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 .
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 § 112
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.
Claims 9-14 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. Claim 9 is rejected because it is unclear which graphical representation is being referred to in amended lines 13-14. Claims 16 and 19-20 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. Claims 16 and 19-20 are rejected because they recite “The robotic surgical system of Claim 14…”; however, Claim 14 is a method claim. For the purpose of advancing prosecution, Examiner will assume Claims 16 and 19-20 depend from Claim 15.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2020/0337789 to Meglan in view of U.S. Publication No. 2017/0172673 to Yu et al. “Yu” and U.S. Publication No. 2017/0239000 to Moctezuma de la Barrera et al. “Berrera”.
As for Claim 9, Meglan discloses a surgical robot system and method comprising rendering and displaying a static image of a current robot configuration/pose and a desired or recommended pose of the robot (Paragraphs [0092]-[0095] also Fig. 4B). Examiner notes that the recommended pose/configuration is different from the current position.
However, Meglan’s robot appears to have a single arm and not a plurality of robotic arms as claimed and Meglan’s graphical representation of the current pose is not different from a camera view.
Yu teaches from within a similar field of endeavor with respect to surgical robot systems and methods (Abstract) where the robot comprises a plurality of robotic arms mounted on a surgical table (Figs. 4A-B, 7A, 7E, 8C and 8D and corresponding descriptions; noting that the combination of structures 401A, 402A and 403A make up the surgical table in its broadest reasonable interpretation). Yu explains that Figs. 8C-F depict views of the robotic arms in a “stowed” configuration (Paragraphs [0043]-[0046]) where the arms are “rotated” in a particular manner for compact stowage (Paragraphs [0130]-[0131]). Examiner notes that robotic arms are stowed beneath the surgical table top.
Accordingly, one skilled in the art would have been motivated to have modified the robotic system described by Meglan to include a plurality of arms as described by Yu in order to perform other types of robotic procedures that require additional arms and to provide an efficient storage configuration for the arms when not in use. Such a modification merely involves a simple substitution of one known surgical robot system for another to yield predictable results and/or combining prior art techniques according to known methods to yield predicable results (MPEP 2143).
Regarding the negative limitation of the graphical representations being “different than a camera view”, Barrera teaches from within a similar field of endeavor with respect to providing instructions for arranging objects in preparation for a surgical procedure (Abstract) where a display is configured to generate a representation of a device’s current position and desired position and where the representation of the current position dynamically moves toward or away from the representation of the desired position as the user adjusts the position of the device (Paragraphs [0062]-[0063]). Examiner notes that both “representations” are considered to be different than a camera view in its broadest reasonable interpretation.
Accordingly, one skilled in the art would have been motivated to have modified Meglan and Yu’s display of the current positions of the robot arms with representations that dynamically change so as to align with a desired representation as described by Barrera in order to enhance the user’s ability to visualize both current and desired poses for surgical instruments and thus, improve positioning. Furthermore, such a modification merely involves combining prior art elements according to known techniques to yield predictable results (MPEP 2143).
As for Claim 10, the modified representations are in both solid and “hidden lines” (Barrera; Paragraph [0063]). Moreover, Meglan’s desired positions may be “ghosted” (Paragraph [0107]) which is considered to read on phantom lines in its broadest reasonable interpretation. One skilled in the art would have been motivated to use any combination of different representations in order to position the instruments accordingly.
Regarding Claim 11, Examiner notes that one skilled in the art would have been motivated to use the “stowed configuration” as either the current or desired pose in order to safely get the robotic system ready for use/clean up.
As for Claim 12, Meglan explains that the guidance information may also include auditory guidance (Paragraph [0075]).
Regarding Claim 13, Meglan discloses one embodiment where the display is a head-mounted display which can be positioned adjacent to the table in its broadest reasonable interpretation.
As for Claim 14, Examiner notes that the arrows depicted in Meglan’s Fig. 4B would represent general “touch points” to manipulate in order to achieve the desired pose in its broadest reasonable interpretation.
Claim(s) 15-17 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meglan in view of Yu.
As for Claim 15, Meglan discloses a surgical robot system and method comprising rendering and displaying a static image of a current robot configuration/pose and a desired or recommended pose of the robot (Paragraphs [0092]-[0095] also Fig. 4B). Examiner notes that the recommended pose/configuration is different from the current position.
However, Meglan’s robot appears to have a single arm and not a plurality of robotic arms as claimed.
Yu teaches from within a similar field of endeavor with respect to surgical robot systems and methods (Abstract) where the robot comprises a plurality of robotic arms mounted on a surgical table (Figs. 4A-B, 7A, 7E, 8C and 8D and corresponding descriptions; noting that the combination of structures 401A, 402A and 403A make up the surgical table in its broadest reasonable interpretation). Yu explains that Figs. 8C-F depict views of the robotic arms in a “stowed” configuration (Paragraphs [0043]-[0046]) where the arms are “rotated” in a particular manner for compact stowage (Paragraphs [0130]-[0131]). Examiner notes that robotic arms are stowed beneath the surgical table top.
Accordingly, one skilled in the art would have been motivated to have modified the robotic system described by Meglan to include a plurality of arms as described by Yu in order to perform other types of robotic procedures that require additional arms and thus, additional guidance. Such a modification merely involves a simple substitution of one known surgical robot system for another to yield predictable results and/or combining prior art techniques according to known methods to yield predicable results (MPEP 2143).
As for Claims 16-17, Meglan’s desired positions may be “ghosted” (Paragraph [0107]) which is considered to read on phantom lines in its broadest reasonable interpretation. One skilled in the art would have been motivated to use any combination of different representations in order to position the instruments accordingly.
As for Claim 19, Meglan explains that the guidance information may also include auditory guidance (Paragraph [0075]).
Regarding Claim 20, Meglan discloses one embodiment where the display is a head-mounted display which can be positioned adjacent to the table in its broadest reasonable interpretation.
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 1-17 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,251,185. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a robotic surgical system. Claim 1 of the presently pending application comprises a plurality of arms, a display device and processor configured to provide graphical representations of the arms based on a kinematic model of the arms and guidance information based on the kinematic model. This matches the claimed subject matter of patented Claim 1 in the ‘185 Application. However, patented claim 1 o of the ‘185 Application also includes limitations directed to displaying guidance on how to move the plurality of arms from a stowed position to a different position and wherein the stowed position is underneath a top of the surgical table. These limitations are claimed in dependent claims 3 and 11 of the presently pending application and thus, presently pending claim 1 represents an obvious broadening of the patented claim 1. Presently pending claim 2 matches the limitations of patented claim 2 with respect to a deployed position for the robotic arms. Presently pending Claim 3 matches the limitations of patented claim 1 as described above. Presently pending Claim 4 matches the limitations of patented claim 4 with respect to displaying the graphical representation of the robotic arms as a solid line and phantom line. Presently pending Claim 5 matches the limitations of patented Claim 5 with respect to providing user guidance on how to move the robotic arms to a different position. Both Claim 6’s recite audible guidance information. Presently pending Claim 7 matches the limitations of patented claim 7 with respect to the location of the display device (e.g. adjacent to the table). Both Claim 8’s recite the same subject matter with respect to displaying touchpoints. The method of presently pending Claim 9 matches the method of patented claim 11 regarding the rendering of a view that is different than a camera view. The remaining dependent claims of the method have a similar analysis to the dependent claims addressed above. Presently pending Claim 15 shares a scope with patented Claim 1 as described above. Presently pending Claim 15 is considered an obvious broadening of the patented claims and limitations missing from Patented Claim 17 are found in presently pending dependent claims 16 (display), claim 17 (graphical representation of current position). The remaining dependent claims of the method have a similar analysis to the dependent claims addressed above. Thus, the claims are not considered to be patentably distinct and minor wording or variation in sentence structure without changing the scope of the claims is considered to be obvious to a person skilled in the art.
Allowable Subject Matter
Claims 1-8 are considered to include allowable subject matter not taught by the art of record including processing steps to render on the display device, a graphical representation of a model module of the plurality of robotic arms in a current position, a kinematic model of the robotic arms input to the model module to render the graphical representation, wherein the graphical representation moves to reflect position of the plurality of robotic arms in real-time based on the kinematic model. Also, see parent Application 16/793886.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER L COOK whose telephone number is (571)270-7373. The examiner can normally be reached M-F approximately 8AM-5PM.
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/CHRISTOPHER L COOK/Primary Examiner, Art Unit 3797