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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“an imaging module” in claim 2, and all the dependent claims thereof;
“an image planning module” in claim 2, and all dependent claims thereof;
“a motion control module” in claim 2, and all dependent claims thereof;
“a pipeline and hydraulic power module” in claim 2, and all dependent claims thereof;
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 2, claim elements “an image planning module” in claim 2, “a motion control module” in claim 2 are limitations that invoke 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph. However, the written description fails to disclose the corresponding structure for the claimed function. Therefore, the applicant has not demonstrated possession of the structures which are intended to be used to accomplish the functions associated with each of the cited claim limitation elements.
Furthermore for claim 2, the claim limitations “... then perform calculation and send motion position trajectory parameters for each axis corresponding to water jet cutter jet action points” in lines 3-7 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Furthermore for claim 2, the claim limitations “...generate and send motion position trajectory parameters in a linear motion axis and a rotary motion axis to a water jet cutter head...” in lines 9-10 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Furthermore for claim 2, the claim limitations “...configured to perform respective motions according to the motion position control parameters in the linear motion axis and the rotary motion axis sent by the motion control module...” lines 17-19 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Furthermore for claim 2, the claim limitation “closed-loop control of the motion trajectory” in lines 12-13 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification discloses closed-loop and real-time automation which has the capabilities provided by robotic automation including resection volume registration within the organ (see par. [0143] of the PG pub. version of the specification), and further discloses closed loop pressure regulation system (see par. [0388] of the PG pub. version of the specification), but the specification does not explicitly disclose a closed loop control of the motion trajectory.
Regarding claim 5, the claim limitations “...generate treatment reference location parameters corresponding to reference points of a nozzle configured to provide treatment; generate path parameters for longitudinal axis and angular rotation from the treatment reference location parameters and provide path parameters to the nozzle; and generate control parameters for aspiration and control parameters for liquid flow from the treatment reference location parameters” in lines 8-13 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Furthermore for claim 5, the claim limitation “...the nozzle is configured to...according to the control parameters for liquid flow and perform movements according to the path parameters for the longitudinal axis and angular rotation” in lines 16-18 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 11, the claim limitation “closed-loop automation to control movement of the nozzle along the treatment profile” in lines 12-13 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification discloses closed-loop and real-time automation which has the capabilities provided by robotic automation including resection volume registration within the organ (see par. [0143] of the PG pub. version of the specification), and further discloses closed loop pressure regulation system (see par. [0388] of the PG pub. version of the specification), but the specification does not explicitly disclose closed-loop automation to control movement of the nozzle along the treatment profile.
Claims 3-4, 6-10 and 12-16 are rejected as they depend from rejected claim 5 and 2.
Claims 2-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 2, claim elements “an image planning module” in claim 2, “a motion control module” are limitations that invoke 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph. However, the written description fails to disclose the corresponding structure for the claimed function and therefore the claim is indefinite because it is unclear what applicant intends to use to accomplish the claimed functions.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 3-4 are rejected as they depend from rejected claim 2.
Allowable Subject Matter
As best understood, claims 2-4 and 5-16 are free of art. However, they are also subject to rejections under 35 U.S.C. 112. Given the written description issues and indefiniteness of the claims, lack of prior art is not an admittance of allowability.
Regarding claim 2, the closest prior art Vetter et al. (US 2004/0059216) disclose a device and method and navigation aid for navigation during medical intervention (see fig. 1) and shows water jet cutting system (see par. [0049]), comprising: an imaging module (see par. [0040]), configured to generate a navigation image (see fig. 2 and 3; par. [0042], [0043]); an image planning module (see fig. 2 and 3; par. [0042]-[0043]), configured to fit a boundary position trajectory pre-planned on the navigation image to generate motion control position trajectory (see fig. 2 and 3; par. [0042]-[0046]), and convert the motion control position trajectory into a water jet cutter coordinate system (see fig. 3); a motion control module (see fig. 2 and 3; par. [0029]-[0032]), configured to receive the motion position trajectory parameters for each axis (see fig. 3), but Vetter and none of the prior art in record or combination thereof explicitly disclose that the motion control module configured to generate and send motion position trajectory parameters in a linear motion axis and a rotary motion axis to a water jet cutter head, and send motion position control parameters, and further configured to acquire the motion position trajectory parameters for each axis of the water jet cutter head for closed-loop control of the motion trajectory; a pipeline and hydraulic power module, configured to transfer liquid to the water jet cutter head according to the motion position control parameters sent by the motion control module and perform a suction motion; and a water jet cutter head, configured to perform respective motions according to the motion position trajectory parameters in the linear motion axis and the rotary motion axis sent by the motion control module, and the motion position control parameters.
Regarding claim 5, the closest prior art Vetter et al. (US 2004/0059216) disclose a device and method and navigation aid for navigation during medical intervention (see fig. 1) and shows water jet cutting system (see par. [0049]), comprising: an imaging module (see par. [0040]), configured to image a treatment side (see fig. 2 and 3; par. [0042], [0043]); and one or more processors (see par. [0017]) configured to: provide on a display an image of the treatment site and receive a treatment profile determined by a user based on the image (see fig. 2 and 3; par. [0042], [0043]); determine an image reference frame that aligns with the treatment profile (see fig. 2); map the image reference frame to a treatment coordinate reference frame to generate treatment reference location parameters corresponding to reference points of a nozzle configured to provide treatment (see fig. 2 and 3; par. [0029]-[0032], [0042], [0043]), but Vetter and none of the prior art in record or combination thereof explicitly disclose generate path parameters for longitudinal axis and angular rotation from the treatment reference location parameters and provide path parameters to the nozzle; and generate control parameters for aspiration and control parameters for liquid flow from the treatment reference location parameters; and a suction pump configured to aspirate according to the control parameters for aspiration, wherein the nozzle is configured to transfer liquid according to the control parameters for liquid flow and perform movements according to the path parameters for the longitudinal axis and angular rotation.
Response to Arguments
Upon further consideration and in view of Applicants remark filed on 04/29/2026, the previous objection to drawing has been withdrawn.
Upon further consideration and in view of Applicants remark filed on 04/29/2026, the previous rejection under 35 USC 112 (a) and (b) to claims 3-4 has been withdrawn.
Applicant's arguments filed 04/29/2026 have been fully considered but they are not persuasive.
The examiner maintains that claim elements “an image planning module” in claim 2 and “a motion control module” in claim 2 are limitations that invoke 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph. However, the written description fails to disclose the corresponding structure for the claimed function. The Applicant on pages 9-10 states that the image planning module is a processor and the motion control module is linkage 430 and controller 424, however, the examiner notes that the specification does not disclose all the intended recited functions to be used to accomplish associated with each of the cited claim limitation elements.
Furthermore, the examiner has maintains that claim limitations “... then perform calculation and send motion position trajectory parameters for each axis corresponding to water jet cutter jet action points” in lines 3-7 of claim 2 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The applicant argues on pages 9-10 the specification discloses treatment reference frame of the treatment probe such as the cylindrical coordinate reference R, Z, theta and image coordinate reference of X1, Y1, Z1, however, the specification does not disclose plural of motion position trajectory parameters for each axis. Furthermore, on top of page 10, the Applicant argues that the specification discloses treatment locations along the z-axis and depths of treatments, but z-axis is one axis but the claim requires plural of control parameters in each axis (at least plural of axis).
Furthermore, the examiner maintains that the claim limitation “...generate and send motion position trajectory parameters in a linear motion axis and a rotary motion axis to a water jet cutter head...” in lines 9-10 of claim 2 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. On page 10, the Applicant argues that par. [0312] and fig. 21J disclose scan path 846 may correspond to the velocity of the carrier 382 of the treatment probe along the Z-axis and the rotation of the carrier around the Z-axis, however, Z-axis is one axis but the claim requires plural of control parameters in each axis and claim requires plural of motion position trajectory parameters for each axis (at least plural of axis).
Furthermore, the examiner maintains that the claim limitation “...configured to perform respective motions according to the motion position control parameters in the linear motion axis and the rotary motion axis sent by the motion control module...” lines 17-19 of claim 2 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. On page 11, the Applicant states that par. [03120 and figure 21J discloses scan path 846 may correspond to the velocity of the treatment probe along the Z-axis and the rotation of the carrier of the treatment probe around the Z-axis, but the specification does not disclose that the water jet cutter head by itself is configured to perform respective motion of the treatment probe according to the motion position control parameter.
Furthermore, the examiner maintains that the claim limitation “closed-loop control of the motion trajectory” in lines 12-13 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. On page 12, the Applicant cites paragraph [0309], [0310, [0311], [0316], and [0378] and argues that these paragraph disclose closed-loo[ control of motion trajectory, however, these paragraph merely disclose control of motion trajectory but not closed-loop automation control. The specification discloses closed-loop and real-time automation which has the capabilities provided by robotic automation including resection volume registration within the organ (see par. [0143] of the PG pub. version of the specification), and further discloses closed loop pressure regulation system (see par. [0388] of the PG pub. version of the specification), but the specification does not explicitly disclose a closed loop control of the motion trajectory.
Furthermore, the examiner maintains that the claim limitation “... generate path parameters for longitudinal axis and angular rotation from the treatment reference location parameters and provide path parameters to the nozzle” in lines 10-11 of claim 5 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. On page 13, the Applicant cites paragraph [0312] and figure 21J and argues that the specification discloses scan path 846 may correspond to the velocity of the carrier 382 along the Z-axis and the rotation of the carrier 382 around the Z-axis, however, the claim requires plural of reference location parameters and path parameters, and velocity along the Z-axis is on parameter.
Furthermore, the examiner maintains that the claim limitation “...the nozzle is configured to...according to the control parameters for liquid flow and perform movements according to the path parameters for the longitudinal axis and angular rotation” in lines 16-18 of claim 5 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. On page 14, the Applicant cites figure 21J and par. [0312] and argues that the specification discloses scan path 846 may correspond to the velocity of the carrier 382 along the Z-axis and the rotation of the carrier 382 around the Z-axis, however, the specification does not explicitly disclose that the nozzle itself can perform movements according to the path parameters for the longitudinal axis and angular rotation.
Furthermore, the examiner maintains that the claim limitation “closed-loop automation to control movement of the nozzle along the treatment profile” in lines 12-13 of claim 11was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. On page 12, the Applicant cites paragraph [0309], [0310, [0311], [0316], and [0378] and argues that these paragraph disclose closed-loop control of motion trajectory, however, these paragraph merely disclose control of motion trajectory but not closed-loop automation control. The specification discloses closed-loop and real-time automation which has the capabilities provided by robotic automation including resection volume registration within the organ (see par. [0143] of the PG pub. version of the specification), and further discloses closed loop pressure regulation system (see par. [0388] of the PG pub. version of the specification), but the specification does not explicitly disclose a closed loop control of the motion trajectory.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAHDEEP MOHAMMED whose telephone number is (571)270-3134. The examiner can normally be reached Monday to Friday, 9am to 5pm.
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, Anne M Kozak can be reached at (571)270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAHDEEP MOHAMMED/Primary Examiner, Art Unit 3797
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