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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/27/2026 has been entered.
Response to Amendment
The amendments to claims 1, 8, and 9 and the addition of claim 13-15 in the response filed on x are acknowledged.
Claims 1-15 remain pending in the application
Claims 13-15 are added.
Claims 1-15 are examined.
Response to Arguments
The applicant’s arguments have been considered but are moot in view of the new grounds of rejection necessitated by the applicant’s amendments to the claims. The applicant has modified claims 1, 8, and 9 to require “a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve”, limitations heretofore not presented for examination in this application. As such, the scope of the claims was substantially changed and new grounds for rejection are presented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1- 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2008/0228035 to Hagihara et al. (hereinafter “Hagihara”) in view of U.S. Publication No. 2019/0090723 to Tanaka et al. (hereinafter “Tanaka”) and EP 3092940 A1 to Onoe and U.S. Publication No. 2020/0069302 to Milbocker et al. (hereinafter “Milbocker”) and JP 2016187535 A to Yamabe et al. (hereinafter “Yamabe”) and U.S. Patent No. 5,871,440 to Okada.
Regarding claim 1, Hagihara discloses an endoscope comprising:
an insertion portion (44, Fig. 11, [0093]) in which a cleaning liquid is ejected from a nozzle (55, Fig. 12, [0094]);
a convex observation optical system (51, Fig. 12, [0094]) provided at a distal end of the insertion portion (41, Fig. 12, [0094]);
an unevenly shaped (Fig. 27, [0126]) distalmost end surface (41a, Fig. 12, [0094]) surrounding the observation optical system, wherein the distalmost end surface is an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system.
Hagihara fails to expressly teach a convex observation optical system, an unevenly-shaped distalmost end surface having exposed randomly-formed exposed elements thereon, wherein the distalmost end surface is an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system.
However, Tanaka teaches of an endoscope (Tanaka: 1, Fig. 1, [0032]) including a convex observation optical system (Tanaka: 30, Fig. 2, [0047]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara to utilize a convex observation optical system, as taught by Tanaka. It would have been advantageous to make the combination for the purpose of observing the inside of a subject ([0034] of Tanaka).
Hagihara, in view of Tanaka, fails to expressly teach an unevenly-shaped distalmost end surface having randomly-formed exposed elements thereon, wherein the distalmost end surface is an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system.
However, Onoe teaches of an endoscope (Onoe: 2, Fig. 1, [0010]) wherein the distalmost end surface is an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system (Onoe: Fig. 6, DS1, [0039]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka, to utilize an inclined surface, as taught by Onoe. It would have been advantageous to make the combination for the purpose of preventing water from reaching the surface of the observation window ([0083] of Onoe).
Hagihara, in view of Tanaka and Onoe, fails to expressly teach an unevenly-shaped distalmost end surface having randomly-formed exposed elements thereon.
However, Milbocker teaches of an unevenly-shaped distal end surface (Milbocker: 10, Fig. 1, [0040]) having randomly-formed exposed elements (Milbocker: [0046]-[0047], Fig. 4).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe, to utilize an unevenly-shaped distal end surface having randomly-formed exposed elements thereon, as taught by Milbocker. It would have been advantageous to make the combination for the purpose of having greater utility when interacting with a natural surface ([0047] of Milbocker).
Hagihara, in view of Tanaka and Onoe and Milbocker fails to expressly teach an unevenly-shaped distalmost end surface.
However, Yamabe teaches of an unevenly-shaped distalmost end surface (10, Fig. 3, [0014]) having exposed elements thereon (81, 82, Fig. 4-Fig. 6, [0025]-[0034]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker to utilize the surface of Yamabe. It would have been advantageous to make the combination for the purpose of improving the hydrophilicity on the surface, improving the water repellency on the surface, improving the lipophilicity on the surface, and suppressing light reflection ([0021] of Yamabe).
Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe, fails to expressly teach a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve.
However, Okada teaches of an endoscope (Okada: Fig. 2A) wherein a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve (Okada: 26, 22, Fig. 2A, Col. 3 lines 55-67 and Col. 4, lines 1-7).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, to utilize a curve in the manner as taught by Okada. It would have been advantageous to make the combination for the purpose of arranging the components as close as possible to one another (Okada: 26, 22, Fig. 2A, Col. 3 lines 55-67 and Col. 4, lines 1-7).
Regarding claim 2, Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, teaches the endoscope according to claim 1.
Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, fails to expressly teach wherein a plurality of recesses are provided on the distalmost end surface.
However, Yamabe further teaches wherein a plurality of recesses are provided on the distalmost end surface (Yamabe: 82, Fig. 6, [0020]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, to utilize a plurality of recesses are provided on the distalmost end surface, as taught by Yamabe. It would have been advantageous to make the combination for the purpose of improving the hydrophilicity on the surface, improving the water repellency on the surface, improving the lipophilicity on the surface, and suppressing light reflection ([0021] of Yamabe).
Regarding claim 3, Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, teaches the endoscope according to claim 1, but fails to expressly teach wherein a plurality of protrusions are provided on the distalmost end surface.
However, Yamabe further teaches wherein a plurality of protrusions are provided on the distalmost end surface (Yamabe: 81, Fig. 6, [0020]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, to utilize protrusions on the distalmost end surface, as taught by Yamabe. It would have been advantageous to make the combination for the purpose of improving the hydrophilicity on the surface, improving the water repellency on the surface, improving the lipophilicity on the surface, and suppressing light reflection ([0021] of Yamabe).
Regarding claim 4, Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, teaches the endoscope according to claim 1.
Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, fails to expressly teach the wherein the uneven shape forms a groove.
However, Yamabe further teaches wherein the uneven shape forms a groove surface (Yamabe: 82, Fig. 6, [0020]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, to utilize a groove, as taught by Yamabe. It would have been advantageous to make the combination for the purpose of improving the hydrophilicity on the surface, improving the water repellency on the surface, improving the lipophilicity on the surface, and suppressing light reflection ([0021] of Yamabe).
Regarding claim 5, Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, teaches the endoscope according to claim 4.
Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, fails to expressly teach wherein the groove extends radially from the observation optical system.
However, Yamabe further teaches wherein the groove extends radially from the observation optical system (Yamabe: 82, Fig. 6, [0020]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, so that the groove extends radially from the observation optical system, as taught by Yamabe. It would have been advantageous to make the combination for the purpose of improving the hydrophilicity on the surface, improving the water repellency on the surface, improving the lipophilicity on the surface, and suppressing light reflection ([0021] of Yamabe). In addition, a change in size of a component or device is generally recognized as being within the level of ordinary skill in the art (MPEP2144.04(IV)(A)).
Regarding claim 6, Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, teaches the endoscope according to claim 4, and Hagihara further discloses wherein a suction hole for sucking remaining liquid is formed on the distalmost end surface (Hagihara: 54, Fig. 12, [0094]), and the groove extends from the observation optical system toward the suction hole (Hagihara: 27, Fig. 23, Fig. 27, [0119], [0126]).
Regarding claim 7, Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, teaches the endoscope according to claim 3, and Hagihara further discloses wherein each of the protrusions has a dot shape (Hagihara: 27, Fig. 23, Fig. 27, [0119], [0126]).
Regarding claim 8, Hagihara discloses a method for manufacturing an endoscope ([0078]) that includes an observation optical system (Hagihara: 51, Fig. 12, [0094]) provided at a distal end (Hagihara: 41, Fig. 12, [0094]) of an insertion portion (Hagihara: 44, Fig. 11, [0093]) and in which a cleaning liquid is ejected from a nozzle (Hagihara: 55, Fig. 12, [0094]), the method comprising performing unevenness processing (4 Hagihara: 8, Fig. 12, [0096]) on a distalmost end surface surrounding the observation optical system (Hagihara: 41a, Fig. 12, [0094]).
Hagihara fails to expressly teach a convex observation optical system, performing unevenness processing on a distalmost end surface surrounding the observation optical system to randomly form elements thereon, and providing an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system, and a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve.
However, Tanaka teaches of a method including a convex observation optical system (Tanaka: 30, Fig. 2, [0047]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara to utilize a convex observation optical system, as taught by Tanaka. It would have been advantageous to make the combination for the purpose of observing the inside of a subject ([0034] of Tanaka).
Hagihara, in view of Tanaka, fails to expressly teach performing unevenness processing on a distalmost end surface surrounding the observation optical system to randomly form elements thereon, providing an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system, and a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve.
However, Onoe, teaches of an analogous method that includes providing an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system (Onoe: Fig. 6, DS1, [0039]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Hagihara, in view of Tanaka, to include providing an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system, as taught by Onoe. It would have been advantageous to make the combination for the purpose of preventing water from reaching the surface of the observation window ([0083] of Onoe).
Hagihara, in view of Tanaka and Onoe, fails to expressly teach performing unevenness processing on a distalmost end surface surrounding the observation optical system to randomly form elements thereon and a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve.
However, Yamabe teaches of an analogous method including performing unevenness processing on a distalmost end surface (Yamabe: [0029]- [0039]) surrounding the observation optical system to randomly form elements thereon (Yamabe: Fig. 4-Fig. 6)
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Hagihara, in view of Tanaka and Onoe, to utilize performing unevenness processing on a distalmost end surface surrounding the observation optical system to randomly form elements thereon, in the manner taught by Yamabe. It would have been advantageous to make the combination for the purpose of improving the hydrophilicity on the surface, improving the water repellency on the surface, improving the lipophilicity on the surface, and suppressing light reflection ([0021] of Yamabe).
Hagihara, in view of Tanaka and Yamabe and Onoe fails to expressly teach the method comprising randomly forming elements and a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve.
However, Milbocker teaches of an unevenly-shaped distal end surface (Milbocker: 10, Fig. 1, [0040]) having randomly-formed exposed elements (Milbocker: [0046]-[0047], Fig. 4).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Yamabe and Onoe, to utilize an unevenly-shaped distal end surface having randomly-formed exposed elements thereon, as taught by Milbocker. It would have been advantageous to make the combination for the purpose of having greater utility when interacting with a natural surface ([0047] of Milbocker).
Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe, fails to expressly teach a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve.
However, Okada teaches of an endoscope (Okada: Fig. 2A) wherein a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve (Okada: 26, 22, Fig. 2A, Col. 3 lines 55-67 and Col. 4, lines 1-7).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, to utilize a curve in the manner as taught by Okada. It would have been advantageous to make the combination for the purpose of arranging the components as close as possible to one another (Okada: 26, 22, Fig. 2A, Col. 3 lines 55-67 and Col. 4, lines 1-7).
Regarding claim 9, Hagihara discloses a method for manufacturing an endoscope ([0078]) that includes a observation optical system (51, Fig. 12, [0094]) provided at a distal end (41, Fig. 12, [0094]) of an insertion portion (44, Fig. 11, [0093]) and in which a cleaning liquid is ejected from a nozzle (55, Fig. 12, [0094]), the method comprising forming elements on a distalmost end surface surrounding the observation optical system and having an uneven shape (48, Fig. 12, [0096]).
Hagihara fails to expressly teach the method comprising randomly forming elements on a convex observation optical system and using a mold such that the distalmost end surface has an uneven shape, and providing an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system, wherein a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve.
However, Tanaka teaches of an endoscope including a convex observation optical system (Tanaka: 30, Fig. 2, [0047]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara to utilize a convex observation optical system, as taught by Tanaka. It would have been advantageous to make the combination for the purpose of observing the inside of a subject ([0034] of Tanaka).
Hagihara, in view of Tanaka the method comprising randomly forming elements on a convex observation optical system and using a mold such that the distalmost end surface has an uneven shape, and providing an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system,wherein a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve.
However, Yamabe teaches of a method for manufacturing an endoscope (Yamabe:100, Fig. 1, [0035]- [0036]) by using a mold such that the distalmost end surface has an uneven shape (Yamabe: [0036]- [0039]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, to include using a mold, as taught by Yamabe. It would have been advantageous to make the combination for the purpose of forming a pattern on the distalmost end surface ([0036] of Yamabe).
Hagihara, in view of Tanaka and Yamabe, fails to expressly teach the method comprising randomly forming elements on a convex observation optical system and using a mold such that the distalmost end surface has an uneven shape, providing an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system, wherein a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve.
However, Onoe, teaches of an analogous method that includes providing an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system (Onoe: Fig. 6, DS1, [0039]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Hagihara, in view of Tanaka and Yamabe, to include providing an inclined surface extending from an edge of the insertion portion to an edge of the observation optical system, as taught by Onoe. It would have been advantageous to make the combination for the purpose of preventing water from reaching the surface of the observation window ([0083] of Onoe).
Hagihara, in view of Tanaka and Yamabe and Onoe fails to expressly teach the method comprising randomly forming elements, wherein a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve.
However, Milbocker teaches of an unevenly-shaped distal end surface (Milbocker: 10, Fig. 1, [0040]) having randomly-formed exposed elements (Milbocker: [0046]-[0047], Fig. 4).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Yamabe and Onoe, to utilize an unevenly-shaped distal end surface having randomly-formed exposed elements thereon, as taught by Milbocker. It would have been advantageous to make the combination for the purpose of having greater utility when interacting with a natural surface ([0047] of Milbocker).
Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe, fails to expressly teach a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve.
However, Okada teaches of an endoscope (Okada: Fig. 2A) wherein a curve of the distal end extending from an edge of the insertion portion to a center of the convex observation optical system is an uninterrupted, continuous curve (Okada: 26, 22, Fig. 2A, Col. 3 lines 55-67 and Col. 4, lines 1-7).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, to utilize a curve in the manner as taught by Okada. It would have been advantageous to make the combination for the purpose of arranging the components as close as possible to one another (Okada: 26, 22, Fig. 2A, Col. 3 lines 55-67 and Col. 4, lines 1-7).
Regarding claim 10, Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada teaches the endoscope according to claim 1.
Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada fails to expressly teach wherein the randomly-formed exposed elements are recesses.
However, Yamabe further teaches wherein the randomly-formed exposed elements are (Yamabe: 82, Fig. 6, [0020]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, so that the randomly-formed exposed elements are recesses, as taught by Yamabe. It would have been advantageous to make the combination for the purpose of providing a roughened surface ([0117] of Yamabe).
Regarding claim 11 Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada teaches the method according to claim 8.
Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada fails to expressly teach wherein the randomly-formed exposed elements are recesses.
However, Yamabe further teaches wherein the randomly-formed exposed elements are recesses (Yamabe: 82, Fig. 6, [0020]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, so that the randomly-formed exposed elements are recesses, as taught by Yamabe. It would have been advantageous to make the combination for the purpose of forming a pattern on the distalmost end surface ([0036] of Yamabe).
Regarding claim 12, Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada and teaches the method according to claim 9.
Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada fails to expressly teach wherein the randomly-formed exposed elements are recesses.
However, Yamabe further teaches wherein the randomly-formed exposed elements are recesses (Yamabe: 82, Fig. 6, [0020]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada, so that the randomly-formed exposed elements are recesses, as taught by Yamabe. It would have been advantageous to make the combination for the purpose of forming a pattern on the distalmost end surface ([0036] of Yamabe).
Regarding claim 13, Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada teaches the endoscope according to claim 1, and although Milbocker does teach a minimum spacing of 1 micron between each texture feature (Milbocker: Col. 11, lines 25-40), Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe Okada fails to expressly teach wherein a distance between the exposed randomly-formed elements is 0.3 mm to 0.5 mm.
However, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada so that a distance between the exposed randomly-formed elements is 0.3 mm to 0.5 mm, as claimed, since Milbocker already teaches the premise the distance between the elements cahn be adjusted/selected accordingly, for instance spacing between features is smaller for less viscous liquids and larger for more viscous, and since where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (MPEP 2144.05).
Additionally, it would have been an obvious matter of design choice to modify the distance between the exposed randomly-formed elements of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada so that the distance is 0.3 mm to 0.5 mm since applicant has not disclosed that having the distance to be from 0.3 mm to 0.5 mm solves any stated problem or is for any particular purpose and it appears that the device would perform equally well with either design. Furthermore, absent a teaching as to the criticality of the distance between the exposed randomly-formed elements being 0.3 mm to 0.5 mm, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement.
Regarding claim 14, Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada teaches the endoscope according to claim 8, and although Milbocker does teach a minimum spacing of 1 micron between each texture feature (Milbocker: Col. 11, lines 25-40), Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe Okada fails to expressly teach wherein a distance between the exposed elements is 0.3 mm to 0.5 mm.
However, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada so that a distance between the exposed elements is 0.3 mm to 0.5 mm, as claimed, since Milbocker already teaches the premise the distance between the elements can be adjusted/selected accordingly, for instance spacing between features is smaller for less viscous liquids and larger for more viscous, and since where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (MPEP 2144.05).
Additionally, it would have been an obvious matter of design choice to modify the distance between the exposed randomly-formed elements of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada so that the distance is 0.3 mm to 0.5 mm since applicant has not disclosed that having the distance to be from 0.3 mm to 0.5 mm solves any stated problem or is for any particular purpose and it appears that the device would perform equally well with either design. Furthermore, absent a teaching as to the criticality of the distance between the exposed elements being 0.3 mm to 0.5 mm, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement.
Regarding claim 15, Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada teaches the endoscope according to claim 8, and although Milbocker does teach a minimum spacing of 1 micron between each texture feature (Milbocker: Col. 11, lines 25-40), Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe Okada fails to expressly teach wherein a distance between the exposed elements is 0.3 mm to 0.5 mm.
However, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada so that a distance between the exposed elements is 0.3 mm to 0.5 mm, as claimed, since Milbocker already teaches the premise the distance between the elements can be adjusted/selected accordingly, for instance spacing between features is smaller for less viscous liquids and larger for more viscous, and since where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (MPEP 2144.05).
Additionally, it would have been an obvious matter of design choice to modify the distance between the exposed randomly-formed elements of Hagihara, in view of Tanaka and Onoe and Milbocker and Yamabe and Okada so that the distance is 0.3 mm to 0.5 mm since applicant has not disclosed that having the distance to be from 0.3 mm to 0.5 mm solves any stated problem or is for any particular purpose and it appears that the device would perform equally well with either design. Furthermore, absent a teaching as to the criticality of the distance between the exposed elements being 0.3 mm to 0.5 mm, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance.
Conclusion
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/C.A.S./Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795