DETAILED ACTION1
CONTINUED EXAMINATION UNDER 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 19, 2025 has been entered.
REJECTIONS UNDER 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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.
Claims 39-41 are rejected under 35 U.S.C. 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 39 recites the system detects a movement of the endoscope in a scene in which a lumen is lost sight of when the lumen is lost sight of. This tautological feature does not make any sense on its face, and it is unclear what is being claimed. Substantive examination of claim 39 is not possible at this time. Claims 40-41 are rejected based on their dependence.
REJECTIONS UNDER 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious2 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(a) 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 27-29, 34-36, & 42-46 are rejected under 35 U.S.C. 103 as being unpatentable over by U.S. 2020/0138269 to Nishimura.
Claim 27 recites a control apparatus. Nishimura relates to such an apparatus, specifically an endoscope control device (40). See Nishimura [0026]. Nishimura teaches this control device has a controller (40) has a processor configured to detect an image pickup scene based on an endoscope image. See Nishimura [0028]-[0029]. As a matter of claim construction, the term scene as used in both the specification and claims is analogous to the term “scenario” (rather than analogous to “picture”). See e.g. Specification [0004]. Nishimura then teaches calculating operation information corresponding to the…scene. See Nishimura [0028]-[0029], [0043]-[0045], [0061]-[0070] and Figs. 1 & 4. Specifically, Nishimura teaches using an AI algorithm to determine the likely state of the endoscope within the colon and the likely type of scenario the images suggest. Id. Nishimura further teaches the AI suggests an operation (i.e. action to be taken) to the operator to remedy the situation. See Nishimura [0066]-[0070] and Figs. 4-5.
Claim 27 recites that the operation information includ[es] first…and second operation information[s] with the second operation to be taken after the first. Claim 27 then further recites simultaneously output[ing] both operations. Nishimura does not explicitly teach simultaneously outputting two suggestions to be performed in sequence. Yet it would have been obvious to do so based on Nishimura’s teachings. First, Nishimura explicitly teaches outputting at least one operation suggestion. See Nishimura [0067]. Nishimura teaches these suggests are designed for unskilled operators to mimic the operations a skilled operator would instinctively know to perform. See Nishimura [0070]. Nishimura then teaches that, in the relevant example, this skilled operator would first perform a PULL operation followed by an angle movement. Id. Since Nishimura teaches the system is designed to suggest the actions a skilled operator would perform, it follows that it would have been obvious as a matter of common sense for the system to output a series of suggestions based on the scenario, when appropriate.
Furthermore, figure 5 of Nishimura teaches a scenario (situation 5) in which the suggested operations are an “air supply operation” and a “deaeration operation.” One of ordinary skill would infer these two operations would be performed in sequence. Thus, one of ordinary skill would have thought it obvious to output both operations suggestions simultaneously to the operator. Since Nishimura suggests several sitations in which a series of sequential operations would be the logical output, it follows that it would have been obvious to modify the controller to be configured i.e. capable of outputting two sequential suggested operations simultaneously to ensure the operator knew both the immediate, and subsequent, action to be taken.
Claim 28 recites that the image pickup scene is a folded lumen. Claim 28 is an apparatus claim, thus the specific scenario being addressed is relevant only insofar as the system must be capable of recognizing a folded lumen. Nishimura is trained on folded lumens, as shown in figure 3, and is therefore capable of this intended use. Claim 29 recites that the two operations are output[ed] to a monitor. Nishimura teaches the auxiliary information is outputted as “visual information.” See Nishimura [0085]. While Nishimura does not explicitly refer to a monitor, any device capable of outputting visual information that would include the instructions from figure 5 would have to be a monitor and thus, one of ordinary skill would infer its presence.
Claim 34 recites that the processor outputs the operation information corresponding to the image pickup scene when the processor detects that the image pickup scene is pressing into an intestine and insertion into a folded lumen is not being performed. Claim 34 claims that the processor is configured to perform this step. This requires that the prior art teach a processor that is capable of performing this step without additional modification. Applicant’s specification teaches that the recognition that the endoscope is pressing into an intestine and insertion into a folded lumen is not being performed is performed by an AI system. Nishimura also teaches its endoscope processor uses such AI. It therefore must be presumed to be capable of this intended use. If applicant wishes to argue that their AI model is trained differently, such that Nishimura would be unable to perform this use they may do so. But such argument must be accompanied by specific evidence that this specific output is enabled by specific training or a specific algorithm described in the specification. By this same logic, Nishimura also teaches claims 35-36. Claim 42 recites that the output to the monitor includes numbers indicating order of operation. When displaying sequential operation suggestions it would have been obvious as a matter of common sense to number the operations for ease of interpretation. Regarding claim 43, Nishimura teaches the image pickup scene is calculated based on a machine learning model. See Nishimura [0060].
Claim 44 recites substantially similar features to that of claim 27, but further defines that it constitutes an endoscope system. Nishimura is such a system. Claims 45-46 recite the same features as claims 28-29 and are rejected for the same reasons.
ALLOWABLE SUBJECT MATTER
Claim 30-33, 37-38 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.
Claims 30-32 and 37-38 all recite a specific display technique of using arrows on the endoscope monitor as guides for movement operations. Such a technique is not taught or suggested by Nishimura, which teaches more basic operation recommendations and lacks directional prompts. This directional prompt is also present in claim 33, which is likewise allowable.
RESPONSE TO ARGUMENTS
Applicant's arguments filed December 19, 2025 have been fully considered. All of the previous rejections are withdrawn as being directed to canceled claims. The new rejections address the new claims.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”