The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sjostrom et al, US Patent No. 5,749,885.
Regarding claim 1, Sjostrom et al disclose a surgical instrument with embedded coding element comprising: four magnets embedded within holes of a plastic hub of the surgical instrument; and a set of sensors mounted in walls of a hand-piece of the surgical instrument, wherein the sensors detects at least one of a presence or absence of the magnets and a code by the position of a polarity of magnets which indicate a set of operating conditions of the surgical instrument (See column 3, line 56 - column 8, line 67; claims 1-33; figures 1-16); the sensors detect at least one of a presence or absence of the magnets and a code by position of a polarity of magnets which indicate a set of operating conditions of the surgical instrument (See column 3, line 56 - column 6, line 47; figures 1-3D), the magnets and sensors can be easily applied to the cannula and surgical system; a cylindrical wall of the hub of the surgical instrument engageable with a cylindrical chamber in the hand-piece, wherein the magnets are located in the hub (See column 3, line 56 - column 6, line 47; figures 1-3D); the hub of the surgical instrument engageable with the cylindrical chamber in the hand-piece (See column 3, line 56 - column 6, line 47; figures 1-3D); a round plastic cap covering the magnets (See column 6, lines 4-28; figures 3A-3B); Sjostrom et al further disclose the sensors being Hall effect devices (See column 5, lines 34-36), that a set of sensors detects at least one of a presence or absence of the magnets and a code by position of a polarity of magnets which indicate a set of operating conditions of the surgical instrument (See column 3, line 56 - column 6, line 47; figures 1-3D); the sensor group comprising the presence and polarity sensors and the unipolar polarity sensors, and the reader comprising the omni polar polarity or the magnetic field direction sensor, that the sensors detect the presence or the absence of the magnets for receiving a set of operating conditions of the surgical instrument (See column 3, line 56 - column 6, line 47; figures 1-3D), that the position of the magnet has any of three coding states: magnet absent, magnet present with north (N) pole facing radially outwardly, and magnet present with south (S) pole facing radially outwardly (See column 5, lines 34-43; figures 1-3D).
Sjostrom et al fail to disclose that the attachment portion protruding radially outward from one side of the bowl portion, including the specific position of each sensor, each and every type of sensor, the specific number of sensors, material, shape, size, etc., and the specific components of a patient side cart and the magnet and a reader applied to the cannula and an arm.
However, these limitations are either a matter of choices for meeting specific customer requirements, a duplication of elements for achieving a required results. Furthermore, the components of the patient side cart are auxiliary technical features derived by a person skilled in the art. Also, considering that the sensors detects at least one of a presence or absence of the magnets and a code by position of a polarity of magnets which indicate a set of operating conditions of the surgical instrument (See column 3, line 56 - column 6, line 47; figures 1-3D), the magnet and the reader can be easily applied to the cannula and the arm by a person skilled in the art. Therefore, it would have been an obvious extension as taught by the prior art.
Regarding claims 2-3, the information relating to canula includes specific parameters, such as type of canula, shape and size. Each canula is manufactured with at least a size and shape (see Figs. 1, 13-14).
Regarding claims 4-5, wherein the one or more magnets are arranged so as to be within sensing proximity to a respectively corresponding magnet sensor in a state of the attachment portion inserted into the receptacle of the cannula mount, wherein the information relating to the cannula is encoded at least partially based on one or both of a magnetic field orientation or a polarity of each of the one or more magnets, wherein the one or more magnets comprise a plurality of magnets and the information relating to the cannula is encoded based on one or more of a magnetic field orientation of each of the plurality of magnets, a magnetic field polarity of each of the plurality of magnets a position of each of the plurality of magnets, or a presence or absence of each of the plurality of magnets, and wherein the one or more magnets encode a series of characters corresponding to the information relating to the cannula. (four magnets embedded within holes of a plastic hub of the surgical instrument; and a set of sensors mounted in walls of a hand-piece of the surgical instrument, wherein the sensors detects at least one of a presence or absence of the magnets and a code by the position of a polarity of magnets which indicate a set of operating conditions of the surgical instrument (See column 3, line 56 - column 8, line 67; claims 1-33; figures 1-16); the sensors detect at least one of a presence or absence of the magnets and a code by position of a polarity of magnets which indicate a set of operating conditions of the surgical instrument (See column 3, line 56 - column 6, line 47; figures 1-3D), the magnets and sensors can be easily applied to the cannula and surgical system).
Regarding claims 9-17, since the structural limitations are as recited above, the method steps are obtained in therefore, obvious.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,138,130 (hereinafter ‘130 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claimed invention is a broader recitation of the ‘130 Patent. For instance, in claim 1 of the current application and in the ‘130 Patent, the applicant claims:
Applicant No. 19/428,932
Patent No. 12,138,130
A medical system comprising: a manipulating system comprising a manipulator arm; a cannula mount supported by the manipulator arm, the cannula mount comprising: a receptacle, and one or more magnet sensors configured to sense a magnetic field; a cannula for insertion of a medical instrument mounted at the manipulator arm, the cannula comprising: a bowl portion; a tube portion extending distally from the bowl portion; and an attachment portion protruding radially outward from one side of the bowl portion, the attachment portion insertable into the receptacle of the cannula mount to mount the cannula in a position to permit removable insertion of the medical instrument through the tube portion, one or more magnets arranged at the attachment portion to encode information relating to the cannula; and a controller configured to: receive output from the one or more magnet sensors in response to the one or more magnet sensors sensing a magnetic field of the one or more magnets at the attachment portion of the cannula, and to control the manipulator arm based on the output.
A cannula for insertion of a medical instrument, the cannula comprising: a tube portion; and an attachment portion coupled to the tube portion and insertable into a receptacle of a cannula mount to mount the cannula in a position to permit removable insertion of the medical instrument through the tube portion; and one or more magnets arranged at the attachment portion and configured to encode identifying information of the cannula, wherein the attachment portion comprises a plurality of encoding positions that each indicate part of the identifying information; and wherein for each encoding position of the plurality of encoding positions, absence of one of the one or more magnets at the respective encoding position indicates a first value, presence of one of the one of the magnets with a first orientation at the respective encoding position indicates a second value, and presence of one of the one of the magnets with a second orientation at the respective encoding position indicates a third value.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of claims 1-14 of the ‘130 Patent as a general teaching for a cannula for insertion instrument, to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘130 Patent and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘130 Patent [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first paten. IN re Vogel, 164 USPQ 619 (CCPA 1970). A timely filed terminal disclaimer in compliance with 37 C.F.R. & 1.321(b) would overcome an actual or provisional rejection on this ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 C>FR> &1.78(d).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached on M to F 8:00-8:00.
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DANIEL . ST CYR
Examiner
Art Unit 2876
DS
/DANIEL ST CYR/
Primary Examiner, Art Unit 2876
Prosecution Insights