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 .
Disposition of Claims
Claims 1-8 & 20-21 are pending and rejected.
Claim 19 is canceled.
Response to Arguments
Applicant’s arguments, see Pages 7-9, filed October 28, 2025, with respect to the rejections under 35 U.S.C. § 103 of Claims 1-18 & 20-21 have been fully considered and are persuasive in light of amendments to the claims.
The rejections under 35 U.S.C. § 103 of Claims 1-18 & 20-21 have been withdrawn.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 & 20-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claims 1, 11 & 17, Claim 1 recites the limitation “a fusion surface formed of a first resin material… having a melting point of a first temperature… a bending portion formed of a material having a melting point of a second temperature higher than the first temperature... [and] wherein the first resin material is transparent [emphasis added]” on Lines 3-6 & 12. Claim 11 recites the limitation “a distal end portion formed of a first resin material having a melting point of a first temperature… a bending portion formed of a material having a melting point of a second temperature higher than the first temperature… [and] wherein the first resin material is transparent [emphasis added]” on Lines 3-6 & 16. Finally, Claim 17 recites the limitation “forming a distal end portion from a transparent first resin material having a melting point of a first temperature… [and] forming a bending portion using a material having a melting point of a second temperature higher than the first temperature [emphasis added]” on Lines 3-6. There is no written description for these limitations in Applicant’s specification.
Specifically, Applicant’s second embodiment (Fig. 3 & Paras. [0040] – [0055]), recites
an insertion portion 2 ([0008]) comprising, inter alia,
a distal end portion (i.e., component) 11 ([0042]) comprising:
an annual portion 11d ([0042]) including a fusion surface 11c formed on an outer peripheral surface of the annual portion 11d ([0049]), the annual portion 11d and the fusion surface 11c are both formed of a first resin material ([0042] & [0050]) having a first melting point T1 ([0014] & [0042]); and
a body portion 11e ([0042]) formed of a fifth resin material ([0042]), the firth resin material is transparent ([0045]) and has a fifth melting point T5 ([0043]); and
a bending portion 12 ([0019]) formed of a second resin material ([0021]) having a second melting point T2 ([0021]),
wherein the second melting point T2 is higher than the first melting point T1 ([0021]); and
wherein the fifth melting point T5 is higher than the first melting point T1 and equal to or higher than the second melting point T2.
There is no disclosed embodiment, however, wherein the first resin material is transparent and has a melting point lower than the second resin material. Therefore, Examiner concludes that the Applicant’s disclosure does not provide sufficient written description to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor, at the time the application was filed, had possession of the claimed invention.
Regarding Claim 6, Claim 1 recites the limitation “a portion of a component comprising the fusion surface of the first resin material is integrally formed as an optical member comprising at least a portion of a lens and an illumination window of the endoscope” on Lines 12-14. Claim 6 further recites “wherein the component is formed at a distal end portion of a flexible tube coupled to a proximal end side of the bending portion [emphasis added]” on Lines 1-3. There is no written description for this limitation in Applicant’s specification.
Prior to the current amendments to Claim 6, Claim 6 recited “wherein the fusion surface is formed at a distal end portion of a flexible tube coupled to proximal end side of the bending portion [emphasis added]”. This fusion surface in Claim 6 corresponded to the fusion surface 13c of a distal end portion 13a of a flexible tube 13 ([0058]), of Applicant’s third embodiment (Fig. 4 & Paras. [0056] – [0061]). Given that Claim 1, from which Claim 6 depends, was generic prior to the current amendments, Claim 6 was a permissible species claim. Now that Claim 1 is non-generic and Claim 6 has been amended to recite “the component” instead of “the fusion surface”, there is no such disclosed embodiment. Therefore, Examiner concludes that the Applicant’s disclosure does not provide sufficient written description to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor, at the time the application was filed, had possession of the claimed invention.
Regarding Claim 10, Claim 1 recites the limitation “a portion of a component comprising the fusion surface of the first resin material is integrally formed as an optical member comprising at least a portion of a lens and an illumination window of the endoscope” on Lines 12-14. Claim 10 further recites the limitation “the component comprises a distal end portion provided distally relative to the bending section… [and] the distal end portion is integrally formed with the distal end side of the elastic tube [emphasis added]” on Lines 6-7 & 9. There is no written description for this limitation in Applicant’s specification.
Prior to the current amendments, the distal end portion integrally formed with the distal end of the elastic tube corresponded to the distal end portion 11 integrally formed with the first end 14a of the elastic member 14 ([0057]) of Applicant’s third embodiment (Fig. 4 & Paras. [0056] – [0061]). Given that Claim 1, from which Claim 10 depends, was generic prior to the current amendments, Claim 10 was a permissible species claim. Now that Claim 1 is non-generic, there is no such disclosed embodiment of the transparent first resin material and the integrally formed elastic member. Therefore, Examiner concludes that the Applicant’s disclosure does not provide sufficient written description to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor, at the time the application was filed, had possession of the claimed invention.
Regarding Claims 2-5, 7-9, 12-16, 18 & 20-21, Claims 2-5, 7-9, 12-16, 18 & 20-21 are rejected as being dependent upon claims previously rejected under 35 U.S.C. § 112(a).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN FLOYD LONDON whose telephone number is (571)272-4478. The examiner can normally be reached Monday - Friday: 10:00 am ET - 6:00pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CAREY can be reached at (571)270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795