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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 61662702, 61800527, 13924505, 14406707, 15095883, 15157444, 15609334, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. None of these applications teach the invention of claim 1 of which corresponds to the disclosure of the instant application with respect to Figures 20A-24. Accordingly, the claim is not entitled to the benefit of the prior applications. Claim 1 is therefore awarded the effective filing date of the application 15948013 of which has support for the claimed subject matter, April 9, 2018.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, line 1, requires a “method of operating a surgical robotic system”, but no steps of operating a surgical robotic system are claimed. As such, the scope sought by the invention is not clear. During examination, the interpretation given is that no robotic operational steps are required by the claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) collecting data, determining phases of a breathing cycle based on the collected data, and displaying the patient breathing. The claim requires these functions be performed based on position information of a “tracking device affixed to the patient”. This judicial exception is not integrated into a practical application because the collecting data and position tracking have been held by the courts to be abstract ideas (see Thales Visionix Inc. v. US, 850 F. 3d 1343 (Fed. Cir. 2017) with regard to position tracking and Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016) with regard to collection, processing, and display of data). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of the surgical end-effector and robotic arm are not used for anything in the claim or otherwise integrated with the abstract components (collecting, processing, and display of data). Further, there is no particular machine to carry out the position registration or data collection; the claimed “sensor system remote from the robotic arm” and “tracking device” are generic as claimed and tracking systems in general are well-known, routine and conventional in the surgical arts. Similarly, “display device” is generic and a well-known, routine and conventional component for displaying information. Further, the processing step of “detecting the plurality of phases of the breathing cycle as the tracking device moves due to the patient breathing” is a step that can be readily performed in the mind by observing a graphical representation of the position data. As such, there is nothing in the claim that amounts to significantly more than the abstract components of position data collection, observation, and display.
If a control step of operating the robot to perform a task based on the obtained data was added to the claimed invention, it would likely take the claimed invention out of the abstract idea grouping.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over US 20160157887 to Kim in view of US 7182083 to Yanof.
Regarding Claim 1, Kim teaches a method of operating a surgical robotic system including a robotic arm configured to position a surgical end-effector with respect to an anatomical location of a patient (robot arm with surgical interventional tool end effector 3, Figure 1), the method comprising:
receiving position information generated using a sensor system remote from the robotic arm and remote from the patient (camera 30, Figure 1 is separate from the robot 3 and separate from the patient 1, both physically and functionally since it has its own coordinate system), wherein the position information includes information relating to positions of a tracking device affixed to the patient (tracking device 11, Figure 1) and position of the surgical end-effector (tracking device 13, Figure 1) as the tracking device moves due to breathing of the patient (continuously tracking the patient-side optical tool 11 to determine respiration movement, par. 0045);
detecting the plurality of phases of the breathing cycle as the tracking device moves due to the patient breathing (respiration movement implicitly contains phase information of the breathing cycle, par. 0045).
However, Kim does not teach continuously displaying on a display device an indication of the patient breathing corresponding to movement of the tracking device based on the detection. Rather, Kim sounds an alarm when the movement is outside a threshold and/or stops the robot (par. 0044).
Yanof teaches monitoring breathing movements during an interventional medical procedure. Analogous to the body-attached movement sensor of Kim, Yanof teaches placement of a sensor on the patient’s chest and monitoring its relative position in a frame of reference (sensor 204, Figure 11). Yanof displays the breathing position information to the operator in image 46 (Figure 6a, 6b, 6c) which demonstrates the breathing phase (corresponding to the rise and fall of the patient’s chest). The movement is continuously displayed throughout the procedure in a graphical form in order to aid the operator in setting breathing parameters (e.g. breath hold duration, breathing capacity) and confirm if the patient achieved the desired breathing motions (e.g. correctly performed the breath hold, col. 7, lines 12-25).
As such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the continuous breathing display of Yanof in the system of Kim in order to provide the operator with information on the patient breathing to aid in achieving desired breathing motions like breath holding or minimizing patient movement during the procedure as in Yanof.
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11857149 in view of US 7182083 to Yanof.
Claim 1 of the patent teaches the limitations of claim 1 of the instant application except for the continuously displaying on a display device an indication of the patient breathing corresponding to movement of the tracking device based on the detection. While the patent claims continuously display information (e.g. claims 5-7), it is not expressly an indication of the patient breathing.
Yanof teaches monitoring breathing movements during an interventional medical procedure. Analogous to the body-attached movement sensor of the patent, Yanof teaches placement of a sensor on the patient’s chest and monitoring its relative position in a frame of reference (sensor 204, Figure 11). Yanof displays the breathing position information to the operator in image 46 (Figure 6a, 6b, 6c) which demonstrates the breathing phase (corresponding to the rise and fall of the patient’s chest). The movement is continuously displayed throughout the procedure in a graphical form in order to aid the operator in setting breathing parameters (e.g. breath hold duration, breathing capacity) and confirm if the patient achieved the desired breathing motions (e.g. correctly performed the breath hold, col. 7, lines 12-25).
As such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the continuous breathing display of Yanof in the method of the patent in order to provide the operator with information on the patient breathing to aid in achieving desired breathing motions like breath holding or minimizing patient movement during the procedure as in Yanof.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12458453 in view of US 7182083 to Yanof.
Claim 1 of the patent teaches the limitations of claim 1 of the instant application except for the continuously displaying on a display device an indication of the patient breathing corresponding to movement of the tracking device based on the detection.
Yanof teaches monitoring breathing movements during an interventional medical procedure. Analogous to the body-attached movement sensor of the patent, Yanof teaches placement of a sensor on the patient’s chest and monitoring its relative position in a frame of reference (sensor 204, Figure 11). Yanof displays the breathing position information to the operator in image 46 (Figure 6a, 6b, 6c) which demonstrates the breathing phase (corresponding to the rise and fall of the patient’s chest). The movement is continuously displayed throughout the procedure in a graphical form in order to aid the operator in setting breathing parameters (e.g. breath hold duration, breathing capacity) and confirm if the patient achieved the desired breathing motions (e.g. correctly performed the breath hold, col. 7, lines 12-25).
As such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the continuous breathing display of Yanof in the method of the patent in order to provide the operator with information on the patient breathing to aid in achieving desired breathing motions like breath holding or minimizing patient movement during the procedure as in Yanof.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20110015521 to Faul teaches breathing sensors and surgical robot for compensating the robotic movements with the breathing movement; US 20050267359 teaches breathing sensors and surgical robot, including robotic controls to synchronize the robot with the breathing.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA MARIE HOFFA whose telephone number is (571)270-7408. The examiner can normally be reached Monday - Friday 9:30 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Raymond can be reached at (571)270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANGELA M. HOFFA
Primary Examiner
Art Unit 3799
/Angela M Hoffa/ Primary Examiner, Art Unit 3799
