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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
Motor pack 1510 (see PP [00187-00195], [00197], [00201-00208], [00210], [00212], etc.)
The Examiner believes that Figs. 9-11 show the motor pack, but the reference number 1510 is not shown in these drawings
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
“a manipulation portion” in claim 1, which is being interpreted in view of the Specification which states:
“the manipulation portion 1200 may be a component to allow the user to input signals to control the operation of the end tool 1100. In other words, the manipulation portion 1200 may also be considered as a component that receives signals for controlling the operation of the end tool 1100 from the user” (PP [00100])
“an interface that may be directly manipulated by a doctor, e.g., a forceps-like shape, a stick-like shape, a lever-like shape, etc.” (PP [00100])
“FIG. 1 shows that the manipulation portion 1200 may be formed in the shape of a gun” (PP [00100])
“the manipulation portion 1200 may be a separate part or a separate module that is separated from a driving module of the surgical instrument” (PP [00101])
“the manipulation portion 1200 may be replaced by a surgical robot” (PP [00101])
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 6, 13, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zemlok et al. (US PGPub 2020/0031403 A1).
With respect to claim 1, Zemlok et al. discloses a surgical instrument (see Fig. 1) comprising:
an end tool (202 in Fig. 2) comprising a first jaw and a second jaw (202a-b), each rotatably formed and each configured to rotate in at least one direction (PP [0055]: "a closing and opening of jaw members 202a, 202b of the end effector 202");
a manipulation portion (see input devices 7 and 8 in Fig. 1, and 110 in Fig. 2) configured to receive a signal input by a user to control an operation of the end tool (202, PP [0051]: “The control device 4 (e.g., a computer) is set up to activate the drives, for example, by means of a computer program, in such a way that the robotic arms 2, 3, the attached robotic surgical assembly 100, and thus an electromechanical surgical instrument 200 execute a desired movement according to a movement defined by means of the manual input devices 7, 8”); and
a power generation portion (310 in Fig. 6) disposed to be at least partially accommodated in a housing of the manipulation portion (PP [0062]: "the drive assembly 310 includes a cup-shaped annular member 382 rotatably disposed within the channel 318 of the housing 306") and comprising a motor pack (50 in Fig. 3) having at least one motor configured to generate power to drive the end tool based on a signal input to the manipulation portion, and a roll drive motor configured to generate driving force to roll-rotate the motor pack (PP [0055]: “The motor assembly or motor pack 50 of the instrument drive unit 110 is rotated by a motor “M” supported in the carriage 300 and transfers its rotational motion to the electromechanical surgical instrument 200”).
Regarding claim 2, Zemlok et al. further discloses wherein the motor pack (50 in Fig. 3) is configured to rotate independently of a movement of the housing (PP [0055]: “The motor assembly or motor pack 50 of the instrument drive unit 110 is rotated by a motor “M” supported in the carriage 300 and transfers its rotational motion to the electromechanical surgical instrument 200”, PP [0007]: “a motor pack rotatably supported in the housing”).
Regarding claim 6, Zemlok et al. further discloses wherein the end tool (202 in Fig. 2) is connected to the motor pack (50 in Fig. 3) and is configured to roll-rotate together with the motor pack (PP [0055]: “The motor assembly or motor pack 50 of the instrument drive unit 110 is rotated by a motor “M” supported in the carriage 300 and transfers its rotational motion to the electromechanical surgical instrument 200”).
Regarding claim 13, Zemlok et al. further discloses wherein the motor pack (50 in Fig. 3) further comprises:
a yaw drive motor (see 52, 54, 56, and 58 in Fig. 3) configured to generate power to yaw-rotate the end tool (PP [0053]: “The motors 52, 54, 56 and 58 of the motor pack 50 drive various operations of an end effector 202 of the electromechanical surgical instrument 200”, the motors are configured to yaw-rotate); and
a pitch drive motor (see 52, 54, 56, and 58 in Fig. 3) configured to generate power to pitch-rotate the end tool (PP [0053]: “The motors 52, 54, 56 and 58 of the motor pack 50 drive various operations of an end effector 202 of the electromechanical surgical instrument 200”, the motors are configured to pitch-rotate).
Regarding claim 15, Zemlok et al. further discloses wherein the end tool (202 in Fig. 2) further comprises a moving member configured to move along a lengthwise direction of the end tool (PP [0055]: “The instrument drive unit 110 transfers power and actuation forces from its motors 52, 54, 56, 58 to driven members (not shown) of the electromechanical surgical instrument 200 to ultimately drive movement of components of the end effector 202 of the electromechanical surgical instrument 200, for example, a movement of a knife blade (not shown)”, emphasis added), and
wherein the motor pack further comprises a firing drive motor configured to generate power to linearly move the moving member (see PP [0055] as cited above, the motors 52, 54, 56, and 58 move the knife blade/moving member).
Regarding claim 18, Zemlok et al. further discloses a circuit unit (307 in Fig. 5) disposed on one side of the motor pack (50 in Fig. 3) and configured to control driving of the motor pack (PP [0057]: “the carriage 300 may include a printed circuit board 307 in electrical communication with the motor “M” to control an operation of the motor “M” of the carriage 300”).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Zemlok et al. (US PGPub 2023/0031403 A1) as applied to claim 1 above, and further in view of Reschke (US Patent No. 8,814,865).
Regarding claim 7, Zemlok et al. further discloses a power transmission portion transmitting power generated by the power generation portion to the end tool (PP [0055]: “The instrument drive unit 110 transfers power and actuation forces from its motors 52, 54, 56, 58 to driven members (not shown) of the electromechanical surgical instrument 200 to ultimately drive movement of components of the end effector 202 of the electromechanical surgical instrument 200, for example, a movement of a knife blade (not shown) and/or a closing and opening of jaw members 202a, 202b of the end effector 202, the actuation or firing of a stapler, and/or the activation or firing of an electrosurgical energy-based instrument, or the like”, emphasis added).
However, Zemlok et al. is silent on the power transmission comprising at least one wire.
In the same field of surgical end effectors comprising jaws (abstract, see 10 in Fig. 1 with end effector 300 comprising jaws 310 and 320), Reschke teaches a device comprising a power transmission system (see generator 206 and cable 204) comprising at least one wire (col. 6, lines 33-37: “The wires 207, 208 and 209 may be disposed within shaft 112b and connect to various electrical connectors (not shown) disposed within the proximal end of the jaw member 310, which ultimately connect to the electrically conductive sealing plates 312 and 322 and cutting plates 316 and 330”).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have modified the Zemlok et al. device according to the teachings of Reschke and included at least one wire within the power transmission system. One of ordinary skill in the art would have been motivated to perform this modification as it is a simple combination of elements that would have yielded the predictable result of providing wires for transmitting power to the end effector, which is already contemplated by Zemlok et al. (see PP [0055]). The main operating principle of the Zemlok et al. device would not change when modified to include the wires as taught by Reschke, as they would simply enable the energization of the end effector as disclosed by the Zemlok et al. reference.
Regarding claim 8, Zemlok et al. as modified by Reschke further discloses wherein the power transmission portion (see PP [0055]) is connected to the motor pack (50 in Fig. 3) and is configured to roll-rotate together with the motor pack (PP [0055]: “The instrument drive unit 110 transfers power and actuation forces from its motors 52, 54, 56, 58 to driven members (not shown) of the electromechanical surgical instrument 200 to ultimately drive movement of components of the end effector 202 of the electromechanical surgical instrument 200, for example, a movement of a knife blade (not shown) and/or a closing and opening of jaw members 202a, 202b of the end effector 202, the actuation or firing of a stapler, and/or the activation or firing of an electrosurgical energy-based instrument, or the like”, emphasis added, the power is transferred from the motors which are part of the motor pack, the transmission portion includes motors 52, 54, 56, and 58 which rotate with the motor pack 50 as a whole).
Regarding claim 9, Zemlok et al. as modified by Reschke further discloses a connection portion (200 in Fig. 2 of Zemlok et al., see shaft 12 in Fig. 1 of Reschke) disposed between the power transmission portion and the end tool and accommodating the wire therein (Reschke col. 6, lines 33-37: “The wires 207, 208 and 209 may be disposed within shaft 112b and connect to various electrical connectors (not shown) disposed within the proximal end of the jaw member 310, which ultimately connect to the electrically conductive sealing plates 312 and 322 and cutting plates 316 and 330”, in the combination as proposed the wires extend through the shaft of the device which is located between the end effector and the drive comprising the power transmission portion).
Regarding claim 10, Zemlok et al. as modified by Reschke further discloses wherein the connection portion (200 in Fig. 2 of Zemlok et al., see shaft 12 in Fig. 1 of Reschke) is connected to the power transmission portion (see PP [0055] of Zemlok et al., see also wires 207, 208, and 209 in Fig. 2B of Reschke, the different parts of the device are each connected to one another) and is configured to roll-rotate together with the power transmission portion by roll rotation of the power transmission portion (see Fig.2 of Zemlok et al., the entire shaft of 200 rotates, in the modification as proposed the wires and the shaft rotate together upon actuation of the device).
Regarding claim 11, Zemlok et al. as modified by Reschke further discloses wherein the power transmission portion (see PP [0055]) further comprises a pulley coupling plate (354) coupled to the power transmission portion, and the pulley coupling plate (354) is configured to rotate together with the motor pack (50 in Fig. 3) by driving of the roll drive motor (“M” in Figs. 3-5, PP [0060]: “The distal end 352b of the driven shaft 352 is non-rotatably connected to the first pulley 354 such that rotation of the driven shaft 352 effects rotation of the first pulley 354 relative to the housing 306”, PP [0059]: “The proximal end 352a of the driven shaft 352 is non-rotatably connected to a shaft coupling 316 of the carriage 1104 such that rotation of the drive shaft 309 of the motor “M” causes the shaft coupling 316 to rotate and, in turn, the driven shaft 352 of the drive assembly 310 to rotate”).
Regarding claim 12, Zemlok et al. as modified by Reschke further discloses wherein the power transmission portion (PP [0055]: “The instrument drive unit 110 transfers power and actuation forces from its motors 52, 54, 56, 58 to driven members (not shown) of the electromechanical surgical instrument 200 to ultimately drive movement of components of the end effector 202 of the electromechanical surgical instrument 200, for example, a movement of a knife blade (not shown) and/or a closing and opening of jaw members 202a, 202b of the end effector 202, the actuation or firing of a stapler, and/or the activation or firing of an electrosurgical energy-based instrument, or the like”, emphasis added, the power is transferred from the motors which are part of the motor pack, the transmission portion includes motors 52, 54, 56, and 58 which rotate with the motor pack 50 as a whole) is configured to roll-rotate together with the pulley coupling plate (354, PP [0060]: “The distal end 352b of the driven shaft 352 is non-rotatably connected to the first pulley 354 such that rotation of the driven shaft 352 effects rotation of the first pulley 354 relative to the housing 306”, PP [0059]: “The proximal end 352a of the driven shaft 352 is non-rotatably connected to a shaft coupling 316 of the carriage 1104 such that rotation of the drive shaft 309 of the motor “M” causes the shaft coupling 316 to rotate and, in turn, the driven shaft 352 of the drive assembly 310 to rotate”).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Zemlok et al. (US PGPub 2023/0031403 A1) as applied to claim 1 above, and further in view of Overmyer et al. (US PGPub 2016/0174978 A1).
Regarding claim 20, Zemlok et al. fails to disclose a slip ring disposed on one side of the circuit unit and electrically connecting the motor pack and the circuit unit to each other.
In the same field of articulatable surgical instruments comprising jaws (abstract), Overmyer et al. teaches a device (see Fig. 1) comprising a control circuit (156 in Fig. 2) and further comprises a slip ring (620 in Fig. 3) for conducting electrical power and/or signals between the circuit and the motor (510 in Fig. 3).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have modified the Zemlok et al. device according to the teachings of Overmyer et al. to include the slip ring as claimed. One of ordinary skill in the art would have been motivated to perform this modification because it is a simple combination of elements that would have yielded the predictable result of providing a pathway for power and/or signals to be conducted between the circuit unit and the motor pack, a function which is already contemplated by Zemlok et al. (PP [0057]: “the carriage 300 may include a printed circuit board 307 in electrical communication with the motor “M” to control an operation of the motor “M” of the carriage 300”). Providing the structure taught by Overmyer et al. to fulfill this function would not have altered the main operating principle of the Zemlok et al. device, but would have enabled the connection already described within the Zemlok et al. disclosure.
Allowable Subject Matter
Claims 3-5, 14, 16-17, and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The subject matter of claims 3-5, 14, 16-17, and 19 filed on 3/18/2025 could either not be found or was not suggested in the prior art of record.
With respect to claims 3-5, the prior art does not disclose or render obvious at the effective filing date of the invention: the feature of wherein the roll drive motor is provided in the motor pack, in combination with the other limitations of the independent claim.
The closest prior art is Zemlok et al., which discloses each of the limitations as described above.
However, Zemlok et al. fails to disclose wherein the roll drive motor is provided in the motor pack, since the roll drive motor (“M” in Fig. 3) is outside of the motor pack (50) and does not rotate with it. Furthermore, the prior art of record does not suggest any motivation to modify the Zemlok et al. disclosure to arrive at these features.
With respect to claims 14, and 16-17, the prior art does not disclose or render obvious at the effective filing date of the invention: the feature of a base plate, wherein the base plate is rotated by driving the roll drive motor, in combination with the other limitations of the independent claim.
The closest prior art is Zemlok et al., which discloses each of the limitations as described above.
However, Zemlok et al. fails to disclose the rotatable base plate as claimed. Furthermore, the prior art of record does not suggest any motivation to modify the Zemlok et al. disclosure to arrive at these features.
With respect to claim 19, the prior art does not disclose or render obvious at the effective filing date of the invention: the feature of wherein the circuit unit is configured to roll-rotate together with the motor pack, in combination with the other limitations of the independent claim.
The closest prior art is Zemlok et al., which discloses each of the limitations as described above.
However, Zemlok et al. fails to disclose a circuit unit configured to roll-rotate with the motor pack. Furthermore, the prior art of record does not suggest any motivation to modify the Zemlok et al. disclosure to arrive at these features.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bridget E. Rabaglia whose telephone number is (571)272-2908. The examiner can normally be reached Monday - Thursday, 7am - 5pm.
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.
/BRIDGET E. RABAGLIA/
Examiner, Art Unit 3771
Prosecution Insights