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 . This action is in response to the set of claims received on January 28, 2025. Claims 1-12 are currently pending.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1, line 8, “a proximal end” should read --the proximal end--. Appropriate correction is required.
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, 3, 4, and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-23 of U.S. Patent No.12,239,392. Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to the same invention.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance: Chabanas (WO 2018/103945) discloses a robotic device (100) comprising a tool (2) with an actuation unit (4). A first connector (24) rigidly secured to a planar mechanism. However, Chabanas fails to disclose a tracker that has a first portion for attaching to a proximal connector and a second portion for attaching toollessly to one of the pair of symmetrical distal connectors, such that tracker, when attached, is disposed on one side of the body and is attached to the body by two points of connection.
Ebbitt et al. (US Publication 2019/0231447) discloses a surgical system(30) comprises an end effector (40) that facilitate rotation of the tool (42), the end effector has a coupling (230) or first connector capable of rigidly secure the body to a planar mechanism [0190]. However, Ebbitt et al. fails to disclose fails to disclose a tracker that has a first portion for attaching to a proximal connector and a second portion for attaching toollessly to one of the pair of symmetrical distal connectors, such that tracker, when attached, is disposed on one side of the body and is attached to the body by two points of connection.
None of the prior art discloses fails to disclose a tracker that has a first portion for attaching to a proximal connector and a second portion for attaching toollessly to one of the pair of symmetrical distal connectors, such that tracker, when attached, is disposed on one side of the body and is attached to the body by two points of connection.
These features, in combination with the other required limitations of the claim, is not shown in the prior art nor would it be obvious to one with ordinary skill in the art to combine or modify the prior art references in a manner that would read on the claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANA S JONES whose telephone number is (571)270-5963. The examiner can normally be reached Monday to Friday (8am to 4pm EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Diana Jones/Examiner, Art Unit 3775
/KEVIN T TRUONG/Supervisory Patent Examiner, Art Unit 3775
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