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 .
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, 2, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 11,666,318. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 1, 2, and 12 of the current application and the invention of claims 1 and 9 of the patent lies in the fact that the invention of claims 1 and 9 of the patent includes more elements and is thus more specific. Thus the invention of claims 1 and 9 of the patent is in effect a "species" of the "generic" invention of claims 1, 2, and 12 of the current application. It has been held that the generic invention is “anticipated” by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1, 2, and 12 are anticipated by claims 1 and 9, claims 1, 2, and 12 are not patentably distinct from claims 1 and 9.
Patent 11,666,318
Current Application
1,9
1
1,9
2
1,9
12
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.
Claims 1-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Trabish (U.S. Publication 2018/0177612).
Regarding claims 1-11:
Trabish discloses a device (for example see Figures 1-15 and 51) comprising:
(claim 1) a force sensor pod (32)
(claim 1) wherein the force sensor pod is capable of being disposable
(claim 10) wherein the force sensor pod includes a load cell
(claim 10) wherein the load cell is configured to collect distraction force data indicative of a distraction force applied at a first bone and a second bone by the distraction device when the force sensor pod is coupled to the distraction device
(claim 10) communicate the distraction force data to the computing system (for example see paragraph 62)
(claim 11) wherein the force sensor pod is a capacitive load cell (paragraph 104)
(claim 9) a mount (52; paragraph 69)
(claim 9) wherein the mount is configured to receive the force sensor pod to removably couple the force sensor pod to the distraction device
(claim 1) a distraction device (10)
(claim 1) wherein the distraction device is configured to removably couple to the force sensor pod
(claim 3) a robotic device (for example see paragraph 200)
(claim 3) wherein the operations further comprise controlling the robotic device based on a surgical plan determined using the distraction force measurement (for example see paragraphs 200-202)
(claim 4) a tracking system (for example see paragraphs 106 and 120)
(claim 4) wherein the tracking system is configured to track a pose of a first bone and a pose of a second bone (see paragraphs 106 and 120)
(claim 2) a computing system (4100) including
(claim 2) memory (for example paragraph 184)
(claim 2) wherein the memory stores instructions that cause the computer system to perform operations including
(claim 2) obtaining a distraction force measurement from the force sensor pod (for example see paragraph 185)
(claim 5) identifying at least one of a preferred distraction distance of a ligament stiffness transition point based on the distraction force, the pose of the first bone, and the pose of the second bone (for example see paragraphs 138, 174, and 177)
(claim 6) generating one or more instructions to modify a position of the distraction device based on at least one of the preferred distraction distance of the ligament stiffness transition point (i.e. increase distraction by the device until predetermined load is met; for example see paragraphs 180 and 200-202)
(claim 7) obtaining a distraction distance based on the pose of the first bone and the pose of the second bone
(claim 7) controlling the robotic device based on a surgical plan determined using the distraction force measurement and the distraction distance (for example see paragraphs 180 and 200-202)
(claim 8) obtaining a plurality of distraction distance based on a plurality of poses of the first bone and the second bone during movement (for example see paragraphs 62, 73, 73, 78, 80, and 181)
(claim 2) one or more processors (for example paragraph 184)
Trabish fails to disclose the device comprising a plurality of force sensor pods. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Trabish with a plurality of force sensor pods, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. The device of Trabish is capable of receiving sequentially the plurality of force sensor pods if one so desired.
Regarding claims 12-17, 19, and 20:
Trabish discloses a device (for example see Figures 1-15 and 51) comprising:
(claim 12) a distraction device (10)
(claim 12) wherein the distraction device is configured to apply a distraction force to a joint
(claim 12) a force sensor pod
(claim 12) wherein the force sensor pod is capable of being disposable
(claim 12) wherein the force sensor pod is capable of being removably coupled to the distraction device
(claim 12) wherein the force sensor pod is configured to measure the distraction force applied by the distraction device to a joint
(claim 14) wherein the force pod is configured to wirelessly communicate with the computing system
(claim 15) wherein the force sensor pod includes a load cell configured to measure the distraction force applied to a first bone and a second bone of a joint
(claim 19) wherein the force sensor pod is packaged in a sterile container (packaging surgical instrument and components in sterile containers is well known in the art)
(claim 12) a computing system (4100)
(claim 12) wherein the computing system is communicatively coupled to the force sensor pod
(claim 12) wherein the computing system is configured to receive a measure distraction force and control the distraction device based on the measure distraction force (for example see paragraphs 62 and 200-202)
(claim 16) wherein the computer system is configured to display via a graphical user interface the measure distraction force and a corresponding distraction distance (for example see Figure 30)
(claim 13) a tracking system (for example see paragraphs 106 and 120)
(claim 13) wherein the tracking system is configured to track bone adjacent to the joint
(claim 13) wherein the computing system is configured to associate the measure distraction force with the tracked bones (for example see paragraph 149)
(claim 17) a robotic surgical device (for example see paragraphs 200-202)
(claim 17) wherein the robotic surgical device is communicably coupled to the computing system and configured to modify the joint based on the measured distraction force (i.e. increase distraction until predetermined force is met)
(claim 20) wherein the computing system is configured to control the robotic surgical device to modify the joint based on the measure distraction force and a ligament stiffness transition point of the joint (for example see paragraphs 181 and 200-202)
Trabish fails to disclose the device comprising a plurality of force sensor pods. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Trabish with a plurality of force sensor pods, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 12, 14-16, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Rock (U.S. Publication 2017/0245872) in view of Trabish (U.S. Publication 2018/0177612).
Rock discloses a device (for example see Figures 27-31 and 38) comprising:
(claim 12) a distraction device (16)
(claim 12) wherein the distraction device is configured to apply a distraction force to a joint
(claim 18) wherein the distraction device includes a ratcheting member configured to incrementally adjust an applied distraction force (for example see Figure 31; the surgeon squeezes the handle and the ratchet member catches incrementally to adjust the applied distraction force)
(claim 12) a force sensor pod (12)
(claim 12) wherein force sensor pod is removably coupled to the distraction device (element 12 is placed within element 500)
(claim 12) wherein the force sensor is configured to measure the distraction force applied by the distraction device to the joint (for example see paragraph 56)
(claim 14) wherein the force sensor pod is configured to wirelessly communicate with the computing system (for example see paragraph 56)
(claim 15) wherein the force sensor pod includes a load cell configured to measure the distraction force applied to the first bone and the second bone of a joint (paragraph 71)
(claim 19) wherein the force sensor pod is provided in a sterile container (paragraph 66)
(claim 12) a computing system (600)
(claim 12) wherein the computing system is communicatively coupled to the force sensor pod
(claim 12) wherein the computing system is configured to receive a measure distraction force
(claim 16) wherein the computing system is configured to display via a graphical interface the measure distraction force and a corresponding distraction distance (paragraph 121)
Rock fails to disclose the device wherein the computing system is configured to control the distraction device based on the measure distraction force. Trabish teaches a device comprising a distraction device, a force sensor pod, and a computing system, wherein the computing system is configured to control the distraction device based on measured distraction forces in order to provide smoother and more accurate control of the distractor device (paragraphs 200-202). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Rock wherein the computing system is configured to control the distraction device based on measured distraction forces in view of Trabish in order to provide smoother and more accurate control of the distractor device.
The device of Rock as modified by Trabish discloses the invention as claimed except for the device comprising a plurality of force sensor pods. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Rock as modified by Trabish with a plurality of force sensor pods, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references the examiner felt were relevant to the application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775
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