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 Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 12, 17, 18, 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Publication 2022/0192769 to Conus.
As to claim 12, Conus discloses teaches a surgical tool (paragraph 67, figure 43) comprising a housing (figure 43, see annotated figure I below) comprising a longitudinal axis extending from a first end of the housing to a second end of the housing (figure 43, see annotated figure I below), a blade support tip (figure 43, see annotated figure I below) extending from the first end of the housing in a direction away from the second end of the housing along the longitudinal axis (figure 43, see annotated figure I below); a blade (3301, figure 38, see annotated figure I below) disposed at least partially within the blade support tip (figure 43, see annotated figure I below), the blade comprising a sharpened edge (paragraph 124); a rod (top half 2912; figure 43) comprising a blunt tip end (see annotated figure I below) and an actuation end (see for example 3304; figure 33; both sets of forceps 2911 and 2912 are taught as having similar opening and closing mechanism, paragraph 123), wherein the actuation end is disposed within the housing (figure 35, see annotated figure I below), and wherein the blunt tip end (see annotated figure I below) extends from the second end of the housing in a direction away from the first end of the housing along the longitudinal axis (see annotated figure I below); and a robot interface bracket (3600, figure 38) coupled to the housing (see annotated figure I below), the robot interface bracket (3600) comprising a robot mount flange (3601, figure 36) comprising a tool rotation axis arranged perpendicular to the longitudinal axis (see annotated figure I below), wherein the surgical tool (2910) is attached to the distal end of the robot arm (2920) via the robot mount flange (3601), wherein the surgical tool is rotatable about the tool rotation axis between a cutting position disposing the blade support tip in proximity to a target site and a tissue pathway creation position disposing the blunt tip end in proximity to the target site (the two sets of forceps 2911 and 2912 are taught as being rotatable, paragraph 127, the surgical tool can be rotatable to obtain the two different positions, where the blade forceps can cut tissue and the blunt end can be disposed in proximity to the target tissue where a pathway can be created), a depth sensing subsystem (paragraph 148, 149, the sensors will measure a distance which can read on a “depth” sensing subsystem) comprising or more encoder sensors that indicate one or more characteristics of the surgical tool.
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As to claim 17, Conus discloses the depth sensing subsystem is used to control and sense the depth of insertion for the blade disposed at least partially within the blade support tip in the cutting position, for the blunt tip end of the rod in the tissue pathway creating position, or a combination thereof (paragraph 149). The sensors will measure the distance of the surrounding tissue. Since the movement of the device is not claimed, the sensor can sense a distance of the end effector which can read on the depth.
As to claim 18, Conus discloses the depth subsystem further comprises or more one or more encoder magnets, one or more static nuts, or a combination thereof for sensing the depth of insertion of the surgical tool (paragraph 148, 149). An “encoder” is used with different mechanism to measure distance. The known distance sensor can have the magnet, and/or a nut, which can also read on a part of the robot that holds the device in place.
As to claim 20, Conus discloses teaches a system (figure 43), comprising: a surgical robot (paragraph 151), a sterilizable surgical tool (2910; figure 43, paragraph 151), comprising: a housing (figure 43, see annotated figure I above) comprising a longitudinal axis extending from a first end of the housing to a second end of the housing (figure 43, see annotated figure I above), a blade support tip (figure 43, see annotated figure I above) extending from the first end of the housing in a direction away from the second end of the housing along the longitudinal axis (figure 43, see annotated figure I above); a blade (3301, figure 38, see annotated figure I above) disposed at least partially within the blade support tip (figure 43, see annotated figure I above), the blade comprising a sharpened edge (paragraph 124); a rod (top half 2912; figure 43) comprising a blunt tip end (see annotated figure I above) and an actuation end (see for example 3304; figure 33; both sets of forceps 2911 and 2912 are taught as having similar opening and closing mechanism, paragraph 123), wherein the actuation end is disposed within the housing (figure 35, see annotated figure I above), and wherein the blunt tip end (see annotated figure I above) extends from the second end of the housing in a direction away from the first end of the housing along the longitudinal axis (see annotated figure I above); and a robot interface bracket (3600, figure 38) coupled to the housing (see annotated figure below), the robot interface bracket (3600) comprising a robot mount flange (3601, figure 36) comprising a tool rotation axis arranged perpendicular to the longitudinal axis (see annotated figure I above), wherein the surgical tool (2910) is attached to the distal end of the robot arm (2920) via the robot mount flange (3601), wherein the surgical tool is rotatable about the tool rotation axis between a cutting position disposing the blade support tip in proximity to a target site and a tissue pathway creation position disposing the blunt tip end in proximity to the target site (the two sets of forceps 2911 and 2912 are taught as being rotatable, paragraph 127, the surgical tool can be rotatable to obtain the two different positions, where the blade forceps can cut tissue and the blunt end can be disposed in proximity to the target tissue where a pathway can be created).
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.
Claims 1, 2, 5-10, 16, 19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication 2022/0192769 to Conus in view of U.S. Patent Publication 2017/0020615 to Koenig.
As to claim 1, Conus discloses teaches a robotic surgical system (paragraph 151), comprising a surgical tool comprising a housing (figure 43, see annotated figure I above) comprising a longitudinal axis extending from a first end of the housing to a second end of the housing (figure 43, see annotated figure I below), a blade support tip (figure 43, see annotated figure I above) extending from the first end of the housing in a direction away from the second end of the housing along the longitudinal axis (figure 43, see annotated figure I below); a blade (3301, figure 38, see annotated figure I above) disposed at least partially within the blade support tip (figure 43, see annotated figure I above), the blade comprising a sharpened edge (paragraph 124); a rod (top half 2912; figure 43) comprising a blunt tip end (see annotated figure I above) and an actuation end (see for example 3304; figure 33; both sets of forceps 2911 and 2912 are taught as having similar opening and closing mechanism, paragraph 123), wherein the actuation end is disposed within the housing (figure 35, see annotated figure I above), and wherein the blunt tip end (see annotated figure I above) extends from the second end of the housing in a direction away from the first end of the housing along the longitudinal axis (see annotated figure I above); and a robot interface bracket (3600, figure 38) coupled to the housing (see annotated figure I above), the robot interface bracket (3600) comprising a robot mount flange (3601, figure 36) comprising a tool rotation axis arranged perpendicular to the longitudinal axis (see annotated figure I above), wherein the surgical tool (2910) is attached to the distal end of the robot arm (2920) via the robot mount flange (3601), wherein the surgical tool is rotatable about the tool rotation axis between a cutting position disposing the blade support tip in proximity to a target site and a tissue pathway creation position disposing the blunt tip end in proximity to the target site (the two sets of forceps 2911 and 2912 are taught as being rotatable, paragraph 127, the surgical tool can be rotatable to obtain the two different positions, where the blade forceps can cut tissue and the blunt end can be disposed in proximity to the target tissue where a pathway can be created), but is silent about the axial force sensing subsystem.
Koenig teaches a similar device (robot surgery) having an axial force sensing subsystem comprising one or more force sensors for sensing a pressure exerted by the surgical tool, for sensing an amount of resistance encountered by the surgical tool, or a combinations thereof (paragraph 40, 59) for the purpose of helping to control and/or position the end effector of the arm as desired. It would have been obvious to one of ordinary skill in the art before the effective filing date for Conus to include the axial force sensor in order for helping to control and/or position the end effector of the arm as desired.
As to claim 2, with the device of Conus and Koenig above, Conus discloses a robot arm (paragraph 151), wherein the surgical tool is attachable to the robot art via the robot mount flange.
As to claim 5, with the device of Conus and Koenig above, Conus discloses a depth sensing subsystem (paragraph 148, 149, the sensors will measure a distance which can read on a “depth” sensing subsystem) disposed within the housing, the depth sensing subsystem comprising or more encoder sensors that indicate one or more characteristics of the surgical tool. Koening can further provide evidence and/or teach the depth sensing subsystem can be disposed within the housing (paragraph 40, 92). The sensor can be disposed on the surgical tool, handle or elsewhere in the device as needed. It would have been obvious to one of ordinary skill in the art before the effective filing date to have the depth sensing subsystem be disposed within the housing in order for providing the sensor in a location of the robotic system as desired.
As to claim 6, with the device of Conus and Koenig above, Conus discloses the depth sensing subsystem is used to control and sense the depth of insertion for the blade disposed at least partially within the blade support tip in the cutting position, for the blunt tip end of the rod in the tissue pathway creating position, or a combination thereof (paragraph 149). The sensors will measure the distance of the surrounding tissue. Since the movement of the devices is not claimed, the sensor can sense a distance of the end effector which can read on the depth.
As to claim 7, with the device of Conus and Koenig above, Conus discloses the depth subsystem further comprises or more one or more encoder magnets, one or more static nuts, or a combination thereof for sensing the depth of insertion of the surgical tool (paragraph 148, 149). An “encoder” is used with different mechanism to measure distance. The known distance sensor can have the magnet, and/or a nut, which can also read on a part of the robot that holds the device in place.
As to claim 8, with the device of Conus and Koenig above, Conus discloses the one or more characteristics of the surgical tool indicated by the one or more encoder sensors comprise a depth of insertion of the surgical tool between the target site and an internal point of the target site, a position of the surgical tool, a velocity of the surgical tool, or a combination thereof (paragraph 148,149).
As to claim 9, with the device of Conus and Koenig above, Koenig further teaches the axial force sensing subsystem is disposed within the housing (paragraph 40).
As to claim 10, with the device of Conus and Koenig above, Koenig further teaches the amount of resistance sensed by the axial force sensing subsystem indicated a presence of a tissue layer (paragraph 40).
As to claim 16, with the device of Conus and Koenig above, Conus discloses the depth sensing subsystem is disposed within the housing (paragraph 148,149, the tool incorporates the sensor, will be in the housing to track the housing). Koening can further provide evidence and/or teach the depth sensing subsystem can be disposed within the housing (paragraph 40, 92). The sensor can be disposed on the surgical tool, handle, or elsewhere in the device as needed. It would have been obvious to one of ordinary skill in the art before the effective filing date to have the depth sensing subsystem be disposed within the housing in order for providing the sensor in a location of the robotic system as desired.
As to claim 19, Conus discloses the device above but is silent about but is silent about the axial force sensing subsystem.
Koenig teaches a similar device (robot surgery) having an axial force sensing subsystem comprising one or more force sensors for sensing a pressure exerted by the surgical tool, for sensing an amount of resistance encountered by the surgical tool, or a combinations thereof (paragraph 40, 59) for the purpose of helping to control and/or position the end effector of the arm as desired. It would have been obvious to one of ordinary skill in the art before the effective filing date for Conus to include the axial force sensor in order for helping to control and/or position the end effector of the arm as desired.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 9-14, 16-18, 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,349,991. Although the claims at issue are not identical, they are not patentably distinct from each other.
As to the instant application’s claim 1, the reference patent is directed to a surgical tool (claim 1), comprising: a housing (claim 1) comprising a housing axis (claim 1) extending from a first end of the housing to a second end of the housing; a blade support tip (claim 1) extending from the first end of the housing in a direction away from the second end of the housing along the housing axis (claim 1); a blade (claim 1) disposed at least partially within the blade support tip, the blade comprising a sharpened edge; a rod (claim 1) comprising a blunt tip end (claim 1) and an actuation end (claim 1), wherein the actuation end is disposed within the housing (claim 1), and wherein the blunt tip end extends from the second end of the housing in a direction away from the first end of the housing along the housing axis (claim 1); a robot interface bracket (claim 1) coupled to the housing and comprising a robot mount flange (claim 1) having a tool rotation axis arranged perpendicular to the housing axis, wherein the surgical tool is rotatable about the tool rotation axis between a cutting position (claim 1) disposing the blade support tip in proximity to a target site and a tissue pathway creation position (claim 1) disposing the blunt tip end in proximity to the target site; an axial force sensing subsystem (claim 8) comprising one or more force sensors (claim 8) for sensing a pressure exerted by the surgical tool, for sensing an amount of resistance encountered by the surgical tool, or a combinations thereof (claim 8)
As to the instant application’s claim 2, see reference patent claim 1.
As to the instant application’s claim 9, see reference patent claim 8.
As to the instant application’s claim 10, see reference patent claim 9.
As to the instant application’s claim 11, see reference patent claim 1.
As to the instant application’s claim 12, 20, the reference patent claims a sterilizable surgical tool (claim 1, 10, 11, the tool is capable of being sterilized), comprising: a housing (claim 1, 11) comprising a housing axis (claim 1, 11) extending from a first end of the housing to a second end of the housing; a blade support tip (claim 1, 11) extending from the first end of the housing in a direction away from the second end of the housing along the housing axis (claim 1, 11); a blade (claim 1, 11) disposed at least partially within the blade support tip, the blade comprising a sharpened edge; a rod (claim 1, 11) comprising a blunt tip end (claim 1, 11) and an actuation end (claim 1, 11), wherein the actuation end is disposed within the housing (claim 1, 11), and wherein the blunt tip end extends from the second end of the housing in a direction away from the first end of the housing along the housing axis (claim 1, 11); a robot interface bracket (claim 1, 11) coupled to the housing and comprising a robot mount flange (claim 1, 11) having a tool rotation axis arranged perpendicular to the housing axis, wherein the surgical tool is rotatable about the tool rotation axis between a cutting position (claim 1, 11) disposing the blade support tip in proximity to a target site and a tissue pathway creation position (claim 1, 11) disposing the blunt tip end in proximity to the target site; and a depth sensing subsystem (claim 4, 14) comprising one or more encoder sensors that indicate one or more characteristics of the surgical tool.
As to the instant application’s claim 13, see reference patent claim 1.
As to the instant application’s claim 14, see reference patent claim 11.
As to the instant application’s claim 16, see reference patent claim 4, 14.
As to the instant application’s claim 17, see reference patent claim 5, 15.
As to the instant application’s claim 18, see reference patent claim 6, 16.
Claims 3-8, 15, 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,349,991 in view of U.S. Patent Publication 2017/0020615 to Koenig.
As to the instant application’s claims 3-8, the reference patent claims 1-7 is directed to the scope claims 3-8 but is silent about the axial force sensor in the respective claim chain.
Koenig teaches a similar device (robot surgery) having an axial force sensing subsystem comprising one or more force sensors for sensing a pressure exerted by the surgical tool, for sensing an amount of resistance encountered by the surgical tool, or a combinations thereof (paragraph 40, 59) for the purpose of helping to control and/or position the end effector of the arm as desired. It would have been obvious to one of ordinary skill in the art before the effective filing date for the claimed reference patent to include the axial force sensor in order for helping to control and/or position the end effector of the arm as desired.
As to the instant application’s claim 15, the reference patent claims the device of claim 3, 13 but is silent about the depth sensing subsystem in the respective claim chain.
Koenig teaches a similar device (robot surgery) having a depth sensing subsystem (paragraph 40, 59, the sensors can sense a position, or depth, of the arm) comprising one or more encoder sensors that indicate one or more characteristics of the surgical tool (paragraph 40, 59) for the purpose of helping to control and/or position the end effector of the arm as desired. It would have been obvious to one of ordinary skill in the art before the effective filing date for the claimed reference patent to include the depth sensing subsystem in order for helping to control and/or position the end effector of the arm as desired.
As to the instant application’s claim 19, the reference patent claims the device of claim 4, 14 but is silent about the axial force sensor in the respective claim chain.
Koenig teaches a similar device (robot surgery) having an axial force sensing subsystem comprising one or more force sensors for sensing a pressure exerted by the surgical tool, for sensing an amount of resistance encountered by the surgical tool, or a combinations thereof (paragraph 40, 59) for the purpose of helping to control and/or position the end effector of the arm as desired. It would have been obvious to one of ordinary skill in the art before the effective filing date for the claimed reference patent to include the axial force sensor in order for helping to control and/or position the end effector of the arm as desired.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Publication 2002/0102156 to Woodruff (as cited reference 6 in the IDS filed 11/06/2025), U.S. Patent Publication 2017/0086932 to Auld, and U.S. Patent 9,161,760 to Suarez (as cited reference 3 in the IDS filed 11/06/2025) all disclose similar devices pertinent to the scope of the claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER J ORKIN whose telephone number is (571)270-7412. The examiner can normally be reached Monday - Friday 9am - 5pm.
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/ALEXANDER J ORKIN/Primary Examiner, Art Unit 3771
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