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 .
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:
movable indicators for indicating a distance from said second reference point to a reference point of said surgical bed, the sitting surface of said stool, and a reference point of a patient's head, respectively as set forth in claim 2.
movable indicators for indicating a distance from said second reference point to a reference point of said surgical bed, the sitting surface of said stool, and a reference point of a patient's head, respectively as set forth in claim 4.
an angle measuring device for measuring the rotation of a patient's head relative to normal or relative to the resting surface of a surgical bed as set forth in claim 5.
controllable actuators for adjusting their height relative to a reference point, and each of said controllable actuators are in communication with a local computer for controlling their height as set forth in claim 13.
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.
As per paragraph [0045] of the specification, “the controllable actuators for adjusting their height relative to a reference point, and each of said controllable actuators are in communication with a local computer for controlling their height” is may be any controllable actuator such as, but not limited to, electrical actuators, pneumatic actuators, or hydraulic actuators, and they may be in data communication, wirelessly or wired, with a local computer 1000 through one or more wired or wireless transceiver(s) 1004.
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 § 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 1-23 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 1 recites the limitation "the rotation of a patient’s head" in line 10 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the height of the patient’s eye" in line 11 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the height of the reference a point" in lines 13-14 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the height of a sitting surface" in line 15 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the height of a reference point" in line 19 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the resting surface" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the height of said patient’s head" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim.
As to claim 13, the limitations, “…for adjusting their height relative to a reference point, and each of said controllable actuators are in communication with a local computer for controlling their height” does not positively claim the specific structure to which Applicant is seeking patent protection by usage of the term “their”.
Claim 16 recites the limitation "said second reference point" in lines 17 and 22 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "said sitting stool surface" in line 21 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation " the location of the at least one surgical instrument foot pedal control is determined by surgeon preference" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 23 recites the limitation "said second reference point as measured by said surgical bed height measuring instrument " in lines 8-9 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 23 recites the limitation "said second reference point as measured by said stool height measuring instrument" in lines 13-14. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the parameters for control of each of the controllable actuators or fluid pumps" in lines 17-18 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-4, 7-15 and 17-21 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 since they depend directly or indirectly on rejected base claims 1 and 16 and therefore, contain the same deficiencies.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-23 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-23 of prior U.S. Patent No. (12,336,943 B1). This is a statutory double patenting rejection.
All of the limitations of claim 1 of the instant application can be found in claim 1 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 2 of the instant application can be found in claim 10 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 3 of the instant application can be found in claim 11 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 4 of the instant application can be found in claim 12 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 5 of the instant application can be found in claim 13 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 6 of the instant application can be found in claim 2 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 7 of the instant application can be found in claim 3 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 8 of the instant application can be found in claim 4 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 9 of the instant application can be found in claim 8 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 10 of the instant application can be found in claim 9 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 11 of the instant application can be found in claim 14 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 12 of the instant application can be found in claim 5 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 13 of the instant application can be found in claim 15 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 14 of the instant application can be found in claim 6 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 15 of the instant application can be found in claim 7 of U.S. Patent No. (12,336,943 B1).
All of the limitations of claim 16-23 of the instant application can be found in claims 16-23 of U.S. Patent No. (12,336,943 B1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OPHELIA ALTHEA HAWTHORNE whose telephone number is (571)270-3860. The examiner can normally be reached M-F 8:00 AM-5:00 PM, EST.
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/OPHELIA A HAWTHORNE/Primary Examiner, Art Unit 3786