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 .
Response to Amendment
This Office Action is responsive to the amendment filed on 05 June 2025. As directed by the amendment: Claims 1-11 and 13 have been amended, no claims have been cancelled, and no claims have been added. Thus, Claims 1-17 are presently pending in this application.
The amendments to the Specification and Drawings have been reviewed and accepted by the Examiner.
Specification
The disclosure is objected to because of the following informalities:
The elements of “Apple”, “iPhone”, and “Airpods” described in the Specification (e.g. Page 4, 13) should have a registered trademark symbol ® since these are registered trademarks of the Apple Inc.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
“existing in surgeries” in Line 8 should be amended to recite “existing in the ophthalmological surgeries” to preserve consistent antecedent basis in the claims
“wherein the system consists of” in Line 9 should be amended to recite “wherein the integrated mechatronic system consists of” to preserve consistency of this limitation in the claims
Claim 6 is objected to because of the following informalities:
“the operating room” in Lines 4-5 should be amended to “the operating rooms” to preserve consistency of this limitation in the claims
Claim 9 is objected to because of the following informalities:
“the structure that can hold different types of surgical instruments” should be amended to recite “the structures that can hold different types of surgical instruments” to preserve consistency of this limitation in the claims
Claim 10 is objected to because of the following informalities:
“wherein the system is” in Line 2 should be amended to recite “wherein the integrated mechatronic system is” to preserve consistency of this limitation in the claims
“to the mechatronic system comprising” in section c) should be amended to recite “to the integrated mechatronic system comprising” to preserve consistency of this limitation in the claims
“and output electronic of signals” in section b) appears to have grammatical errors and should be amended to “and output of electronic signals”
Claim 12 is objected to because of the following informalities:
“wherein the mechatronic system comprises” in Lines 1-2 should be amended to recite “wherein the integrated mechatronic system comprises” to preserve consistency of this limitation in the claims
Claim 13 is objected to because of the following informalities:
“the structure that can hold different types of surgical instruments” should be amended to recite “the structures that can hold different types of surgical instruments” to preserve consistency of this limitation in the claims
Appropriate correction is required.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitations recite sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: Claim 7: “a structure attachable by means of a system of gold-coated magnets, which can hold/incorporate a lens system with actuators for optical adjustment that comprises a metal and/or plastic structure and 3D printing in resin, actuators and sensors, with the ability to perform movements in different directions that can be used to perform focusing and movement functions.”.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-17 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.
Regarding Claims 1-17, the claims use both “consisting of” and “comprising” language. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim, as interpreted by the Examiner. See MPEP 2111.03 (II). Claim 1, recites “wherein said system consists of” in Line 8. However, a claim which depends from a claim which “consists of” the recited elements or steps cannot add an element or step. MPEP 2111.03 (II). It is noted that Claims 1, 3-7, 10, 11, and 12 adds additional elements and steps with “comprising” language. Therefore, these limitations are indefinite since it is unclear as to which elements are included and excluded by the claims. For purposes of examination, the Examiner is interpreting all of these additional elements as included in the ‘consisting of’ language required by Claim 1, but excludes any element, step, or ingredient not specified in the claims. Appropriate correction or clarification is required. Claims 2-17 are rejected for depending on Claim 1.
Regarding Claim 1, the claim has been amended to recite “wherein the central processing module is configured to apply the voice commands function in order to” in the last 3 lines of the claim. However, there is lack of antecedent basis for “the voice commands function”, and furthermore, this limitation is grammatically awkward. It appears that this limitation was intended to be, “wherein the central processing module is configured to apply the voice commands
Regarding Claim 3, the claim recites “drivers for movement of actuators” in Line 2. However, it is unclear as to whether these are the same or different actuators as recited in Claim 1, therefore this limitation is indefinite. For purposes of examination, this limitation will be interpreted as “drivers for movement of the actuators”. Appropriate correction or clarification is required.
Regarding Claim 5, the claim recites “such as optical adjustments, activation of the peripherals, and activation of the electronic equipment” in Lines 3-4. However, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention, particularly in view of the amendments to Claim 1. See MPEP § 2173.05(d). For purposes of examination, the Examiner is interpreting the elements after “such as” to be required by the claim. Appropriate correction or clarification is required.
Regarding Claim 6, the claim recites “pedals, knobs” in Line 4. It is unclear therefore indefinite whether these are the same pedals and knobs recited in Claim 1. For purposes of examination, this limitation will be interpreted as, “the pedals, the knobs”. Appropriate correction or clarification is required.
Regarding Claim 6, the claim recites “in an ophthalmological operation” in Line 6. It is unclear therefore indefinite whether this is the same element as the previously recited “ophthalmological surgeries”. For purposes of examination, this limitation will be interpreted as, “in said ophthalmological surgeries”. Appropriate correction or clarification is required.
Regarding Claim 10, the claim recites “sensors placed in surgery room instruments” in section a3). It is unclear therefore indefinite whether this is the same element as the previously recited “different types of surgical instruments”. For purposes of examination, this limitation will be interpreted as, “sensors placed in the different types of surgical instruments”. Appropriate correction or clarification is required. Claims 11-17 are rejected for depending on Claim 10.
Regarding Claims 10-17, these claims recite “a surgical method which employs the integrated mechatronic system of claim 1”. However, many of the elements recited in Claims 10-17 are already recited in Claim 1, therefore causing indefiniteness issues due to antecedent basis (i.e., it is unclear as to which element is being referred to). For example, elements such as “a surgical microscope” (Line 2, Claim 10), “voice commands” (Line 4, Claim 10), “a microphone” (Line 6, Claim 10), “headphones” (Line 11, Claim 10), “pedals” (Line 15, Claim 10), “actuators” (Line 21, Claim 10), “a video processing module” (Line 2, Claim 11), “a camera” (Line 2, Claim 11), “an actuator module” (Line 2, Claim 12), “knobs, pedals” (Line 3, Claim 12), “operating rooms” (Line 3, Claim 12), and “voice commands” (Line 4, Claim 13) have been previously recited in Claim 1. Therefore, these limitations are indefinite. For purposes of examination, these elements will be interpreted by the Examiner to be the same elements recited in Claim 1, and therefore interpreted as “the [element]”. Appropriate correction or clarification is required. Claims 11-17 are rejected for depending on Claim 10.
Response to Arguments
The previous Objections to the Drawings have been withdrawn due to the replacement Drawings filed 05 June 2026 correcting the previously described issues. The amendments to the Specification and Drawings have been reviewed and accepted by the Examiner.
The Applicant's arguments filed in the Amendment/Response filed 05 June 2026 with respect to the previous 35 U.S.C. 112(b) rejections of Claims 1-17 have been fully considered. The Applicant argues that the previous 35 USC 112(b) issues have been corrected in the amendments to the claims. However, not all previously described 35 U.S.C. 112(b) indefiniteness rejections have been resolved, and new 35 U.S.C. 112(b) rejections and Claim Objections have been made above necessitated by the amendments. In particular, the claims use both “consisting of” and “comprising” language. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim, as interpreted by the Examiner. See MPEP 2111.03 (II). Claim 1, recites “wherein said system consists of” in Line 8. However, a claim which depends from a claim which “consists of” the recited elements or steps cannot add an element or step. MPEP 2111.03 (II). It is noted that Claims 1, 3-7, 10, 11, and 12 adds additional elements and steps with “comprising” language. Therefore, these limitations are indefinite since it is unclear as to which elements are included and excluded by the claims. For purposes of examination, the Examiner is interpreting all of these additional elements as included in the ‘consisting of’ language required by Claim 1, but excludes any element, step, or ingredient not specified in the claims. Appropriate correction or clarification is required. Claims 2-17 are rejected for depending on Claim 1, since these claims also recite both “comprising” and “consisting of” language, and it is therefore unclear as to what particular elements are required by the claims.
Therefore, Claims 1-17 remain rejected as described above.
Prior Art
The claims have been interpreted as best understood by the Examiner as described in detail above. The prior art made of record and not relied upon is considered pertinent to the Applicant's disclosure:
Brant et al. (US Patent No. 5,970,457, previously cited) discloses a medical surgical control system for ophthalmological surgeries (Abstract; Fig. 1; Col. 1, Lines 25-67) which utilizes headsets (16, 26, Fig. 1) to implement operator voice commands to control the medical equipment (Col. 4, Lines 5-67; Claims 1-8).
Savall et al. (US Publication No. 2018/0078034, previously cited) discloses a user console for controlling a remote surgical robotic instrument (Abstract) including for ophthalmological surgeries (Paragraph 0003) comprising wireless components which implement a headset for input of voice commands to manipulate surgical equipment (Paragraph 0042, 0044, 0070, 0079).
Anderson et al. (US Publication No. 2018/0092706, previously cited) discloses a robotic surgical system including video/optical systems (Paragraph 0009-0010, 0042) and a headset to received voice commands (Paragraph 0007, 0080-0081) to control a control system to implement surgical instructions (Paragraph 0092, 0083).
Thomas (US Publication No. 2018/0303558, previously cited) discloses control systems for surgical procedures (Abstract) comprising a headset worn by a user (Paragraph 0040) which implements voice commands (Paragraph 0054, 0061) to control elements of the surgical equipment (Figs. 1, 5; Paragraphs 0066-0070; Claim 1, 14).
Fava et al. (US Publication No. 2019/0019514, previously cited) discloses a voice control system for ophthalmologic laser treatment systems sets parameters for delivering laser energy based on voice commands (Abstract) including a headset with a microphone (Paragraph 0036-0037; Fig. 1) which utilizes a wireless interface (Paragraph 0035-0039) to control the surgical equipment (Paragraph 0051-0057; Claim 1).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA M BAYS whose telephone number is (571)270-7852. The examiner can normally be reached 10:00am - 6:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer McDonald can be reached at 571-270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA M. BAYS/Primary Examiner, Art Unit 3796
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