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 .
Status of Claims
Applicant’s amendment filed 03/17/2026 has been entered. Claims 98, 99, 102-104, 106-117 are pending, claims 110-113 and 115-117 have been withdrawn from consideration and claims 98, 99, 102-104, 106-109 and 114 are currently under consideration for patentability under 37 CFR 1.104. Response to arguments found below.
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:
A focusing mechanism mounted within the housing of the camera for focusing the lens; and the focusing mechanism comprises a focusing lens and is arranged to vibrate the focusing lens or the image sensor in claim 104.
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 § 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.
Claim(s) 98, 102, 103, 107-109, 114 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moreau et al. (U.S. 2019/0328217) in view of Ray et al. (U.S. 2015/0216402) and Shimonaka et al. (JP S60-084524).
With respect to claim 98, Moreau et al. teaches a scope for examining an internal part of the ear (para [0129]), the scope comprising:
a probe (312) formed by an elongate probe body (FIG. 26) for insertion into the internal ear structure (intended use);
a housing (500) coupled to a distal end of the probe body being rotatable about an axis of rotation (para [0255])
a camera having an image sensor (512) located within the housing (para [0255]) and a curved front lens or window forming part of the housing to define an exposed outer surface of the housing (FIG. 26);
wherein the camera is rotatable with the housing relative to the probe body (para [0255], FIG. 26).
However, Moreau et al. does not teach a self-cleaning module. Moreau et al. further does not teach a uniform circular profile of the housing about the axis of rotation.
With respect to claim 98, Ray et al. teaches a scope comprising one or more self-cleaning modules (28), wherein at least one of the self-cleaning modules comprises a cleaning element (28) and the sphere is rotatable relative to the cleaning element (para [0032]).
With respect to claim 98, Shimonaka et al. teaches a scope comprising:
a housing coupled to a distal end of a probe body being rotatable about an axis of rotation (FIG. 5); and
a camera having an image sensor (18) located with in the housing and a curved front lens or window forming a part of the housing to define an exposed outer surface of the housing, the exposed outer surface being part of a uniform circular profile of the housing about the axis of rotation (FIG. 5).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify Moreau et al. to include a cleaning element in the manner taught by Ray et al. in order to remove solid debris from the sphere and prevent debris from entering the scope (para [0032] of Ray et al.).
Further, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify Moreau et al. to have a uniform outer circumference in the manner taught by Shimonaka in order to allow for easier and more thorough cleaning and disinfection by reducing areas where body fluids can collect.
With respect to claim 102, Ray et al. teaches the cleaning element is positioned proximally relative to the sphere (FIG. 4).
With respect to claim 103, Ray et al. teaches the cleaning element is fixed in position by attachment to the probe and is arranged to engage with the rotatable camera at any point along the camera circumference as defined by its rotation axis (FIG. 2-4).
With respect to claim 107, Moreau et al. teaches a light source for illuminating a field of view of the image sensor (para [0294]).
With respect to claim 108, another embodiment of Moreau et al. teaches the scope comprises an orienting mechanism configured to control the rotational movement of the housing relative to the probe body (384, para [0276]).
With respect to 109, Moreau et al. teaches the orienting mechanism comprises a belt orienting mechanism (para [0276]) comprising a drive belt coupled to a driven shaft acting on the housing wherein the drive belt is wrapped around the drive shaft and/or the driven shaft (FIG. 35).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to utilize the drive belt in order to allow for a wide range of pivoting of the camera assembly 350 without the need for a pull-cable pivot actuator to be redirected laterally within the insertion section 14 to achieve an equivalent range of motion of the camera assembly (para [0278] of Moreau et al.).
With respect to claim 114, Moreau et al. teaches the diameter of the insertion section may be approximately 5.5 mm or smaller (para [0133]). It would be obvious to one of ordinary skill in the art that if the insertion section 312 in FIG. 26 is 5.5 mm, that the camera circumference would be less than 5.5 mm as measured through the rotational axis so that it could comfortably sit in the distal tip 550 of the shaft 14.
Claim(s) 99 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moreau et al. (U.S. 2019/0328217) in view of Ray et al. (U.S. 2015/0216402) and Shimonaka et al. (JP S60-084524) as applied to claim 98 above and further in view of Ho et al. (U.S. 2013/0123577).
With respect to claim 99, Moreau et al. teaches the image sensor is arranged to visualize through the outer surface of the rotatable camera which forms the outer exposed surface of the scope (para [0294]); the outer surface of the rotatable camera through which the image sensor is arranged to visualize is spaced apart from the probe body to maintain clearance between them and allow relative movement between them (FIG. 26)
However, Moreau et al. does not teach the camera is arranged to rotate 360 degrees about its rotational axis.
With respect to claim 99, Ho et al. teaches an analogous scope wherein the camera is arranged to rotate 360 degrees about its rotational axis (para [0070]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify the device of Moreau et al. to allow for a rotation of 360 degrees in the manner taught by Ho et al. because Ho et al teaches it would be obvious to pick whatever range is desired (para [0070] of Ho et al.).
Claim(s) 104 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moreau et al. (U.S. 2019/0328217) in view of Ray et al. (U.S. 2015/0216402) and Shimonaka et al. (JP S60-084524) as applied to claim 98 above and further in view of Ashizawa et al. (U.S. 2012/0177354).
With respect to claim 104, Moreau et al. teaches the camera is fitted with an optical configuration comprising a lens (510); the image sensor is configured to generate image data from light received through the lens (para [0294]-[0295]).
However, Moreau et al. does not teach a focusing mechanism.
With respect to claim 104, Ashizawa et al. teaches a focusing mechanism for focusing a lens (L1 for example); and the focusing mechanism comprises a focusing lens (L3 for example) and is arranged to vibrate the focusing lens or the image sensor so that the distance between the focusing lens and the image sensor varies (FIG. 1).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify Moreau et al. to utilize a focusing mechanism in the manner taught by Ashizawa et al. in order to allow for focusing without rotation (para [0017] of Ashizawa et al.). Such a modification would result in the focusing mechanism being mounted within the housing of the camera.
Claim(s) 106 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moreau et al. (U.S. 2019/0328217) in view of in view of Ray et al. (U.S. 2015/0216402), Shimonaka et al. (JP S60-084524) and Ashizawa et al. (U.S. 2012/0177354) as applied to claim 104 and further in view of Magee (U.S. 2019/0113744).
Moreau et al. teaches a scope as set forth above. However, Moreau does not teach the vibratable focusing lens or image sensor is arranged to provide cleaning of an outer surface of the camera.
With respect to claim 106, Magee teaches a vibratable lens is arranged to provide cleaning of an outer surface of the camera (para [0034]-[0035]), the vibrating mechanism is arranged to vibrate the lens at a frequency that is approximately the same as a resonant frequency of the lens (FIG. 2, para [0018])
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify Moreau et al. to have a vibrational window cleaning arrangement in the manner taught by Magee in order to provide a means to reduce or dispel matter from the exterior surface of the lens (para [0011] of Magee). The combination of Moreau et al., Ray et al., Ashizawa et al., and Magee would result in the focusing mechanism being arranged to switch the frequency of vibration of the focusing lens or image sensor between a first frequency that is different from the resonant frequency of the lens or window of the camera and a second frequency that is the same as the resonant frequency of the lens or window.
Response to Arguments
Applicant's arguments filed 03/17/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Ray does not teach or suggest a rotatable camera or image sensor, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The primary reference Moreau et al. teaches a rotatable camera. Ray is relied on to teach the self-cleaning module.
In response to applicant's argument that the lip of Ray wipes the sphere rather than cleaning a lens or window that forms part of a camera housing, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that Shimonaka does not disclose a housing geometry suitable for cleaning during rotation, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that Ray and Shimonaka are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Moreau et al., Ray, and Shimonaka are all in the same field of endeavor as the current application; that is, endoscopy.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Specifically, Applicant is arguing against combining Ray and Shimonaka when claim 98 is rejected by Moreau et al. in view of Ray and Shimonaka. Applicant has provided no arguments, persuasive or otherwise, with respect to modifying Moreau et al. in view of the teachings of Ray and Shimonaka.
Applicant’s argument that Ray teaches away from Applicant’s notion of rotating the image sensor and the housing relative to the distal end of the probe is not persuasive. The primary reference Moreau et al. teaches rotating the image sensor and the housing relative to the distal end of the probe is not persuasive. Ray is relied upon to teach a self cleaning module.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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.
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/ALEXANDRA L NEWTON/Primary Examiner, Art Unit 3799