NON-FINAL REJECTION
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 .
Preliminary Amendment
The preliminary amendment dated 5/12/2025 has been entered and considered for this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended by way of the amendment dated 5/12/2025 to delete or broaden various limitations thereby broadening the claim (i.e., making the claim more generic).
MPEP 2163.05 recites in part:
I. BROADENING CLAIM
A. Omission of a Limitation
Under certain circumstances, omission of a limitation can raise an issue regarding whether the inventor had possession of a broader, more generic invention. See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 45 USPQ2d 1498 (Fed. Cir. 1998) (claims to a sectional sofa comprising, inter alia, a console and a control means were held invalid for failing to satisfy the written description requirement where the claims were broadened by removing the location of the control means.); Johnson Worldwide Assoc. v. Zebco Corp., 175 F.3d 985, 993, 50 USPQ2d 1607, 1613 (Fed. Cir. 1999) (In Gentry Gallery, the "court’s determination that the patent disclosure did not support a broad meaning for the disputed claim terms was premised on clear statements in the written description that described the location of a claim element--the ‘control means’--as ‘the only possible location’ and that variations were ‘outside the stated purpose of the invention.’ Gentry Gallery, 134 F.3d at 1479, 45 USPQ2d at 1503. Gentry Gallery, then, considers the situation where the patent’s disclosure makes crystal clear that a particular (i.e., narrow) understanding of a claim term is an ‘essential element of [the inventor’s] invention.’"); Tronzo v. Biomet, 156 F.3d at 1158-59, 47 USPQ2d at 1833 (Fed. Cir. 1998) (claims to generic cup shape were not entitled to filing date of parent application which disclosed "conical cup" in view of the disclosure of the parent application stating the advantages and importance of the conical shape.); In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984) (reissue claim omitting "in synchronism" limitation with respect to scanning means and indexing means was not supported by the original patent’s disclosure in such a way as to indicate possession, as of the original filing date, of that generic invention.).
A claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the written description requirement. See Gentry Gallery, 134 F.3d at 1480, 45 USPQ2d at 1503; In re Sus, 306 F.2d 494, 504, 134 USPQ 301, 309 (CCPA 1962) ("[O]ne skilled in this art would not be taught by the written description of the invention in the specification that any ‘aryl or substituted aryl radical’ would be suitable for the purposes of the invention but rather that only certain aryl radicals and certain specifically substituted aryl radicals [i.e., aryl azides] would be suitable for such purposes.") (emphasis in original). Compare In re Peters, 723 F.2d 891, 221 USPQ 952 (Fed. Cir. 1983) (In a reissue application, a claim to a display device was broadened by removing the limitations directed to the specific tapered shape of the tips without violating the written description requirement. The shape limitation was considered to be unnecessary since the specification, as filed, did not describe the tapered shape as essential or critical to the operation or patentability of the claim.). A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may also be subject to rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as not enabling, or under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976); In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976); and In re Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968). See also MPEP § 2172.01.
B. Addition of Generic Claim
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species. A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014) (Claims directed to a functionally defined genus of antibodies were not supported by a disclosure that "only describe[d] one type of structurally similar antibodies" that "are not representative of the full variety or scope of the genus."). The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure "indicates that the patentee has invented species sufficient to constitute the gen[us]." See Enzo Biochem, 323 F.3d at 966, 63 USPQ2d at 1615. "A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when … the evidence indicates ordinary artisans could not predict the operability in the invention of any species other than the one disclosed." In re Curtis, 354 F.3d 1347, 1358, 69 USPQ2d 1274, 1282 (Fed. Cir. 2004) (Claims directed to PTFE dental floss with a friction-enhancing coating were not supported by a disclosure of a microcrystalline wax coating where there was no evidence in the disclosure or anywhere else in the record showing applicant conveyed that any other coating was suitable for a PTFE dental floss.) On the other hand, there may be situations where one species adequately supports a genus. See, e.g., In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326-27 (CCPA 1981) (disclosure of a single method of adheringly applying one layer to another was sufficient to support a generic claim to "adheringly applying" because one skilled in the art reading the specification would understand that it is unimportant how the layers are adhered, so long as they are adhered); In re Herschler, 591 F.2d 693, 697, 200 USPQ 711, 714 (CCPA 1979) (disclosure of corticosteriod in DMSO sufficient to support claims drawn to a method of using a mixture of a "physiologically active steroid" and DMSO because "use of known chemical compounds in a manner auxiliary to the invention must have a corresponding written description only so specific as to lead one having ordinary skill in the art to that class of compounds. Occasionally, a functional recitation of those known compounds in the specification may be sufficient as that description."); In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 285 (CCPA 1973) (the phrase "air or other gas which is inert to the liquid" was sufficient to support a claim to "inert fluid media" because the description of the properties and functions of the air or other gas segmentizing medium would suggest to a person skilled in the art that appellant’s invention includes the use of "inert fluid" broadly.). However, in Tronzo v. Biomet, 156 F.3d 1154, 1159, 47 USPQ2d 1829, 1833 (Fed. Cir. 1998), the disclosure of a species in the parent application did not suffice to provide written description support for the genus in the child application where the specification taught against other species. See also In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989) (generic and subgeneric claims in the U.S. application were not entitled to the benefit of foreign priority where the foreign application disclosed only two of the species encompassed by the broad generic claim and the subgeneric Markush claim that encompassed 21 compounds).
Further, MPEP 2163 recites in part:
ii) For each claim drawn to a genus:
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A) above), reduction to drawings (see i)(B) above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus (see i)(C) above). See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. See Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021) ( "[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. Ariad, 598 F.3d at 1353–54 ('[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.' (internal quotation marks omitted).").
A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014) (Claims directed to a functionally defined genus of antibodies were not supported by a disclosure that "only describe[d] one type of structurally similar antibodies" that "are not representative of the full variety or scope of the genus."). The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure "indicates that the patentee has invented species sufficient to constitute the gen[us]." See Enzo Biochem, 323 F.3d at 966, 63 USPQ2d at 1615; Noelle v. Lederman, 355 F.3d 1343, 1350, 69 USPQ2d 1508, 1514 (Fed. Cir. 2004) (Fed. Cir. 2004) ("[A] patentee of a biotechnological invention cannot necessarily claim a genus after only describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated."). "A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when … the evidence indicates ordinary artisans could not predict the operability in the invention of any species other than the one disclosed." In re Curtis, 354 F.3d 1347, 1358, 69 USPQ2d 1274, 1282 (Fed. Cir. 2004) (Claims directed to PTFE dental floss with a friction-enhancing coating were not supported by a disclosure of a microcrystalline wax coating where there was no evidence in the disclosure or anywhere else in the record showing applicant conveyed that any other coating was suitable for a PTFE dental floss.) On the other hand, there may be situations where one species adequately supports a genus. See, e.g., Rasmussen, 650 F.2d at 1214, 211 USPQ at 326-27 (disclosure of a single method of adheringly applying one layer to another was sufficient to support a generic claim to "adheringly applying" because one skilled in the art reading the specification would understand that it is unimportant how the layers are adhered, so long as they are adhered); In re Herschler, 591 F.2d 693, 697, 200 USPQ 711, 714 (CCPA 1979) (disclosure of corticosteroid in DMSO sufficient to support claims drawn to a method of using a mixture of a "physiologically active steroid" and DMSO because "use of known chemical compounds in a manner auxiliary to the invention must have a corresponding written description only so specific as to lead one having ordinary skill in the art to that class of compounds. Occasionally, a functional recitation of those known compounds in the specification may be sufficient as that description."); In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 285 (CCPA 1973) (the phrase "air or other gas which is inert to the liquid" was sufficient to support a claim to "inert fluid media" because the description of the properties and functions of the air or other gas segmentizing medium would suggest to a person skilled in the art that appellant’s invention includes the use of "inert fluid" broadly.). See Juno, 10 F.4th 1337, 2021 USPQ2d 893 (Fed. Cir. 2021) (where the claims are directed to species that bind to various selected targets, it is not fatal that all species are not disclosed as long as the patent provides other means of identifying which species would possess the claimed common structural characteristics or shared traits).
The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 "merely by clearly describing one embodiment of the thing claimed." LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed. In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. Id.; see also Tronzo v. Biomet, 156 F.3d at 1159, 47 USPQ2d at 1833 (Fed. Cir. 1998)(holding that the disclosure of a species in a parent application did not provide adequate written description support for claims to a genus in a child application where the specification taught against other species).
Satisfactory disclosure of a "representative number" depends on whether one of skill in the art would recognize that the inventor was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. See, e.g., Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. Instead, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are "representative of the full variety or scope of the genus," or by the establishment of "a reasonable structure-function correlation." Such correlations may be established "by the inventor as described in the specification," or they may be "known in the art at the time of the filing date." See AbbVie, 759 F.3d at 1300-01, 111 USPQ2d 1780, 1790-91 (Fed. Cir. 2014) (Holding that claims to all human antibodies that bind IL-12 with a particular binding affinity rate constant (i.e., koff) were not adequately supported by a specification describing only a single type of human antibody having the claimed features because the disclosed antibody was not representative of other types of antibodies in the claimed genus, as demonstrated by the fact that other disclosed antibodies had different types of heavy and light chains, and shared only a 50% sequence similarity in their variable regions with the disclosed antibodies.). Description of a representative number of species does not require the description to be of such specificity that it would provide individual support for each species that the genus embraces. For example, in the molecular biology arts, if an applicant disclosed an amino acid sequence, it would be unnecessary to provide an explicit disclosure of nucleic acid sequences that encoded the amino acid sequence. Since the genetic code is widely known, a disclosure of an amino acid sequence would provide sufficient information such that one would accept that an inventor was in possession of the full genus of nucleic acids encoding a given amino acid sequence, but not necessarily any particular species. Cf. In re Bell, 991 F.2d 781, 785, 26 USPQ2d 1529, 1532 (Fed. Cir. 1993) and In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994). If a representative number of adequately described species are not disclosed for a genus, the claim to that genus must be rejected as lacking adequate written description under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
As discussed above, broadening of a claim (e.g., deleting claim limitations) can result in a rejection under §112(a). For example, claiming a genus when the disclosure only supports a few species can result in a rejection under §112(a) if the number of species disclosed in the application is not a “representative number” of species reflective of the full variation within the genus.
In this case, claim 1 has been amended (broadened) as follows:
The obtained depth data no longer requires to be obtained specifically from a depth sensor included in an imaging device (i.e., the depth data can be obtained from any arbitrary source and still read on the claim).
The obtained force sensing data no longer requires to be obtained specifically from a force sensor integrated into a surgical instrument controlled by a computer-assisted surgical system (i.e., the force data can be obtained from any arbitrary source and still read on the claim).
The force data no longer requires to be representative of an amount of external force applied to specifically the surgical instrument (i.e., the force data can be representative of an amount of external force applied to any arbitrary component of the computer-assisted surgical system).
The operation (which is associated with the computer-assisted surgical system) no longer requires to be configured to perform a procedure within the internal space of the patient (i.e., the operation can be any arbitrary operation associated with the computer-assisted surgical system).
In this sense, claim 1 as currently amended can be considered a broader or more generic version (genus) of claim 1 as originally filed (species). However, the Specification and drawings as originally filed do not provide adequate written description support for this broadening of the claim.
The only source for obtaining the depth data ever contemplated in the Specification appears to be a depth sensor (e.g., a time-of-flight sensor or a visible light imaging sensor) included in an imaging device. The Specification does not disclose any other source and therefore does not disclose a representative number of species sufficient to show possession of the broad genus because a single example (in this case, a depth sensor included in an imaging device) does not reflect the full variation within the genus of all sources of depth data.
The only source for obtaining the force data ever contemplated in the Specification appears to be a force sensor integrated into a surgical instrument controlled by the computer-assisted surgical system. The Specification does not disclose any other source and therefore does not disclose a representative number of species sufficient to show possession of the broad genus because a single example (in this case, a force sensor integrated into a surgical instrument controlled by the computer-assisted surgical system) does not reflect the full variation within the genus of all sources of force data.
As discussed above, the force data is representative of an amount of external force, but the only external force contemplated is the Specification is external force applied to the surgical instrument. The Specification does not disclose an external force applied to any other arbitrary component of the computer-assisted surgical system and therefore does not disclose a representative number of species sufficient to show possession of the broad genus because a single example (in this case, external force applied to the surgical instrument) does not reflect the full variation within the genus of external force applied to any arbitrary component of the computer-assisted surgical system.
The only operations associated with the computer-assisted surgical system that are based on both the depth data and the force sensing data that are disclosed in the Specification are (1) an operation configured to perform a procedure within the internal space of the patient (e.g., controlling a movement of a surgical instrument connected to computer-assisted surgical system 204 in a manner that prevents harm from being afflicted on the patient, ¶ [0086]-[0092]) and (2) tissue deformation analysis to determine or classify a mass as particular type of tissue (¶ [0093]-[0099]). Other than the operation configured to perform a procedure within the internal space of the patient (the former operation), the Specification only ever discloses a single embodiment of an operation associated with the computer-assisted surgical system (the latter operation). The Specification does not appear to disclose any other operations and therefore does not disclose a representative number of species sufficient to show possession of the broad genus because aforementioned example(s) does/do not reflect the full variation within the genus of any and all operations associated with a computer-assisted surgical system (including operations that are and aren’t configured to perform a procedure within the internal space of the patient).
In order to overcome this rejection of claim 1, the examiner recommends reverting the changes made to claim 1 by the amendment dated 5/12/2025.
Claims 12 and 20: Other than being different statutory categories (e.g., system claim vs. method claim vs. non-transitory CRM claim), the subject matter of claims 12 and 20 appear to essentially be the same as that of claim 1. Therefore claims 12 and 20 are rejected for the same reasons (i.e., they similarly are drawn to a genus that lacks written description support in the Specification).
Dependent claims (i.e., claims 2-11 and 13-19) are rejected for the same reasons because they do not cure the aforementioned deficiencies:
Regarding claim 2-6 and 13-17: Although these claims recite that the depth data is obtained from a depth sensor (e.g., time-of-flight sensor or imaging sensor), they do not recite that the component is a surgical instrument and do not recite that the force data is obtained from a force sensor integrated into the surgical instrument.
Regarding claims 7-10, 18, and 19: Although the claims recite that the component comprises a surgical instrument, the claims do not recite that the depth data is obtained from a depth sensor included in an imaging device and do not recite that the force data is obtained from a force sensor integrated into the surgical instrument.
Regarding claim 11: Although the claim recites that the force data is obtained from a force sensor integrated in the component, the claim does not recite that the component is a surgical instrument and does not recite that the depth data is obtained from a depth sensor included in an imaging device.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, 8-10, 12-17, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Panescu et al., US 2017/0181808 A1 (hereinafter “Panescu”).
Regarding claim 1: Panescu discloses a system (e.g., see Fig. 5) comprising:
a memory storing instructions (memory is implied from computer implementation including computer program code, ¶ [0056] and [0121]); and
a processor (e.g., computer 151, ¶ [0056] and [0121]) communicatively coupled to the memory and configured to execute the instructions to:
obtain depth data representative of a depth map for an internal space of a patient (Q3D, ¶ [0056], [0060], [0134], [0144]);
obtain force sensing data representative of an amount of external force applied to a component of a computer-assisted surgical system configured to perform a procedure within the internal space of the patient (force sensor, ¶ [0138]); and
perform, based on the depth data and the force sensing data, an operation associated with the computer-assisted surgical system (e.g., calculating a stiffness matrix, ¶ [0138]; or haptic feedback, ¶ [0134]).
Regarding claim 2: Panescu further discloses that the obtaining of the depth data representative of the depth map comprises: directing a time-of-flight sensor included in an imaging device to acquire the depth data; and receiving the depth data from the time-of-flight sensor (¶ [0154]).
Regarding claim 3: Panescu further discloses that the imaging device further comprises a visible light camera configured to acquire a two-dimensional visible light image of the internal space (¶ [0060]).
Regarding claim 4: Panescu further discloses that the processor is further configured to execute the instructions to receive user input data indicating a selection by a user of a first two-dimensional endpoint within an image of the internal space, the first two-dimensional endpoint corresponding to a first feature within the internal space as depicted by the image; and the performing of the operation associated with the computer-assisted surgical system comprises: defining, based on the depth data and on the user input data, a first three-dimensional endpoint corresponding to the first feature; and determining, based on the depth data, a distance from the first three-dimensional endpoint corresponding to the first feature to a second three-dimensional endpoint corresponding to a second feature within the internal space (¶ [0134] and [0157]).
Regarding claim 5: Panescu further discloses that the processor is further configured to execute the instructions to receive additional user input data indicating a selection of a second two-dimensional endpoint within the image, the second two-dimensional endpoint corresponding to the second feature; and the performing of the operation associated with the computer-assisted surgical system further comprises defining, based on the depth data and the additional user input data, the second three-dimensional endpoint corresponding to the second feature (¶ [0121]).
Regarding claim 6: Panescu further discloses that the obtaining of the depth data representative of the depth map comprises: directing a first visible light camera in an imaging device to acquire a first image of the internal space, directing a second visible light camera in the imaging device to acquire a second image of the internal space, and generating, based on the first and second images, the depth map (implied by stereo image capture device, ¶ [0059]-[0060]).
Regarding claim 8: Panescu further discloses the component comprises a surgical instrument controlled by the computer-assisted surgical system; the obtaining of the depth data comprises obtaining a first depth dataset while a surgical instrument controlled by the computer-assisted surgical system is not in contact with tissue in the internal space of the patient and a second depth dataset while the surgical instrument is in contact with the tissue (¶ [0134]; implied in the sense that determining displacement u inevitably requires measuring the Q3D model before the instrument contacts the surface and after the instrument has contacted the surface and displaces the tissue); and the performing of the operation associated with the computer-assisted surgical system comprises: determining, based on the force sensing data, that the surgical instrument is in contact with the tissue (¶ [0134] and [0138]), and determining, in response to the determining that the surgical instrument is in contact with the tissue and based on the first and second depth datasets, an amount of deformation of the tissue that is caused by the surgical instrument being in contact with the tissue (¶ [0134]).
Regarding claim 9: Panescu further discloses the processor is further configured to execute the instructions to determine a characteristic of the tissue based on the amount of deformation (e.g., stiffness, ¶ [0138]).
Regarding claim 10: Panescu further discloses that the component comprises a surgical instrument controlled by the computer-assisted surgical system; and the force is applied to the surgical instrument by an object not being controlled by the computer-assisted surgical system (¶ [0142]).
Regarding claim 11: Panescu further discloses that the obtaining the force sensing data comprises obtaining the force sensing data from a force sensor integrated into the component (¶ [0138]).
Regarding claim 12: See MPEP 2112.02, Process Claims, I. PROCESS CLAIMS — PRIOR ART DEVICE ANTICIPATES A CLAIMED PROCESS IF THE DEVICE CARRIES OUT THE PROCESS DURING NORMAL OPERATION.
The method tracks the functionalities of the system of claim 1. The prior art device (the system of Panescu as discussed above regarding claim 1) would carry out the method of claim 12 during normal operation thereof. Therefore, the method is anticipated by Panescu for the same reasons discussed above.
Regarding claim 13: See above regarding claims 12 and 2.
Regarding claim 14: See above regarding claims 12 and 3.
Regarding claim 15: See above regarding claims 12 and 4.
Regarding claim 16: See above regarding claims 12 and 5.
Regarding claim 17: See above regarding claims 12 and 6.
Regarding claim 19: See above regarding claims 12 and 8.
Regarding claim 20: See above regarding claims 1 and 12. A non-transitory computer readable medium as claimed is implied from computer implementation (¶ [0056] and [0121]).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 and 20 of U.S. Patent No. 12,262,868 (hereinafter “Reference Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the Reference Patent anticipate the claims of the instant application. The correspondence of claims (i.e., which claim of the reference patent anticipates which claim of the instant application) is as follows:
Instant Application (US 19/064,458)
Reference Patent (US 12,262,868 B2)
Claim 1
Claim 1
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7
Claim 7
Claim 8
Claim 8
Claim 9
Claim 9
Claim 10
Claim 10
Claim 11
Claim 1
Claim 12
Claim 11
Claim 13
Claim 12
Claim 14
Claim 13
Claim 15
Claim 14
Claim 16
Claim 15
Claim 17
Claim 16
Claim 18
Claim 17
Claim 19
Claim 18
Claim 20
Claim 20
Examiner Remarks
Claims 7 and 18 are not obvious over the prior art of record. More specifically, the prior art of record, within the context of claims 1 and 12, does not teach or reasonably suggest that the component comprises a surgical instrument controlled by the computer-assisted surgical system; and the performing of the operation associated with the computer-assisted surgical system comprises: determining, based on the depth data and on the force sensing data, that the surgical instrument begins moving towards a structure located in the internal space in response to the external force applied to the surgical instrument; and instructing, in response to the determining that the surgical instrument begins moving towards the structure, the computer-assisted surgical system to stop the movement of the surgical instrument towards the structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLIN T. SAKAMOTO whose telephone number is (571)272-4958. The examiner can normally be reached Monday - Friday, ~9AM-5PM Pacific.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH M. RAYMOND can be reached at (571) 270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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COLIN T. SAKAMOTO
Primary Examiner
Art Unit 3798
/COLIN T. SAKAMOTO/Primary Examiner, Art Unit 3798
January 23, 2026