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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claim elements “an image module”, “image planning module”, “a motion control module”, “a pipeline and hydraulic power module”, “a biplanar ultrasound probe” and “a linear actuator” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, and “a pipeline and hydraulic power 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. 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 “...fit a boundary position trajectory pre-planned on the navigation image to generate a motion control position trajectory, and convert motion control position trajectory into a water jet cutter coordinate system, 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 “a jet flow axis” in line 15 and “...configured to transfer liquid...according to the motion position control in the jet flow axis sent by the motion control module and perform a suction motion...” lines 19-20 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 3, the claim limitations “a jet effective length”, “a jet long-axis position” and “a cross-sectional angle” 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 4, the claim limitation “a biplanar ultrasound probe” 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 does disclose an ultrasound probe (see par. [0390] of the PG Pub. version of the specification), but does not disclose a biplanar ultrasound probe.
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 6, the claim limitation “axial position of the nozzle” and “length of the liquid flow” 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 7-10 and 12-16 are rejected as they depend from rejected claim 5.
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” in claim 2, and “a pipeline and hydraulic power 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 in a jet flow axis, 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 in the jet flow axis 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 control parameters in the linear motion axis and the rotary motion axis sent by the motion control module, and the motion position control parameters in the jet flow axis.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Vetter et al. (US 2004/0059216) disclose method, device and navigation aid for navigation during medical interventions and Hodorek et al. (US 2007/0239153) disclose computer assisted surgery system using alternative energy technology.
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.
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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