CTNF 19/229,623 CTNF 84059 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. This is in response to Applicant’s communication filed on 6/5/25, wherein: Claims 1-19 are currently pending. Claims 1-19 overcome the prior art of record. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 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. 07-30-06 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 positioning unit”, “a motion controlling unit” (claims 1-5), “an identification unit” in (claims 3-5), “an image acquiring unit” in (claim 7), and deviation unit (in claim 19) 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. Double Patenting 08-33 AIA 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp. 08-34 AIA Claim s 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. (US 12,349,993) . Although the claims at issue are not identical, they are not patentably distinct from each other because both claims 1-19 of the copending and claims 1-20 of the US Patent (US 12,349,993) show for example: In claim 1 of copending and claim 1 of (US Patent 12,349,993), “a device for computer-assisted surgery, comprising: a reference structure connectable to a first implant, in a defined geometrical orientation; an arm having a first end, a second end, and a plurality of segments, wherein at least two adjacent segments are coupled with a joint capable of being transitioned from a fixed state to a released state, wherein the first end of the arm is connected to the reference structure and the second end of the arm is connectable to a tool in a defined geometrical orientation with respect to a tooling trajectory of the tool, a position determining unit adapted for determining a required position and orientation of the connected tool having the tooling trajectory for bringing the tooling trajectory of the tool into a direction, so that the tooling trajectory of the tool corresponds to a joining portion joining the first implant with the tool, a motion controlling unit adapted to transition the arm from the fixed state to the released state for controlling a motion of the arm based on a measure of required motion determined by the position determining unit, wherein the motion controlling unit is adapted to transition the arm from the released state to the fixed state” (in claim 1 of copending and claim 1 of US Patent 12,349,993). In claim 2 of copending and claim 2 of (US Patent 12,349,993): “A device for computer-assisted surgery, comprising: a reference structure connectable to a first implant, in a defined geometrical orientation; an arm having a first end, a second end, and a plurality of segments, wherein at least two adjacent segments are coupled with a joint capable of being transitioned from a fixed state to a released state, wherein the first end of the arm is connected to the reference structure and the second end of the arm is connectable to a second implant in a defined geometrical orientation with respect to an implantation trajectory of the second implant, a position determining unit adapted for determining a required position and orientation of the connected second implant having the implantation trajectory for bringing the implantation trajectory of the second implant into a direction, so that the implantation trajectory of the second implant corresponds to a joining portion joining the first implant with the second implant, a motion controlling unit adapted to transition the arm from the fixed state to the released state for controlling a motion of the arm based on a measure of required motion determined by the position determining unit, and for bringing the arm from the released state into the fixed state”. In claim 3 of copending and claim 3 of (US Patent 12,349,993): “A device for computer-assisted surgery, comprising: a reference structure connectable to a first implant, in a defined geometrical orientation; an arm having a first end and a second end, wherein the first end of the arm is connected to the reference structure and the second end of the arm is connectable to a guiding device in a defined geometrical orientation with respect to a guiding trajectory of the guiding device, an identification unit adapted for identifying the first implant having a joining portion connected to the reference structure, a position determining unit adapted for determining a required position and orientation of the connected guiding device having the guiding trajectory based on a stored geometry of the identified main implant and its joining portion for bringing the guiding trajectory of the guiding device into a direction, so that the guiding trajectory of the guiding device corresponds to the joining portion of the main implant having a device to be guided, a motion controlling unit adapted for controlling a motion of the arm based on a stored geometry of the identified main implant, the joining portion, and a measure of required motion determined by the position determining unit for bringing the guiding trajectory of the guiding device into a direction so that the guiding trajectory of the device to be guided corresponds to the joining portion of the main implant” Although claims 1-20 of US Patent No. (US 12,349,993) have additional features. However, it has been held that deleting elements when the function of element is not desired is obvious. See MPEP 2144.04 Section II. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify or to omit the additional elements of claims 1-20 of the US Patent No. US 12,349,993 to arrive at the claims 1-19 of the copending because the person would have realized that the remaining element would perform the same functions as before. “ Omission of element and its function in combination is obvious expedient if the remaining elements perform same functions as before .” See In re Karlson (CCPA) 136 USPQ 184, decide Jan 16, 1963, Appl. No. 6857, U. S. Court of Customs and Patent Appeals . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hagag et al (US 2018/0014894): A surgical system for positioning a prosthetic component includes a robotic arm and a surgical tool having an end effector configured to be coupled to the robotic arm. Hirschfeld (US 11,419,671): an electrosurgical system, to a method for operating an electrosurgical system, and to an electrode for an electric surgical system. An image detection system of the surgical instrument detects an image of the electrode. Junio et al (US 2020/0345430): A depth-indicating device for determining the depth of insertion of a surgical tool comprising a pair of spaced apart end caps, separated by a compressed spring, with the surgical tool passing through axial openings in both end caps, and firmly attached to one of the end caps, but free to slide through the opening in the other. Mcguan et al (US 2022/0117755): Methods and systems for performing a knee arthroplasty procedure include analyzing images of a patient's patellofemoral and femoral-tibial joint in a plurality of flexion positions to identify preoperative knee geometry. Popovic et al (US 2018/0368929): A surgical robot system is disclosed. The surgical robot system includes a handheld introducer and a flexible surgical device. A control unit includes a processor, and a memory that stores, among other things, machine readable instructions configured to be executed by a processor to control a flexible surgical device . 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. 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, 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. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KIRA NGUYEN/Primary Examiner, Art Unit 3656 Application/Control Number: 19/229,623 Page 2 Art Unit: 3656 Application/Control Number: 19/229,623 Page 3 Art Unit: 3656 Application/Control Number: 19/229,623 Page 4 Art Unit: 3656 Application/Control Number: 19/229,623 Page 5 Art Unit: 3656 Application/Control Number: 19/229,623 Page 6 Art Unit: 3656 Application/Control Number: 19/229,623 Page 7 Art Unit: 3656 Application/Control Number: 19/229,623 Page 8 Art Unit: 3656 Application/Control Number: 19/229,623 Page 9 Art Unit: 3656 Application/Control Number: 19/229,623 Page 10 Art Unit: 3656
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