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 .
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 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10-14 of U.S. Patent No. 12,376,921. Although the claims at issue are not identical, they are not patentably distinct from each other because patent ‘921 anticipates the subject matter in the instant claims. Claim 2 recites a medical system comprising: a mobile medical apparatus comprising manipulators configured to removably mount one or more medical instruments (encompassed by mobile cart in claim 1 of ‘921); one or more object detection devices mounted on the mobile medical apparatus, the one or more object detection devices configured to detect an object in a trajectory of movement of the mobile medical apparatus relative to a ground surface (encompassed by object detection device in claim 1 of ‘921); and a control system operably coupled to the one or more object detection devices and the mobile medical apparatus, the control system configured to automatically control movement of the mobile medical apparatus based on detection of an object in the trajectory movement of the mobile medical apparatus by the one or more object detection devices (encompassed by control system in claim 1 of ‘921). Claim 3 is encompassed by claim 2 of ‘921. Claim 4 is encompassed by claim 3 of ‘921. Claim 5 is encompassed by claim 4 of ‘921. Claim 6 is encompassed by claim 5 of ‘921. Claim 7 is encompassed by claim 6 of ‘921. Claim 8 is encompassed by claim 7 of ‘921. Claim 9 is encompassed by claim 8 of ‘921. With respect to claim 9, ‘921 does not recite a plurality of object detection devices, however, a duplication in parts is well within the skill level of one of ordinary skill in the art (MPEP 2144.04(VI)(B)). Therefore, it would have been obvious to one of ordinary skill in the art to have provided a plurality of object detection devices as a duplication of parts is well within the skill level of one of ordinary skill in the art. Claim 11 is encompassed by claim 10 of ‘921. Claim 12 is encompassed by claim 10 of ‘921. Claims 13-16 (claims recite intended use) is encompassed by claim 10 of ‘921. Claim 17 is encompassed by claim 14 of ‘921. Claim 18 is encompassed by claim 13 of ‘921. Claim 19 is encompassed by claims 1 and 8 of ‘921. Claim 20 is encompassed by claim 11 of ‘921. Claim 21 is encompassed by claim 12 of ‘921.
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(s) 2 and 6-8, 11, and 14-18 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Griffiths et al. (US 2014/0297130).
Griffiths et al. discloses a medical system comprising: a mobile medical apparatus (100) comprising a column extending from a base, the column having a first end connected to the base and a second end opposite the first end (Fig. 2); manipulators (140) configured to removably mount to one or more medical instruments ([0036]); one or more object detection devices mounted on the mobile medical apparatus, the one or more object detection devise configured to detect an object in a trajectory of movement of the mobile medical apparatus relative to a ground surface ([0105]); and a control system operably coupled to the one or more object detection devices and the mobile medical apparatus, the control system configured to automatically control movement of the mobile medical apparatus based on detection of an object in the trajectory of movement of the mobile medical apparatus by the one or more object detection devices ([0043-0044]).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3-4 and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Griffiths et al. (US 2014/0297130) in view of Koselka et al. (US 2005/0216126).
Griffiths et al. discloses the subject matter substantially as claimed except for one or more object detection devices by physical contact with the object; chosen from at least one of a contact switch, a resistive touch sensor, an accelerometer, or a force or torque sensor. However, Koselka et al. teaches in the same field of endeavor touch sensors to detect objects in order to augment the camera system and to provide additional information regarding the environment ([0041]). Therefore, it would have been obvious to one of ordinary skill in the art to have provided Griffiths et al. with the touch sensors as taught by Koselka et al. in order to augment the camera system and provide additional information regarding the environment ([0041]).
Claim(s) 9 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Griffiths et al. (US 2014/0297130) in view of Alexandrescu (US 6,272,368).
Griffiths et al. discloses the subject matter substantially as claimed except for one or more imaging devices to detect the object. However, Alexandrescu. teaches in the same field of endeavor an imaging device (13) for collecting information objects to prevent collision (col. 3, lines 19-36). Therefore, it would have been obvious to one of ordinary skill in the art to have provided Griffiths et al. with the imaging device as taught by Alexandrescu as it is well known for imaging to detect objects in order to avoid collisions (col. 3, lines 19-36).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Griffiths et al. (US 2014/0297130).
Griffiths et al. discloses the subject matter substantially as claimed except for a plurality of object detection devices. However, a duplication of parts is well within the skill level of one of ordinary skill in the art (MPEP 2144.04(VI)(B)). Therefore, it would have been obvious to one of ordinary skill in the art to provided Griffiths et al. with a plurality of object detection devices as a duplication of parts is well within the skill level of one of ordinary skill in the art (MPEP 2144.04(VI)(B).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER LUONG whose telephone number is (571)270-1609. The examiner can normally be reached M-F 9-6.
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, Anhtuan T Nguyen can be reached at (571)272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER LUONG/ Primary Examiner, Art Unit 3797
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