ‘230 Patent anticipates instant claim 4. Therefore, the instant claim 4 is not patentable over claim 4 of the ‘230 Patent.
Regarding claim 5 of the instant application, claim 5 of the ‘230 Patent discloses:
The end effector of claim 1, wherein the slot is a first slot, the alignment arm is a first alignment arm, and the alignment bar is a first alignment bar, the articulable wrist further includes:
a second alignment arm rotatably mounted to the second pulley at the pivot axis and providing a second alignment bar translatable within a second slot defined in the linkage, wherein the second slot extends parallel to a longitudinal axis of the end effector (Claim 5, lines 1-9).
Claim 5 of the ‘230 Patent anticipates instant claim 5. Therefore, the instant claim 5 is not patentable over claim 5 of the ‘230 Patent.
Regarding claim 6 of the instant application, claim 9 of the ‘230 Patent discloses:
The end effector of claim 1, wherein the first and second jaws are bifurcating jaws that simultaneously move between open and closed positions (Claim 9, lines 1-6).
Claim 9 of the ‘230 Patent anticipates instant claim 6. Therefore, the instant claim 6 is not patentable over claim 9 of the ‘230 Patent.
Regarding claim 7 of the instant application, claim 8 of the ‘230 Patent discloses:
The end effector of claim 1, wherein the pivot axis facilitates pitch articulation for the end effector and the first and second jaws open and close in a direction of pitch articulation (Claim 8, lines 1-4).
Claim 8 of the ‘230 Patent anticipates instant claim 7. Therefore, the instant claim 7 is not patentable over claim 8 of the ‘230 Patent.
Regarding claim 8 of the instant application, claim 6 of the ‘230 Patent discloses:
The end effector of claim 1, wherein the pivot axis facilitates yaw articulation for the end effector (Claim 6, lines 7-10).
Claim 6 of the ‘230 Patent anticipates instant claim 8. Therefore, the instant claim 8 is not patentable over claim 6 of the ‘230 Patent.
Regarding claim 9 of the instant application, claim 7 of the ‘230 Patent discloses:
The end effector of claim 1, wherein at least one of the distal clevis or the linkage comprises two or more component parts that are joinable to help form the wrist (Claim 7, lines 1-3).
Claim 7 of the ‘230 Patent anticipates instant claim 9. Therefore, the instant claim 9 is not patentable over claim 7 of the ‘230 Patent.
Regarding claims 10-11 and 16 of the instant application, claim 10 of the ‘230 Patent discloses:
A method of operating an end effector (Claim 10, lines 1-5), comprising:
locating an end effector adjacent a patient (Claim 10, lines 3-5), the end effector including a first jaw providing a first jaw extension and a second jaw providing a second jaw extension, and an articulable wrist connected proximally to the end effector (Claim 10, lines 4-9), the wrist including:
a distal clevis (Claim 10, line 10);
first and second pulleys rotatably mounted to the distal clevis at a pivot axis, the first jaw extension being pinned to the first pulley and the second jaw extension being pinned to the second pulley (Claim 10, lines 11-14);
a linkage mounted to the first and second jaws and defining a slot (Claim 10, lines 15-16); and
an alignment arm rotatably mounted to the first pulley at the pivot axis and providing an alignment bar (Claim 10, lines 17-18);
actuating the first and second pulleys to open or close the first and second jaws (Claim 10, lines 19-20); and
preventing the first and second jaws from rotating out of alignment with each other with the alignment bar received within the slot (Claim 10, lines 21-23).
The method of claim 10, wherein preventing the first and second jaws from rotating out of alignment with each other further comprises preventing the first and second jaws from rotating in pitch (Claim 10, lines 21-23).
The method of claim 10, further comprising pinning the first and second jaw extensions to the first and second pulleys, respectively, and eccentric to the pivot axis (Claim 10, lines 11-14).
Claim 10 of the ‘230 Patent anticipates instant claims 10-11 and 16. Therefore, the instant claims 10-11 and 16 are not patentable over claim 10 of the ‘230 Patent.
Regarding claim 13 of the instant application, claim 11 of the ‘230 Patent discloses:
The method of claim 10, wherein the slot extends parallel to a longitudinal axis of the end effector, and wherein preventing the first and second jaws from rotating out of alignment with each other with the alignment bar received within the slot further comprises translating the alignment bar within the slot as the first and second jaws open and close (Claim 11, lines 1-6).
Claim 11 of the ‘230 Patent anticipates instant claim 13. Therefore, the instant claim 13 is not patentable over claim 11 of the ‘230 Patent.
Regarding claim 14 of the instant application, claim 12 of the ‘230 Patent discloses:
The method of claim 10, wherein the slot is a first slot, the alignment arm is a first alignment arm, and the alignment bar is a first alignment bar, and wherein preventing the first and second jaws from rotating out of alignment with each other further comprises:
receiving a second alignment bar of a second alignment arm within a second slot defined in the linkage, the second alignment arm being rotatably mounted to the second pulley at the pivot axis; and
translating the second alignment bar within the second slot as the first and second jaws open and close, wherein the second slot extends parallel to a longitudinal axis of the end effector (Claim 12, lines 1-13).
Claim 12 of the ‘230 Patent anticipates instant claim 14. Therefore, the instant claim 14 is not patentable over claim 12 of the ‘230 Patent.
Regarding claim 15 of the instant application, claim 13 of the ‘230 Patent discloses:
The method of claim 10, wherein the slot is a first slot and the linkage defines a second slot misaligned with the first slot, the method further comprising opening and closing the jaws without binding the alignment arm in the first slot (Claim 13, lines 1-4).
Claim 13 of the ‘230 Patent anticipates instant claim 15. Therefore, the instant claim 15 is not patentable over claim 13 of the ‘230 Patent.
Claims 1-2, 10-11, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 12, and 20 of U.S. Patent No. 12,279,842 (hereinafter ‘842 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1-2 of the instant application, claim 2 of the ‘842 Patent discloses:
An end effector for a robotic surgical tool (Claim 1, lines 1-3), comprising:
a first jaw providing a first jaw extension (Claim 1, lines 3-4; Claim 2, lines 1-2);
a second jaw providing a second jaw extension (Claim 1, lines 3-4; Claim 2, lines 2-3);
an articulable wrist operatively coupled to the first and second jaws (Claim 1, lines 5-6) and including:
a distal clevis (Claim 2, line 5);
first and second pulleys rotatably mounted to the distal clevis at a pivot axis, the first jaw extension being pinned to the first pulley and the second jaw extension being pinned to the second pulley (Claim 2, lines 6-9);
a linkage mounted to the first and second jaws and defining a slot (Claim 1, lines 7-8); and
an alignment arm rotatably mounted to the first pulley at the pivot axis (Claim 2, lines 10-11) and providing an alignment bar translatable within the slot (Claim 1, lines 11-13 and 19 – alignment head, i.e. alignment bar).
The end effector of claim 1, wherein the first and second jaw extensions are pinned to the first and second pulleys, respectively, eccentric to the pivot axis (Claim 2, lines 7-9).
Claim 2 of the ‘842 Patent anticipates instant claims 1-2. Therefore, the instant claims 1-2 are not patentable over claim 2 of the ‘842 Patent.
Regarding claims 1-2 of the instant application, claim 12 of the ‘842 Patent discloses:
An end effector for a robotic surgical tool (Claim 11, line 1), comprising:
a first jaw providing a first jaw extension (Claim 11, lines 1-2; Claim 12, lines 1-2);
a second jaw providing a second jaw extension (Claim 11, lines 1-2; Claim 12, lines 2-3);
an articulable wrist operatively coupled to the first and second jaws (Claim 11, lines 3-4) and including:
a distal clevis (Claim 12, line 5);
first and second pulleys rotatably mounted to the distal clevis at a pivot axis, the first jaw extension being pinned to the first pulley and the second jaw extension being pinned to the second pulley (Claim 12, lines 6-9);
a linkage mounted to the first and second jaws and defining a slot (Claim 11, lines 5-6); and
an alignment arm rotatably mounted to the first pulley at the pivot axis (Claim 12, lines 10-11) and providing an alignment bar translatable within the slot (Claim 11, lines 10-11 and 17 – alignment head, i.e. alignment bar).
The end effector of claim 1, wherein the first and second jaw extensions are pinned to the first and second pulleys, respectively, eccentric to the pivot axis (Claim 12, lines 7-9).
Claim 12 of the ‘842 Patent anticipates instant claims 1-2. Therefore, the instant claims 1-2 are not patentable over claim 12 of the ‘842 Patent.
Regarding claims 10-11 and 16 of the instant application, claim 20 of the ‘842 Patent discloses:
A method of operating an end effector (Claim 18, lines 1-5), comprising:
locating an end effector adjacent a patient (Claim 18, lines 3-5), the end effector including a first jaw providing a first jaw extension and a second jaw providing a second jaw extension (Claim 18, lines 4-6; Claim 20, lines 1-3), and an articulable wrist connected proximally to the end effector (Claim 18, lines 6-8), the wrist including:
a distal clevis (Claim 20, lines 3-4);
first and second pulleys rotatably mounted to the distal clevis at a pivot axis (Claim 20, lines 4-5), the first jaw extension being pinned to the first pulley and the second jaw extension being pinned to the second pulley (Claim 20, lines 5-7);
a linkage mounted to the first and second jaws and defining a slot (Claim 20, lines 9-10); and
an alignment arm rotatably mounted to the first pulley at the pivot axis and providing an alignment bar (Claim 18, lines 13-15; Claim 20, lines 7-8 – alignment head, i.e. alignment arm);
actuating the first and second pulleys to open or close the first and second jaws (Claim 20, lines 10-11); and
preventing the first and second jaws from rotating out of alignment with each other with the alignment bar received within the slot (Claim 20, lines 12-14).
The method of claim 10, wherein preventing the first and second jaws from rotating out of alignment with each other further comprises preventing the first and second jaws from rotating in pitch (Claim 20, lines 12-14).
The method of claim 10, further comprising pinning the first and second jaw extensions to the first and second pulleys, respectively, and eccentric to the pivot axis (Claim 20, lines 5-7).
Claim 20 of the ‘842 Patent anticipates instant claims 10-11 and 16. Therefore, the instant claims 10-11 and 16 are not patentable over claim 20 of the ‘842 Patent.
Allowable Subject Matter
Claims 1-17 contain allowable subject matter.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record (namely Kapadia (U.S. PGPub No. 2017/0224367) does not disclose or fairly suggest either singly or in combination the claimed invention of independent claims 1 and 10 when taken as a whole, comprising, in addition to the other recited claim elements, an alignment arm rotatably mounted to the first pulley at the pivot axis and providing an alignment bar translatable within the slot. The Examiner wishes to make the following notes on the reference considered to be the closest prior art, Kapadia (U.S. PGPub No. 2017/0224367). Kapadia teaches an end effector of a surgical tool that includes a housing, a jaw support shaft, jaw members, an articulation member, and cam pulleys (Abstract). Kapadia teaches (Fig. 2, # 100, 110, and 120) an end effector that may include a wrist assembly and a jaw assembly pivotally connected to wrist assembly (Par. [0044]). Kapadia teaches (Fig. 3, # 120, 130, 140, 150, 160, 170) that the jaw assembly may include a jaw housing, an articulating member, a pair of jaw members, a pair of cam pulleys, and a jaw support shaft (Par. [0046]). Kapadia teaches (Fig. 3, # 130) a jaw housing, which may be in the form of a clevis (Par. [0047]). Kapadia teaches (Fig. 3, # 138, 140 – articulation member, i.e. linkage, 142) that may be received in a U-shaped opening of a saddle and may include a body that has a triangular configuration (Par. [0049]). Kapadia teaches (Fig. 3, # 142, 144) that an elongate slot may be defined through the body and between the pair of side surfaces (Par. [0049]). Kapadia teaches (Fig. 3, # 150, 152 – base portion, i.e. jaw extensions, 154) that each of the pair of jaw members has a base portion and a jaw portion extending distally from the base portion (Par. [0051]). Kapadia teaches (Fig. 3, # 150, 158a-b, 160, 164) that cam pins may extend from each of the pair of cam pulleys and that each cam pin may be received in one of the cam pin openings of the pair of jaw members (Par. [0052]). Despite the many similarities between Kapadia’s disclosure and the instant independent claims 1 and 10, Kapadia does not teach the wrist including an alignment arm rotatably mounted to the first pulley at the pivot axis and providing an alignment bar translatable within the slot. No other prior art reference could be found that teaches or renders obvious the limitations of instant claims 1 and 10. Due to their dependency on independent claims 1 and 10, instant claims 2-9 and 11-17 are also considered to contain allowable subject matter.
Therefore, in view of the prior art and its deficiencies, the claimed invention as a whole is rendered novel and non-obvious, and thus, is allowable as claimed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a). In particular, the nonstatutory double patenting rejections hereinabove must be overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL TAYLOR HOLTZCLAW whose telephone number is (571)272-6626. The examiner can normally be reached Monday-Friday (7:30 a.m.-5:00 p.m. EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer McDonald can be reached at (571) 270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL T. HOLTZCLAW/Primary Examiner, Art Unit 3796
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