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 .
Detailed Action
This is in response to the preliminary amendment filed 12/15/2026.
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.
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Claims 1, 4-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-9 of U.S. Patent No. 11,707,190
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 4-20 of the application generally recites a robotic arm, an endoscopic viewing assembly and a stabilizing device, a motor drive (claim 4), a cervical seal (claim 5), which are not patentably distinct from claims 1, 7-9 of the patent.
It is clear that all the elements of claims 1 4-20 are to be found in claims 1, 7-9 of the patent. The difference between claims 1 4-20 of the application and claims 1 4-20 of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 1, 7-9 of the patent is in effect a “species” of the “generic” invention of claims 1, 4-20 of the application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 8, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 6,235,037 (East) in view of U.S. Patent Publication Number 2010/0331859 (Omori)
Regarding claim 1, East discloses as shown in Figure 5, a medical robot system for use in intrauterine procedures, comprising: a robotic arm (robotic arm 40, see col. 8, lines 9-13) having a plurality of moveable arm segments; and a stabilizing device (apparatus, see col. 5, lines 7-29 ) detachably coupled to a distal segment of the robotic arm, the stabilizing device having an elongate tool shaft (housing 1, see col. 5, lines 7-29) extending about a longitudinal axis adapted for engaging tissue to stabilize a cervix of a patient.
East fails to disclose an endoscopic viewing assembly detachably coupled to a distal segment of the robotic arm, the endoscopic viewing assembly having an elongate endoscope shaft extending about a longitudinal axis to a distal end carrying an image sensor.
Omori, from the same field of endeavor teaches a similar medical robot system as shown in Figure 1, where the system includes an endoscopic viewing assembly (endoscope 32, see paragraph [0033]) detachably coupled (recited in claim 10) to a distal segment of a robotic arm (robot arm 22, see paragraph [0032]), the endoscopic viewing assembly having an elongate endoscope shaft extending about a longitudinal axis to a distal end, for the purpose of viewing an area of the body.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify medical robot system disclosed by East such that it included an endoscopic viewing assembly detachably coupled to a distal segment of the robotic arm, the endoscopic viewing assembly having an elongate endoscope shaft extending about a longitudinal axis to a distal end carrying an image sensor in order to configure the robotic arm to view an area of the body, a predictable use of known components to obtain expected ergonomic benefits. See KSR, 550 U.S. at 417; MPEP § 2143.
Regarding claims 8, 9 East discloses as shown in Figure 5, a medical robot system, comprising:
a robotic arm (robotic arm 40, see col. 8, lines 9-13) having a plurality of moveable arm segments; an endoscope detachably coupled to a distal segment of the robotic arm, the endoscope having an elongate endoscope shaft; and a stabilizing device (apparatus, see col. 5, lines 7-29 ) detachably coupled to a distal segment of the robotic arm, the stabilizing device adapted for engaging tissue to stabilize an anatomical structure.
East fails to disclose an endoscopic viewing assembly detachably coupled to a distal segment of the robotic arm, the endoscopic viewing assembly having an elongate endoscope shaft extending about a longitudinal axis to a distal end carrying an image sensor.
Omori, from the same field of endeavor teaches a similar medical robot system as shown in Figure 1, where the system includes an endoscopic viewing assembly (endoscope 32, see paragraph [0033]) detachably coupled (recited in claim 10) to a distal segment of a robotic arm (robot arm 22, see paragraph [0032]), the endoscopic viewing assembly having an elongate endoscope shaft extending about a longitudinal axis to a distal end, for the purpose of viewing an area of the body.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify medical robot system disclosed by East such that it included an endoscopic viewing assembly detachably coupled to a distal segment of the robotic arm, the endoscopic viewing assembly having an elongate endoscope shaft extending about a longitudinal axis to a distal end carrying an image sensor in order to configure the robotic arm to view an area of the body, a predictable use of known components to obtain expected ergonomic benefits. See KSR, 550 U.S. at 417; MPEP § 2143.
Claim(s) 2, 3 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 6,235,037 (East) in view of U.S. Patent Publication Number 2010/0331859 (Omori) as applied to claims 1 and 8 above, and further in view of U.S. Patent Publication Number 2003/0130564 (Martone et al.)
Regarding claims 2, 3, 11-13 East in view of Omori fails to disclose the elongate endoscope shaft having a working channel therein, wherein the working channel is expandable and collapsible.
Martone et al. from the same field of endeavor teaches as similar medical robot as shown in Figure 13, where the elongate endoscope shaft having a working channel therein, wherein the working channel is expandable and collapsible, further comprising a treatment tool (instrument 50, see paragraph [0007]) detachably coupled, the treatment tool having a treatment tool shaft extending about a longitudinal axis to a working end, wherein the treatment tool shaft is configured for introduction through the working channel of the elongate endoscope shaft, comprising a treatment tool detachably coupled to a distal segment of the robotic arm, the treatment tool having a treatment tool shaft extending about a longitudinal axis to a working end, wherein the treatment tool shaft is configured for introduction through the working channel of the elongate endoscope shaft, wherein the treatment tool comprises at least one of a resection device, ablation device, coagulation device, biopsy device, and dissection device. See paragraphs [0068], [0069].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the medical robot system disclosed by East in view of Omori to include the working channel is expandable and collapsible and the tool taught by Martone such that a treatment tool detachably coupled to a distal segment of the robotic arm, the treatment tool having a treatment tool shaft extending about a longitudinal axis to a working end, wherein the treatment tool shaft is configured for introduction through the working channel of the elongate endoscope shaft, comprising a treatment tool detachably coupled to a distal segment of the robotic arm, the treatment tool having a treatment tool shaft extending about a longitudinal axis to a working end, wherein the treatment tool shaft is configured for introduction through the working channel of the elongate endoscope shaft in order to configure the endoscope to have a working channel which was capable of being closed during advancement and a tool to perform treatment, a predictable use of known components to obtain expected ergonomic benefits. See KSR, 550 U.S. at 417; MPEP § 2143.
Claim(s) 4 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 6,235,037 (East) in view of U.S. Patent Publication Number 2010/0331859 (Omori), U.S. Patent Publication Number 2003/0130564 (Martone et al.) as applied to claims 2 and 9 above, and further in view of U.S. Patent Publication Number 2009/0209812 (Omoto)
Regarding claims 4, 10 East fails to disclose comprising a motor drive configured to rotate the elongate endoscope shaft relative to its longitudinal axis, and configured to move the elongate endoscope shaft axially relative to its longitudinal axis.
Omoto, from the same field of endeavor teaches a similar medical robot system as shown in Figure 2, wherein a motor drive configured to rotate the elongate endoscope shaft relative to its longitudinal axis, and configured to move the elongate endoscope shaft axially relative to its longitudinal axis. See paragraph [0116].
It would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention to modify the medical robot system disclosed by East in view of Omori, Martone et al. t include the motor drive in order to manipulate the position of the endoscope, a predictable use of known components to obtain expected ergonomic benefits. See KSR, 550 U.S. at 417; MPEP § 2143.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 6,235,037 (East) in view of U.S. Patent Publication Number 2010/0331859 (Omori), U.S. Patent Publication Number 2003/0130564 (Martone et al.) as applied to claim 1 above, and further in view of U.S. Patent Publication Number 2010/0256623 (Nicolas et al.)
Regarding claim 5, East fails to disclose comprising a cervical seal slidably mounted over the elongate endoscope shaft.
Nicolas et al., from the same field of endeavor teaches a similar system as shown in figure 2 which includes a cervical seal (seal 120, see paragraph [0028]) slidably mounted over an elongate shaft, for the purpose of sealing the cervix around the shaft.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the system disclosed by East to include the cervical seal taught by Nicolas in order to seal the cervix around the shaft, a predictable use of known components to obtain expected ergonomic benefits. See KSR, 550 U.S. at 417; MPEP § 2143.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 6,235,037 (East) in view of U.S. Patent Publication Number 2010/0331859 (Omori), U.S. Patent Publication Number 2003/0130564 (Martone et al.), U.S. Patent Publication Number 2010/0256623 (Nicolas et al.) as applied to claim 5 above, and further in view of U.S. Patent Publication Number 2007/0156068 (Dubey et al.)
Regarding claim 6, East fails to disclose the cervical seal carrying a contact sensor
adapted to sense contact with the cervix of the patient and send signals of the contact or lack thereof to a controller.
Dubey et al., from a similar field of endeavor teaches a similar system as shown in figure 14 which includes a contact sensor adapted to sense contact with the cervix of the patient and send signals of the contact or lack thereof to a controller. See paragraph [0050].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the system disclosed by East to include the contact sensor adapted to sense contact with the cervix of the patient and send signals of the contact or lack thereof to a controller on the taught by Dubey et al. on the seal disclosed by East in view of Omori, Marton and Nicolas in order to detect when the seal contacted the cervix, a predictable use of known components to obtain expected ergonomic benefits. See KSR, 550 U.S. at 417; MPEP § 2143.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 6,235,037 (East) in view of U.S. Patent Publication Number 2010/0331859 (Omori), U.S. Patent Publication Number 2003/0130564 (Martone et al.), U.S. Patent Publication Number 2010/0256623 (Nicolas et al.) as applied to claim 12 above, and further in view of U.S. Patent Publication Number 2008/0249553 (Gruber et al.)
Regarding claim 14, East in view of Omori and Nicholas fails to disclose the treatment tool comprises a resection device with a moveable cutting member, and further comprising a resecting motor drive for moving the moveable cutting member at least rotationally or axially.
Gruber et al., from a related field of endeavor teaches a similar system as shown in Figure 1, wherein the treatment tool comprises a resection device with a moveable cutting member, and further comprising a resecting motor drive for moving the moveable cutting member at least rotationally or axially. See paragraphs [0010], [0093].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention modify the system disclosed by East in view of Omori and Nicholas by substituting the treatment tool disclosed by East in view of Omori and Nicholas for the one taught by Gruber et al. because it would only require the simple substitution one known alternative for another to produce nothing but predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82, USPQ2d 1385 (2007).
Claim(s) 15, 16, 19, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 6,235,037 (East) in view of U.S. Patent Publication Number 2010/0331859 (Omori), U.S. Patent Publication Number 2003/0130564 (Martone et al.), U.S. Patent Publication Number 2009/0209812 (Omoto)
Regarding claims 15,19, 20 East discloses as shown in Figure 5, a medical robot system, comprising: a robotic arm (robotic arm 40, see col. 8, lines 9-13) having a plurality of moveable arm segments, further comprising a stabilizing device (apparatus, see col. 5, lines 7-29 ) detachably coupled to a distal segment of the robotic arm, the stabilizing device adapted for engaging tissue to stabilize an anatomical structure, a second motor drive (motor drive use to drive the robot arm and thus necessarily the stabilization device, see col. 8, lines 9-13) configured to drive the stabilizing device.
East fails to disclose an endoscopic viewing assembly detachably coupled to a distal segment of the robotic arm, the endoscopic viewing assembly having an elongate endoscope shaft extending about a longitudinal axis to a distal end carrying an image sensor.
Omori, from the same field of endeavor teaches a similar medical robot system as shown in Figure 1, where the system includes an endoscopic viewing assembly (endoscope 32, see paragraph [0033]) detachably coupled (recited in claim 10) to a distal segment of a robotic arm (robot arm 22, see paragraph [0032]), the endoscopic viewing assembly having an elongate endoscope shaft extending about a longitudinal axis to a distal end, for the purpose of viewing an area of the body.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify medical robot system disclosed by East such that it included an endoscopic viewing assembly detachably coupled to a distal segment of the robotic arm, the endoscopic viewing assembly having an elongate endoscope shaft extending about a longitudinal axis to a distal end carrying an image sensor in order to configure the robotic arm to view an area of the body, a predictable use of known components to obtain expected ergonomic benefits. See KSR, 550 U.S. at 417; MPEP § 2143.
East fails to disclose comprising a motor drive configured to rotate the elongate endoscope shaft relative to its longitudinal axis, and configured to move the elongate endoscope shaft axially relative to its longitudinal axis.
Omoto, from the same field of endeavor teaches a similar medical robot system as shown in Figure 2, wherein a motor drive configured to rotate the elongate endoscope shaft relative to its longitudinal axis, and configured to move the elongate endoscope shaft axially relative to its longitudinal axis. See paragraph [0116].
It would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention to modify the medical robot system disclosed by East in view of Omori, Martone et al. t include the motor drive in order to manipulate the position of the endoscope, a predictable use of known components to obtain expected ergonomic benefits. See KSR, 550 U.S. at 417; MPEP § 2143.
Claim(s) 17, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 6,235,037 (East) in view of U.S. Patent Publication Number 2010/0331859 (Omori) as applied to claim 15 above, and further in view of U.S. Patent Publication Number 2003/0130564 (Martone et al.)
Regarding claims 17, 18 East in view of Omori fails to disclose the elongate endoscope shaft having a working channel therein, wherein the working channel is expandable and collapsible.
Martone et al. from the same field of endeavor teaches as similar medical robot as shown in Figure 13, where the elongate endoscope shaft having a working channel therein, wherein the working channel is expandable and collapsible, further comprising a treatment tool (instrument 50, see paragraph [0007]) detachably coupled, the treatment tool having a treatment tool shaft extending about a longitudinal axis to a working end, wherein the treatment tool shaft is configured for introduction through the working channel of the elongate endoscope shaft, comprising a treatment tool detachably coupled to a distal segment of the robotic arm, the treatment tool having a treatment tool shaft extending about a longitudinal axis to a working end, wherein the treatment tool shaft is configured for introduction through the working channel of the elongate endoscope shaft, wherein the treatment tool comprises at least one of a resection device, ablation device, coagulation device, biopsy device, and dissection device. See paragraphs [0068], [0069].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the medical robot system disclosed by East in view of Omori to include the working channel is expandable and collapsible and the tool taught by Martone such that a treatment tool detachably coupled to a distal segment of the robotic arm, the treatment tool having a treatment tool shaft extending about a longitudinal axis to a working end, wherein the treatment tool shaft is configured for introduction through the working channel of the elongate endoscope shaft, comprising a treatment tool detachably coupled to a distal segment of the robotic arm, the treatment tool having a treatment tool shaft extending about a longitudinal axis to a working end, wherein the treatment tool shaft is configured for introduction through the working channel of the elongate endoscope shaft in order to configure the endoscope to have a working channel which was capable of being closed during advancement and a tool to perform treatment, a predictable use of known components to obtain expected ergonomic benefits. See KSR, 550 U.S. at 417; MPEP § 2143.
Conclusion
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/RICHARD G LOUIS/Primary Examiner, Art Unit 3771
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