DETAILED ACTION
The following Office Action is in response to the Preliminary Amendment filed on June 30, 2025. Claims 10-19 are currently pending.
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.
Claim Objections
Claim 19 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 10. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 10-14, 16, and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shelton, IV et al. (US 2021/0196365, hereinafter Shelton ‘365).
Concerning claims 10 and 19, the Shelton ‘365 prior art reference teaches a method to drive an actuator of an endoscopic system comprising: actuating an actuator motor ([¶ 0193]), that is operatively connected to an actuator (Figure 2; 1125), depending on a current position of an actuating unit of the endoscopic system when the actuating unit is actuated between a start position and an end position ([¶ 0193], actuating unit = trigger, which controls the actuator motor, which may move the actuator; open position = unactuated to a closed position = fully depressed) and when an actuator force exerted by the actuator does not exceed a limit value ([¶ 0195], jaws allowed to move below tissue damage threshold), ceasing actuation of the actuator motor when the actuating unit is actuated between the start position and the end position when an actuator force exerted by the actuator reaches or exceeds the limit value ([¶ 0192], control of jaws stops when tissue damage threshold is exceeded), and driving the actuator motor beyond a limit value, depending on an operating force exerted on the actuating unit, when the actuating unit is actuated in the end position ([¶ 0183], user may override lockout of the system to allow for further driving beyond the tissue damage limit).
Concerning claim 11, the Shelton ‘365 reference teaches the method of claim 10, wherein the actuation of the actuator is an opening and closing of forceps jaws ([¶ 0092]).
Concerning claim 12, the Shelton ‘365 reference teaches the method of claim 10, further comprising measuring an operating force exerted on the actuating unit ([¶ 0194], user input closure trigger speed = operating force exerted on the actuating unit).
Concerning claim 13, the Shelton ‘365 reference teaches the method of claim 12, wherein the measuring is based on the actuation of a trigger ([¶ 0193]), which would define a deformation of the actuating unit.
Concerning claim 14, the Shelton ‘365 reference teaches the method of claim 12, further comprising determining a current position of the actuating unit between the start position and end position ([¶ 0193], position between start and end position must be determined to determine input closure trigger speed).
Concerning claim 16, the Shelton ‘365 reference teaches the method of claim 10, wherein the limit value is realized by restricting the current conducted to the actuator motor ([¶ 0172]).
Concerning claim 18, the Shelton ‘365 reference teaches the method of claim 10, comprising a moveable grip member as part of the actuating unit (Figure 2; 1147).
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shelton, IV et al. (US 2021/0196365, hereinafter Shelton ‘365) in view of Shelton, IV et al. (US 2019/0201018, hereinafter Shelton ‘018).
Concerning claim 15, the Shelton ‘365 reference teaches the endoscopic system as claimed in claim 10, but does not specifically teach that the limit value can be set by the user.
However, the Shelton ‘018 reference teaches an endoscopic system similar to that of the Shelton ‘365 reference, wherein the Shelton ‘018 reference teaches that limit values may be fixed or predetermined, defined with respect to one or more other variables, or alternatively may be programmed or set by a user of the surgical instrument ([¶ 0696]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the limit value of the Shelton ‘365 reference set by a user as in the Shelton ‘018 reference given the Shelton ‘018 references teaches manual programming as an obvious alternative to fixed or predetermined values (Shelton ‘018; [¶ 0696]).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shelton, IV et al. (US 2021/0196365, hereinafter Shelton ‘365) in view of Roberson et al. (US 2018/0161060, hereinafter Roberson).
Concerning claim 17, the Shelton ‘365 reference teaches the endoscopic system as claimed in claim 1, but does not specifically teach the limit value being realized by way of a slip coupling or an adjustable overload spring.
However, the Roberson reference teaches an endoscopic system similar to that of the Shelton ‘365 reference, wherein the Roberson reference teaches a slip coupling utilized to realize a limit value ([¶ 0122]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the limit value of the Shelton ‘365 reference be realized by a slip coupling as the Roberson reference, given the Roberson reference teaches a slip coupling as a known structure for realizing a limit value (Roberson; [¶ 0122]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Diolaiti reference (US 2021/0162174) teaches a method of operating a robotic surgical device including multiple redundant sensors and thresholds wherein a threshold may be overridden with an exception ([¶ 0081]); the Anglese reference (US 2020/0237453) teaches a method of driving an actuator of a surgical device, wherein the actuator motor may continue to turn after a limit value is reached or exceeded ([¶ 0073]); the Schoettgen et al. reference (US 2019/0201022) teaches a manually operated surgical device with multiple sensors and a control unit having a limit value; and the Eckert et al. reference (US 2018/0049792) teaches a method for operating a surgical device including ceasing actuation upon reaching a limit value and driving an actuator motor beyond the limit value ([¶ 0038]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARTIN TRUYEN TON whose telephone number is (571)270-5122. The examiner can normally be reached Monday - Friday; EST 10:00 AM - 6:30 PM.
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/MARTIN T TON/Examiner, Art Unit 3771 9/30/2026
