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 Objections
Claim 4 is objected to because of the following informalities: Line 3 of claim 4 recites “a plurality of drive members that proximal of the proximal end portion…”. Examiner suggests amending the claim to recite “a plurality of drive members [[that]] located proximal [[of]] to the proximal end portion…”. Appropriate correction is respectfully requested.
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) 2-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blumenkranz et al (US 2013/0291654) hereinafter Blumenkranz.
Regarding claim 2, Blumenkranz discloses a surgical instrument comprising:
a force sensor (Fig. 5A: force sensor apparatus 300) comprising a beam (Fig. 5D: ribs 302) and a strain gauge (strain gauge 304) on the beam ([0064-0065] ribs 302 may extend along the entire length of tube 306 (examiner notes this would form a beam) and strain gauges 304 are mounted to an outer rib surface 302a),
the beam comprising a proximal end and a distal end ([0065] ribs 302 may extend along the entire length of the tube; [0075] proximal and distal portion of the tube 306 (examiner notes the tube 306 would necessarily have proximal and distal ends and the beam formed by the ribs would also necessarily have proximal and distal ends)), and
a center axis of the beam being defined between the proximal end and the distal end of the beam ([0064] Ribs 302 run along and radiate from the z-axis centerline of tube 306);
a proximal anchor coupled to the proximal end of the beam ([0065], [0075]; Examiner notes the proximal end of tube 306 would contain a rib 302 acting as a proximal anchor),
the proximal anchor comprising a first plurality of guide holes ([0065] Ribs 302 form four through passages 308);
a distal anchor coupled to the distal end of the beam ([0065], [0075]; Examiner notes the distal end of tube 306 would contain a rib 302 acting as a distal anchor),
the distal anchor comprising a second plurality of guide holes aligned with the first plurality of guide holes ([0065] Ribs 302 form four through passages 308); and
a plurality of cables ([0065] actuation cables),
each cable of the plurality of cables extending through a respective guide hole of the first plurality of guide holes and through a respective guide hole of the second plurality of guide holes ([0065] Ribs 302 form four through passages 308 for passage of actuation cables), and
each cable of the plurality of cables constrained to extend spaced apart from the strain gauge by the respective guide hole of the first plurality of guide holes and the respective guide hole of the second plurality of guide holes (Fig. 5D; [0064] strain gauges 304 are mounted to an outer rib surface 302a; [0065] ribs 302 form internal through passages 308 for actuation cables along the length of the tube 306).
Regarding claim 3, Blumenkranz discloses the strain gauge is on an exterior surface of the beam ([0064] strain gauges 304 are mounted to an outer rib surface 302a); and
each cable from the plurality of cables extends exterior to the exterior surface of the beam between the proximal anchor and the distal anchor ([0065] Ribs 302 form four through passages 308 for passage of actuation cables; Examiner notes that Fig. 5D shows passages 308 being external to the beam formed by the rib 302).
Regarding claim 4, Blumenkranz discloses a shaft (Fig. 5A: shaft 310) comprising a proximal end portion and a distal end portion ([0063-0064] proximal end and distal end of rigid shaft 310);
a plurality of drive members ([0051] drive assemblies) that proximal of the proximal end portion of the shaft ([0063] A housing 150 (FIG. 5E) is operably coupled to a proximal end of a rigid shaft 310, the housing 150 further including an interface 152 which mechanically and electrically couples the instrument to the manipulator); and
an end effector (Fig. 5A: end portion 320) that is distal of the distal anchor ([0063] end portion 320, such as a surgical end effector, is coupled to force sensor apparatus 300 via a wrist joint 321; Fig. 5A shows end portion 320 being distal to the distal end of the tube 306 containing the distal anchor),
each cable of the plurality of cables is coupled to a corresponding drive member of the plurality of drive members ([0078] motions as well as actuation of an end effector are provided via cables, wires, tubes, and/or rods running through passages 308 and into the housing that transfer motion from the manipulator arm); and
each cable of the plurality of cables is coupled to the end effector ([0078] motions as well as actuation of an end effector are provided via cables).
Regarding claim 5, Blumenkranz discloses a shaft (Fig. 5A: shaft 310) comprising a proximal end portion and a distal end portion ([0063-0064] proximal end and distal end of rigid shaft 310),
the shaft comprising a longitudinal shaft center axis (Z-axis) extending between the proximal end portion and the distal end portion ([0065] z-axis centerline of tube 306; Examiner notes Fig. 5A shows shaft 310 and tube 306 sharing the same longitudinal axis));
the force sensor (Fig. 5A: force sensor 300) is located at least partially within the distal end portion of the shaft ([0064] force sensor apparatus 300 includes a generally annular tube 306 operably coupled to a distal end of rigid shaft 310); and
the center axis of the force sensor is coaxial with the longitudinal shaft center axis ([0065] z-axis centerline of tube 306; Examiner notes Fig. 5A shows shaft 310 and force sensor 300 (containing tube 306) sharing the same longitudinal axis).
Regarding claim 6, Blumenkranz discloses a manipulator unit (Fig. 5E: manipulator unit 152) to manipulate the surgical instrument operably coupled to the manipulator unit ([0063] interface 152 which mechanically and electrically couples the instrument to the manipulator); and
a user console (Fig. 1A: surgeon's console 90) comprising one or more input devices (Fig. 1A: manipulator assemblies) to control movement of an end effector of the surgical instrument ([0035] console 90 for allowing the surgeon S to view the surgical site and to control the manipulator assemblies 51),
wherein one or more forces measured by the force sensor are provided as feedback to a user via at least one of the one or more input devices of the user console ([0035-0036] Position, force, and tactile feedback sensors (not shown) may also be employed on instrument assemblies 54 (operably coupled to manipulator assemblies 51) to transmit position, force, and tactile sensations from the surgical instrument back to the surgeon's hands).
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.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19 and 23 of U.S. Patent No. 12,419,713. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the claims of U.S. Patent No. 12,419,713.
Instant Application 19/316507
U.S. Patent No. 12,419,713
Claim 2
A surgical instrument comprising:
Claim 19
A surgical instrument comprising:
a force sensor comprising a beam and a strain gauge on the beam, the beam comprising a proximal end and a distal end, and a center axis of the beam being defined between the proximal end and the distal end of the beam;
a force sensor comprising a beam and one or more strain gauges on the beam, the beam comprising a proximal end and a distal end, and a center axis of the beam being defined between the proximal end and the distal end of the beam;
a proximal anchor coupled to the proximal end of the beam, the proximal anchor comprising a first plurality of guide holes;
a proximal anchor coupled to the proximal end of the beam, the proximal anchor comprising a first plurality of guide holes;
a distal anchor coupled to the distal end of the beam, the distal anchor comprising a second plurality of guide holes aligned with the first plurality of guide holes; and
a distal anchor coupled to the distal end of the beam, the distal anchor comprising a second plurality of guide holes aligned with the first plurality of guide holes; and
a plurality of cables,
a plurality of cables,
each cable of the plurality of cables extending through a respective guide hole of the first plurality of guide holes and through a respective guide hole of the second plurality of guide holes, and
each cable of the plurality of cables extending through a corresponding unique guide hole of the first plurality of guide holes and through a corresponding unique guide hole of the second plurality of guide holes, and
each cable of the plurality of cables constrained to extend spaced apart from the strain gauge by the respective guide hole of the first plurality of guide holes and the respective guide hole of the second plurality of guide holes.
each cable of the plurality of cables constrained to remain parallel to the center axis of the beam by the corresponding unique guide hole of the first plurality of guide holes and the corresponding unique guide hole of the second plurality of guide holes
Claim 23
…each cable of the plurality of cables is constrained to extend radially outwardly from the one or more strain gauges.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13, and 16 of U.S. Patent No. 12,419,713. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the claims of U.S. Patent No. 12,419,713.
Instant Application 19/316507
U.S. Patent No. 12,419,713
Claim 7
Claim 1
A surgical instrument comprising:
A surgical instrument comprising:
a force sensor comprising a beam and a strain gauge on the beam,
a force sensor comprising a beam and one or more strain gauges on the beam
the beam comprising a proximal end, a distal end, and an exterior surface, and
the beam comprising a proximal end, a distal end, and an exterior surface, and
a center axis of the beam being defined by the proximal end and the distal end of the beam;
a center axis of the beam being defined by the proximal end and the distal end of the beam;
a proximal anchor coupled to the proximal end of the beam and defining a cutout region;
a proximal anchor coupled to the proximal end of the beam;
Claim 13
proximal anchor comprises a second hole, and the first and second holes of the proximal anchor are arranged in a pattern
a distal anchor coupled to the distal end of the beam and defining an opening aligned with the cutout region of the proximal anchor;
Claim 1
a distal anchor coupled to the distal end of the beam;
Claim 13
the distal anchor comprises a second hole, and the first and second holes of the distal anchor are arranged in the pattern;
a guide slot insert comprising a guide slot and
having an engagement surface received within the cutout region of the proximal anchor, the guide slot being aligned with the opening of the distal anchor;
Claim 16
the surgical instrument further comprises a proximal guide slot insert coupled to the proximal anchor; the proximal guide slot insert comprises a first guide slot and a second guide slot; the first guide slot is aligned with the first hole of the proximal anchor, and the second guide slot is aligned with the second hole of the proximal anchor;
an end effector component disposed distally of the distal anchor; and
Claim 1
an end effector component distal of the distal anchor and coupled to the distal end of the beam;
a cable coupled to impart movement of the end effector component,
a cable coupled to impart movement of the end effector component,
wherein the cable extends through the guide slot and the opening in the distal anchor and is constrained to extend spaced apart from the strain gauge on the beam.
wherein the cable extends through the proximal anchor and the distal anchor and is thereby constrained to extend radially outwardly from the one or more strain gauges and parallel to the center axis of the beam.
Allowable Subject Matter
Claims 13-19 are allowed.
Claims 8-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 7, Blumenkranz discloses a surgical instrument comprising:
a force sensor (Fig. 5A: force sensor apparatus 300) comprising a beam (Fig. 5D: ribs 302) and a strain gauge (strain gauge 304) on the beam ([0064-0065] ribs 302 may extend along the entire length of tube 306 (examiner notes this would form a beam) and strain gauges 304 are mounted to an outer rib surface 302a),
the beam comprising a proximal end, a distal end ([0065] ribs 302 may extend along the entire length of the tube; [0075] proximal and distal portion of the tube 306 (examiner notes the tube 306 would necessarily have proximal and distal ends and the beam formed by the ribs would also necessarily have proximal and distal ends)), and an exterior surface (Fig. 5D shows passages 308 which are formed around the exterior of the beam created by ribs 302), and
a center axis of the beam being defined by the proximal end and the distal end of the beam ([0064] Ribs 302 run along and radiate from the z-axis centerline of tube 306);
a proximal anchor coupled to the proximal end of the beam ([0065], [0075]; Examiner notes the proximal end of tube 306 would contain a rib 302 acting as a proximal anchor) and defining a cutout region ([0065] Ribs 302 form four through passages 308);
a distal anchor coupled to the distal end of the beam ([0065], [0075]; Examiner notes the distal end of tube 306 would contain a rib 302 acting as a distal anchor) and defining an opening aligned with the cutout region of the proximal anchor ([0065] Ribs 302 form four through passages 308);
an end effector component (Fig. 5A: end portion 320) disposed distally of the distal anchor ([0063] end portion 320, such as a surgical end effector, is coupled to force sensor apparatus 300 via a wrist joint 321; Fig. 5A shows end portion 320 being distal to the distal end of the tube 306 containing the distal anchor); and
a cable coupled to impart movement of the end effector component ([0078] motions as well as actuation of an end effector are provided via cables).
Blumenkranz fails to disclose a guide slot insert comprising a guide slot and having an engagement surface received within the cutout region of the proximal anchor, the guide slot being aligned with the opening of the distal anchor;
wherein the cable extends through the guide slot and the opening in the distal anchor and is constrained to extend spaced apart from the strain gauge on the beam.
Lambrecht et al (US 2019/0274781) discloses a guide slot comprising a guide slot ([0031] cable guide 330) and having an engagement surface received with the cutout region of the proximal anchor ([0031] When cable guide 330 is pushed up against flush cap 230, the overlap of holes 232 in cap 230 with corresponding U-shaped notches 332 creates through holes 432 that snuggly fit around cables 242 as shown in FIG. 4C). However, Lambrecht fails to disclose a guide slot and having an engagement surface received within the cutout region of the proximal anchor, the guide slot being aligned with the opening of the distal anchor; wherein the cable extends through the guide slot and the opening in the distal anchor and is constrained to extend spaced apart from the strain gauge on the beam.
Regarding claim 13, Blumenkranz discloses a surgical instrument comprising:
a shaft (Fig. 5A: shaft 310) comprising a proximal end portion and a distal end portion ([0063-0064] proximal end and distal end of rigid shaft 310);
a force sensor (Fig. 5A: force sensor 300) coupled to the distal end portion of the shaft ([0064] force sensor apparatus 300 includes a generally annular tube 306 operably coupled to a distal end of rigid shaft 310),
the force sensor comprising a beam (Fig. 5D: ribs 302) and one or more strain gauges (strain gauge 304) on the beam ([0064-0065] ribs 302 may extend along the entire length of tube 306 (examiner notes this would form a beam) and strain gauges 304 are mounted to an outer rib surface 302a),
the beam comprising a proximal end, a distal end ([0065] ribs 302 may extend along the entire length of the tube; [0075] proximal and distal portion of the tube 306 (examiner notes the tube 306 would necessarily have proximal and distal ends and the beam formed by the ribs would also necessarily have proximal and distal ends)), and an exterior surface (Fig. 5D shows passages 308 which are formed around the exterior of the beam created by ribs 302), and
a center axis of the beam being defined between the proximal end of the beam and the distal end of the beam ([0064] Ribs 302 run along and radiate from the z-axis centerline of tube 306);
a distal anchor ([0065], [0075]; Examiner notes the distal end of tube 306 would contain a rib 302 acting as a distal anchor) coupled to the distal end of the beam ([0075] distal end of tube 306) and defining an opening ([0065] Ribs 302 form four through passages 308);
a guide slot insert comprising a guide slot received within the distal end portion of the shaft,
the guide slot and a portion of a shaft wall defining a guide hole aligned with the opening of the distal anchor;
an end effector component (Fig. 5A: end portion 320) disposed distally of the distal anchor ([0063] end portion 320, such as a surgical end effector, is coupled to force sensor apparatus 300 via a wrist joint 321; Fig. 5A shows end portion 320 being distal to the distal end of the tube 306 containing the distal anchor); and
a cable coupled to impart movement of the end effector component ([0078] motions as well as actuation of an end effector are provided via cables).
Blumenkranz fails to disclose a guide slot insert comprising a guide slot received within the distal end portion of the shaft,
the guide slot and a portion of a shaft wall defining a guide hole aligned with the opening of the distal anchor;
wherein the cable extends through the guide hole and the opening of the distal anchor and is constrained to extend spaced apart from the one or more strain gauges on the beam.
Lambrecht et al (US 2019/0274781) discloses a guide slot comprising a guide slot ([0031] cable guide 330) being aligned with the opening of the distal anchor ([0031] When cable guide 330 is pushed up against flush cap 230, the overlap of holes 232 in cap 230 with corresponding U-shaped notches 332 creates through holes 432 that snuggly fit around cables 242 as shown in FIG. 4C). However, Lambrecht fails to disclose a guide slot insert comprising a guide slot received within the distal end portion of the shaft,
the guide slot and a portion of a shaft wall defining a guide hole aligned with the opening of the distal anchor;
wherein the cable extends through the guide hole and the opening of the distal anchor and is constrained to extend spaced apart from the one or more strain gauges on the beam.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lambrecht et al (US 2019/0274781) discloses a cable guide meant to be flush against a cap 230 through which actuation cables travel [0031].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLOW GRACE WELCH whose telephone number is (703)756-1596. The examiner can normally be reached Usually M-F 8:00am - 4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Klein can be reached at 571-270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLOW GRACE WELCH/Examiner, Art Unit 3792 /William J Levicky/Primary Examiner, Art Unit 3796
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