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 August 5, 2026, was received and entered into the record. However, it is impractical for the examiner to review the references thoroughly with the number of references cited in this case. By initializing each of the cited references on the accompanying 1449 forms, the examiner is merely acknowledging the submission of the cited references and indicating that only a cursory review has been made of the cited references.
MPEP § 2004.13 states: It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant's attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aft 'd, 479 F.2d 1338, 178 USPQ 577 (Sth Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
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 10-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4 and 6, respectively, of U.S. Patent No. 12,226,174 (hereinafter “the patent”). The difference between claim 10 of the patent application and claim 1 of the patent lie in the fact that claim 10 requires “a ring structure coupled to the column” and “a robotic arm coupled to the ring structure” while claim 1 of the patent recites “a first arm support coupled to the column”, “a first robotic arm coupled to the first arm support” and “the first arm support comprises a ring structure”. It would have been obvious to one of ordinary skill in the art to couple the first robotic arm to the ring structure of the first arm support to move the robotic arm with respect to the table to perform a surgical procedure.
Claims 14-15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5, respectively, of U.S. Patent No. 12,226,174 (hereinafter “the patent”). As to claim 14, the difference between claim 14 of the patent application and claim 1 of the patent lie in the fact that claim 14 requires “a ring positioned around the column; and a robotic arm mounted to the ring” while claim 1 of the patent recites “a first robotic arm coupled to the first arm support” and “the first arm support comprises a ring structure”. It would have been obvious to one of ordinary skill in the art to couple the first robotic arm to the ring structure of the first arm support to move the robotic arm with respect to the table to perform a surgical procedure.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,622,827 (hereinafter “the patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because all limitation in claim 1 of the patent application can be found in claim 1 of the patent.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,622,827 (hereinafter “the patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because all limitation in claim 10 of the patent application can be found in claim 1 of the patent.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,622,827 (hereinafter “the patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because all limitation in claim 14 of the patent application can be found in claim 1 of the patent.
Allowable Subject Matter
Claims 1-20 would be allowable if a terminal disclaimer is filed to overcome the nonstatutory double patenting rejections set forth in this Office action.
Anvari (US 2006/0149418) discloses a system 112 (Figs. 2-3, Fig. 3 is reproduced and annotated below) comprising:
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a table 118 (Fig. 3; para [0022]: “table top 118”) configured to support a patient positioned on the table;
a column coupled to the table (see annotated figure above);
a base coupled to the column (see annotated figure above);
a first arm support 16 (para [0021]: “base station 16”) coupled to the column and configured to move relative to the base; and
a first robotic arm 12 coupled to the first arm support 16, wherein the first robotic arm is configured to manipulate a medical instrument relative to the patient positioned on the table (para [0021]).
There is no art of record alone or in combination that teaches a system that includes the combination of recited limitation in claims 1, 10 and 14.
As to claim 1, prior art of record alone or in combination did not teach a system comprising: inter alia, a column coupled to the table; a base coupled to the column; an arm support coupled to the column, the arm support comprising a ring structure; a first robotic arm coupled to the arm support, the first robotic arm being configured to manipulate a first medical instrument relative to the patient positioned on the table.
As to claim 10, prior art of record alone or in combination did not teach a system comprising: inter alia, a column coupled to the table; a base coupled to the column; a ring structure coupled to the column below the table, the ring structure providing an arm support; and a robotic arm coupled to the ring structure and configured to manipulate a medical instrument relative to the patient.
As to claim 14, prior art of record alone or in combination did not teach a system comprising: inter alia, a column coupled to the table; a base coupled to the column; a ring positioned around the column; and a robotic arm mounted to the ring, the robotic arm configured to manipulate a medical instrument relative to the patient.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TUAN V NGUYEN whose telephone number is (571)272-5962. The examiner can normally be reached Monday - Friday 8:30 AM - 5:30 PM.
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/TUAN V NGUYEN/Primary Examiner, Art Unit 3771
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