CTNF 19/039,090 CTNF 81513 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Benefit The application claims benefit as a Divisional of 17/444,162, filed 30 July 2020, issued as US 12,239,402 (4 March 2025) which claims benefit to US Provisional 63/063186 (7 August 2020). Formal Matters Claims 1-20 are pending and under examination. Information Disclosure Statement The information disclosure statement (IDS) submitted on 7 April 2025 has been considered by the examiner. A signed copy is attached. 07-30-03-h AIA Claim Interpretation 07-30-05 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 Objections 07-29-01 AIA Claim 9 is objected to because of the following informalities: line 2 recites the phrase “are spaced from each other”. It is believed that the phrase should be “are spaced apart from each other” for grammar and clarity . Appropriate correction is required. Claim Rejections - 35 USC § 112(b) 07-30-02 AIA 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. 07-34-01 Claims 4 and 12-20 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. Regarding claim 4, line 4 recites that the light pipe is positioned “on” the second inner disk. However, claim 1, on which claim 4 depends, recites in line 8 that the light pipe is positioned “in” the roll disk. This inconsistency is unclear and confusing. Correction is required. Regarding claims 12-20, the phrase “rotatable disk” does not appear in the originally filed specification, claims, or benefit documents. The phrase “roll disk” appears in the specification at ¶7. The phrase “inner disk positioned within the roll disk” appears in the specification at ¶7. The phrase “second inner disk positioned within the first inner disk and configured to transfer the movement of an actuator. The light pipe may be positioned on the second inner disk” appears in the specification at ¶10. The specification discloses a “nested disk sterile adapter” at ¶24 at FIGs 6A-C with an embodiment of “another nested disk sterile adapter”. “Nested disk sterile adapters” are disclosed at ¶62 such that they are identified as “nested disk sterile adapter 270”, “roll disk 272”, “inner disk 274”, “output disks of the motors 228”, “disks 229 on the medical instrument 210” in association with FIGs 6B-D (¶62). “Concentric disks 292, 294, 296” are taught at ¶64. A separate embodiment of “roll disk 370” is disclosed at ¶66. However, there is no disclosure of “rotatable disk” in the originally filed disclosure such that it would be clear which of these other synonym names for disk structures would be considered a “rotatable disk”. Accordingly, the phrase “rotatable disk” is unclear and confusing, given the number of disk and disk-like structures that are otherwise disclosed in the specification. The phrase “rotatable disk” appears in claims 12, 13, 16, 17, 20 and are rejected for the reasons set forth herein. Claims 14, 15, 18, 19 are rejected as depending from rejected claims. The examiner recognizes that mere rephrasing of a passage does not constitute new matter (MPEP 2163.07 and 608.01(o)). The examiner has given Applicant consideration for being their own lexicographer in the newly added claims. However, there must still be originally filed support even if alternative comparable language (synonyms) are used. Applicant is referred to Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (2008). A five member expanded panel of the Board held that "if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 USC 112, second paragraph, as indefinite." Applicant is also referred to Nautilus Inc., v. Biosig Instruments, Inc. , 572 U.S. 898, 908-909 (2014) in which the Court held that a claim is indefinite if the specification and prosecution history fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. The Court also held that a patent must be precise enough to afford clear notice of what is claimed thereby "appris[ing] the public of what is still open to them (citing Markman v. Westview Instruments, Inc ., 517 U.S. 370, 373 (1996)), in a manner that avoids "[a] zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims," (citing United Carbon Co., v. Binney & Smith Co., 317 U.S. 228, 236 (1942)) ( Nautilus 909). Allowable Subject Matter Claims 1-3, 5-8, 10, and 11 are allowable. The closest prior art is Cooper et al., US 20110282351 (17 November 2011). Regarding independent claim 1 , Cooper teaches a sterile adapter ( FIGs 13A-B, sterile adapter 1250, ¶150 ) for providing a sterile interface between an instrument ( FIGs 17A-c and 18A-B, surgical instrument 1460, ¶160 ) and an instrument holder ( instrument manipulator 1300, ¶157 ), the sterile adapter ( 1250 ) comprising: a fixed frame ( FIG 13A , ¶ 149 ) couplable to an instrument holder ( FIG 13A , ¶ 149 ); a roll disk positioned within the frame and rotatable with respect to the frame ( FIG 13 B, roll disk 1257a, ¶151 ); an inner disk positioned within the roll disk and rotatable with respect to the roll disk ( FIG 13B, retaining plate 1254f, ¶151 ). However, Cooper does not expressly teach a light pipe positioned in the roll disk and configured to transmit light energy through the roll disk. Cooper teaches interfaces in the instrument manipulator ( 1300 ) for controlling wrist, roll, grip, and translational motions (¶ 150 ), but does not teach a tube or pipe or shaft positioned in the roll disk or that the tube/pipe/shaft is configured to transmit light energy through the roll disk. Additionally, Holop et al., US 20190298471 (3 October 2019) a surgical apparatus including a sterile adapter having mechanical lockouts and teaches main tube 1167 that has cables, wires, and hypotubes running through it (¶201), but does not teach that the tube is positioned in the roll disk or that the tube is configured to transmit light energy through the roll disk. Conclusion Claims 1-3, 5-8, 10, and 11 are allowable. Claim 9 is objected to. Claims 4 and 12-20 are rejected. 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Waterbury et al., US 12,239,402 (4 March 2025) teaches a rotatable carriage for an instrument holder. Gomez et al., US 20110282358 (17 November 2011) teaches surgical system instrument mounting. Schlegel US 20170072561 (16 March 2017) teaches manipulating system and manipulating apparatus for surgical instruments. Holop 9,096,033 (4 August 2015) teaches a surgical system instrument sterile adapter. Waterbury et al., US 12,004,832 (11 June 2024) teaches a rotatable carriage for an instrument holder. Rohr et al., 11,969,227 (30 April 2024) teaches systems and methods for positioning medical instruments. Pacheco et al., US 20150090057 (2 April 2015) teaches an apparatus comprising a carriage having a lateral opening configured to receive an instrument, the carriage having a positioning member (teeth) coupled to an output drive for changing the angular position of the carriage. Schena et al., US 20080064931 (13 March 2008) teaches minimally invasive surgical illumination. Bailey et al., WO 2018145100 (9 August 2018) teaches an instrument carriage comprising multiple operational cables and fiber optic cables. Cooper et al., US 20110282351 (17 November 2011) teaches surgical system entry guide. Cooper et al., US 20160184033 (30 June 2016) teaches robotic instrument driven element. Holop et al., US 20160184034 (30 June 2016) teaches instrument sterile adapter drive interface. Cooper et al., US 20160184035 (30 June 2016) teaches actuator interface to instrument sterile adapter. Soloman et al., US 20160184036 (30 June 2016) teaches variable instrument preload mechanism controller. Cooper et al., US 20160184037 (30 June 2016) teaches preloaded surgical instrument interface. Cooper et al., US 20160199138 (14 July 2016) teaches instrument sterile adapter drive features. Waterbury et al., US 20220039890 (10 February 2022) teaches rotatable carriage for an instrument holder. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHERIE M POLAND whose telephone number is (703)756-1341. The examiner can normally be reached M-W (9am-9pm CST) and R-F (9am-3pm CST). 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, Jackie Ho can be reached at 571-272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /CHERIE M POLAND/Examiner, Art Unit 3771 Application/Control Number: 19/039,090 Page 2 Art Unit: 3771 Application/Control Number: 19/039,090 Page 3 Art Unit: 3771 Application/Control Number: 19/039,090 Page 4 Art Unit: 3771 Application/Control Number: 19/039,090 Page 5 Art Unit: 3771 Application/Control Number: 19/039,090 Page 6 Art Unit: 3771 Application/Control Number: 19/039,090 Page 7 Art Unit: 3771
Prosecution Insights