DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This is in response to Applicant’s communication filed on 5/6/25, wherein:
Claims 1-20 are currently pending.
Claims 3-5, 13-15 overcome the prior art of record.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) 1 and 11 recite the steps of “determining an instruction for a motor of the motor assembly based on at least the one or more motor parameters and the one or more instrument parameters” are directed to the mental step that can perform in the mind (e.g. including observation, evaluation, judgment and opinion). For example, by having the source or information about the motor parameter, and instrument parameter, a person can mentally determine what motor parameter/type or torque and the tool type are compatible for coupling to the effector for operation. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea with respect to step 2A, prong 1.
This judicial exception is not integrated into a practical application with respect to step 2A, prong 2. In particular, the claim using a processor to perform the abstract step of “determine…..”. The process of this step is recited at a high level of generality (i.e., a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic component. Further, “receive on one or more motor parameter, receive on one or more instrument parameter, transmit the instruction” are not considered as significantly more than the abstract idea because they are merely data gathering and output the data. Claims 1 and 10 recites “a motor assembly” is considered as general link to the technical environment and thus is not a meaningful limitation. Noted that the claim does not recite positively step of controlling motion of an end effector. In the other words, the feature “the instruction for controlling motion of an effector…” as recited is merely intended used of the step “determining…”. Therefore, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
With respect to step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discuss above with respect to integration of the abstract idea into a practical application, the additional elements of using generic computer components to perform all of the steps amounts to no more than mere instructions to apply the exception using a generic computer component. Also, “motor assembly” is considered as general link to the technical environment and thus is not a meaningful limitation. Further, “receive on one or more motor parameter, receive on one or more instrument parameter, transmit the instruction” are not considered as significantly more than the abstract idea because they are merely data gathering and output the data which are considered as well understood routine conventional as it has been held by the court. Particularly in receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; (see MPEP 2106.05(d)). Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Therefore, the independents 1, 10 and 19 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al.
Dependent claims 2-10, 12-20 are merely add further details of the abstract steps/elements recited in claim 1 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, they are rejected for the same rational and are not patent eligible.
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.
Claim11-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 recites in the preamble “a method for controlling an instrument”. However, the body of claim only recite “receiving…; determining…; transmitting”. There no “controlling” recited in the claimed limitation which caused the claim to be unclear.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1, 2, 6, 7, 10-12, 16, 17 and 20 are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by SWARUP ET AL (US 2009/0088774) from Applicant’s IDS filed on 5/8/25. Herein after SWARUP.
As for claim 1, SWARUP discloses a control system comprising: a first memory storing instructions; and a processor {see at least figure 1, pars. 0087, 0089, 0041}, which when executing the instructions, is configured to: receive one or more motor parameters inherently stored in a second memory of a motor assembly, the motor assembly being coupled to the control system {see at least figures 2B, 18A, 18B, pars. 0257-0261 which discloses different motor torque (parameter) for different motors e.g. one motor torque of motor 1870, motor torque of the two motors 1870A-1870B};
receive one or more instrument parameters stored in a third memory of an instrument, the instrument being coupled to the motor assembly
{see at least pars. 0087, 0089, 0091, 0241, 0275 e.g. The tool 400 can make use of a memory device or other circuit with memory (referred to herein as "tool memory") mounted in the tool to instruct the master controller to adapt its servomechanism to drive to maximum torque or alternatively a switch may be used to do so. The tool memory can also provide a signal verifying that the tool is compatible with that particular robotic system};
determine an instruction for a motor of the motor assembly based on at least the one or more motor parameters and the one or more instrument parameters, the instruction for controlling motion of an end effector of the instrument using the motor; and transmit the instruction to the motor assembly
{see at least figure 23 (steps 2304-2308), pars. 0275-0277 e.g. par. 0275 discloses a memory in the robotic surgical instrument or tool 400 is read out to determine the tool type and to determine if any control system adjustments are to be made to control the cable drive system. The memory may include the upper torque limit and the lower torque limit settings or the tool type may provide an address to the system for looking up the maximum torque limits. The memory may include information regarding the coupling table that is used to transform torque into current or provide an address to the system to where the information in the coupling table can be found; par. 0276 discloses e.g. the control system of the robotic surgical system is adjusted to drive a first end effector to a torque in a range between an upper torque limit and a lower torque limit in the case of a single end effector. In the case of two end effectors, the control system may be adjusted to concurrently drive a first end effector and a second end effector to a torque in the range between the upper torque limit and the lower torque limit}.
As for claim 2, SWARUP discloses wherein the one or more motor parameters comprise a torque constant {see at least pars. 0258, 0261}.
As for claim 6, SWARUP discloses wherein the one or more motor parameters comprise a motor assembly lifetime {see at least pars. 0091, 0279}.
As for claim 7, SWARUP discloses wherein the one or more instrument parameters comprise a torque limit for the instrument {see at least par. 0275}.
As for claim 10, SWARUP wherein the motor is a clamping motor or a firing motor {see at least figure 4A, pars. 0090, 0122, 0190, 0191}.
As for claims 11, 12, 16, 17 and 20, the limitations of these claims have been noted in the rejection above. They are therefore considered rejected as set forth above.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 8-9, 18-19 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over SWARUP as applied to claims above and in view of WEIR ET AL (US 2014/0200596). Herein after WEIR
As for claims 8-18, SWARUP discloses claimed invention as indicated above, except for the one or more instrument parameters comprises a torque adjustment based on a type of stapler cartridge loaded in the instrument. However, WEIIR discloses such limitation as least in par. 0083. Therefore, it would have been obvious to one of ordinary skill before the effective of filing date of the claimed invention to incorporate the teachings of WEIR into the system of SWARUP for providing proper surgical operation in torque adjustment based on the type of stapler cartridge.
As for claims 18-19, WARUP discloses claimed invention as indicated above, except for receiving, by the processor, one or more cartridge parameters stored in a third memory of a staple cartridge located in the instrument; and further determining, by the processor, the instruction for the motor based on the one or more cartridge parameters. However, WEIR discloses such these limitations at least in at least pars. 0063-0064. Therefore, it would have been obvious to one of ordinary skill before the effective of filing date of the claimed invention to incorporate the teachings of WEIR into the system of SWARUP in order to provide the determining how staple, cartridge and motor assembly are to be utilized together.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Morgan et al (US 2012/0292367): The present invention is directed to a surgical instrument with a robotics system, a memory device and an end effector having an elongate channel, knife position sensor(s) and a firing bar coupled to a knife. In response to drive motions initiated by the robotics system, the firing bar may translate within the elongate channel.
Nixon (US 2005/0251110): Telerobotic, tele-surgical, and surgical robotic devices, systems, and methods selectively calibrate end effector jaws by bringing the jaw elements into engagement with each other. Commanded torque signals may bring the end effector elements into engagement while monitoring the resulting position of a drive system, optionally using a second derivative of the torque/position relationship so as to identify an end effector engagement position.
Shelton IV et al (US 2018/0360443): A motorized surgical instrument is disclosed. The surgical instrument includes a displacement member, a motor coupled to displacement member, a control circuit coupled to the motor, a parameter sensor coupled to the control circuit and a position sensor coupled to the control circuit. The control circuit is configured to receive a parameter output of the parameter sensor indicative of a force applied to translate the displacement member.
Chowaniec et al (US 2015/0272604): A surgical instrument is provided. The surgical instrument includes: a test end effector including a test jaw assembly having a pair of jaws configured to clamp about tissue and at least one sensor configured to measure at least one tissue property; and a handle assembly configured to couple to the treatment end effector.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kira Nguyen whose telephone number is (571)270-1614. The examiner can normally be reached on Monday to Friday 9:00-5:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoi Tran can be reached on 571-272-6919. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIRA NGUYEN/Primary Examiner, Art Unit 3656
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