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 .
Response to Amendment
Amendments to claims 14-18, 22, 23, 27, 30 of 11/26/2025 acknowledged and entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 16 (sic) of p. 7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
The factual inquiries 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.
Claim(s) 14-18, 20-21, 28-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata (WO 2006046559 A1) in view of Chou (US 20110054263 A1).
Regarding claim 14, Hirata teaches An imaging device configured for use in a medical procedure or a surgical procedure within a cavity of an individual;
wherein the imaging device comprises a body (fig. 1, element 2, [0034], LED adapter 2) having a first terminal end and an opposing second terminal end (distal end has 2 opposing ends by virtue of being oriented in the longitudinal direction), and a first set of cylindrical thermal fins disposed circumferentially about on an exterior of the body proximal to the first terminal end (fig. 27, element 57, [0067], fins 57 disposed on lens support block 12), and the imaging device and the first and second set of thermal fins are insertable into the cavity of the individual (fig. 1, element 1, [0032], lens structure disposed upon insertion portion 1); and
wherein the first and second sets of thermal fins increase a surface area of the exterior of the image capture device by a factor of 2 to 20 times as compared to an imaging device free of thermal fins (fig. 27, element 57, fins extend to at least double the length vs height and cover approximately 75% of the surface of the support block 12. This would result in at least a doubling of the surface area of the device).
Hirata does not explicitly teach the device wherein a second set of cylindrical thermal fins disposed circumferentially about the exterior of the body proximal to the second terminal end thereof, respective fins of the first and second sets of cylindrical fins being axially spaced relative to each other.
However, Chou teaches the device wherein a second set of cylindrical thermal fins (fig. 1, element 106, [0022], heat transfer configuration 106) disposed circumferentially about the exterior of the body proximal to the second terminal end thereof,
respective fins of the first and second sets of cylindrical fins being axially spaced relative to each other (fig. 1, fins of heat sink 106 and the heat transfer fins of the imager 103 of Chou are spaced from each other about the radial axis of the device. Further, they are spaced about the longitudinal axis).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the distal end of Hirata to include a second proximal set of fins as taught in Chou in order to further increase heat dissipation rate (Chou [0022]). While Chou is directed to an illumination device in the proximal portion of an endoscope, a general teaching is provided that a second set of thermal fins increases heat dissipation in illumination devices. This general teaching may be applied to the primary reference, Hirata, in which a single set of thermal fins are provided on an illumination device disposed in the distal end of the endoscope. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 1379, 2020 USPQ2d 10706 (Fed. Cir. 2020); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S. at 418, 82 USPQ2d at 1396.
Further, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced, see MPEP 2144.04.VI.B.
Regarding claim 15, Hirata in view of Chou teaches The imaging device of claim 14,
Further, Hirata teaches the device wherein the imaging device is configured to dissipate heat at a rate of 2 to 20 times as compared to a rate of heat dissipation of an imaging device free of thermal fins (fig. 27, element 57, fins extend to at least double the length vs height and cover approximately 75% of the surface of the support block 12. This would result in at least a doubling of the surface area of the device).
Regarding claim 17, Hirata in view of Chou teaches The imaging device of claim 14,
Further, Hirata teaches the device wherein the imaging device is configured to allow a maximum contact time with the individual undergoing the medical procedure or the surgical procedure that is 2 to 20 times as compared to a maximum contact time with the individual undergoing the medical procedure or the surgical procedure of another imaging device free of the set of thermal fins (fig. 27, element 57, fins extend to at least double the length vs height and cover approximately 75% of the surface of the support block 12. This would result in at least a doubling of the surface area of the device).
Regarding claim 18, Hirata in view of Chou teaches The imaging device of claim 14,
Further, Chou teaches the device further comprising a coating comprising a metal or metal alloy (claim 8, heat dissipation component comprising metallic heat transfer elements).
Regarding claim 20, Hirata in view of Chou teaches The imaging device of claim 18,
Further, Chou teaches the device wherein the metal is selected from the group consisting of aluminum, magnesium, and titanium (Claim 9, aluminum oxide coating).
Regarding claim 21, Hirata in view of Chou teaches The imaging device of claim 14,
Further, Hirata teaches the device wherein the imaging device comprises an endoscope ([0032], insertion portion 1 of the endoscope apparatus).
Regarding claim 30, Hirata in view of Chou teaches The imaging device of claim 14,
Further, Hirata teaches the device wherein the first and second set of thermal fins each comprise at least 1, 2,3,4,5,6,7,8, 9, or 10 thermal fins (fig. 27 of Hirata shows multiple fins 57, which is at least 1).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata in view of Chou as applied to claim 14 in further view of Chung (US 20140142384 A1).
Regarding claim 16, Hirata in view of Chou teaches The imaging device of claim 14,
Hirata and Chou do not explicitly teach the device wherein the imaging device operates at a maximum temperature of 10 °c to 100 °c.
However, Chung teaches the device wherein the imaging device operates at a maximum temperature of 10 °c to 100 °c (Table 1, temperature of light source ranges from 28.1-52.5 degrees C).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the coating of Hirata to operate at 10-100 degrees Celsius as taught in Chung in order to prevent damage to organs at the operation site (Chung [0049]).
Claim(s) 22-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata in view of Chou as applied to claim 14 in further view of Kelsey (US 8779964 B2).
Regarding claim 22, Hirata in view of Chou teaches The image capture device of claim 14,
Hirata in view of Chou does not explicitly teach the device further comprising a polytetrafluoroethylene (PTFE) coating.
However, Kelsey teaches the device further comprising a polytetrafluoroethylene (PTFE) coating (col. 7, ln. 48-65, a film may be comprised of PTFE).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the coating of Hirata to include a PTFE layer as taught in Kelsey in order to obtain desired levels of visual opacity and thermal transparency (Kelsey col. 4, ln. 9-18).
Regarding claim 23, Hirata in view of Chou teaches The image capture device of claim 14,
Hirata in view of Chou does not explicitly teach the device further comprising a coating comprising more than one layer.
However, Kelsey teaches the device further comprising a coating comprising more than one layer (col. 7, ln. 48-65, a layer of film may be comprised of PTFE).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the coating of Chung to include a PTFE layer as taught in Kelsey in order to obtain desired levels of visual opacity and thermal transparency (Kelsey col. 4, ln. 9-18).
Regarding claim 24, Hirata in view of Chou and Kelsey teaches The imaging device of claim 23,
Further, Chou teaches the device wherein the more than one layer comprises an inner layer comprising a conductive material (claim 8, heat dissipation component comprising metallic heat transfer elements).
Regarding claim 25, Hirata in view of Chou and Kelsey teaches The imaging device of claim 24,
Further, Chou teaches the device wherein the conductive material comprises aluminum or copper or a combination thereof (Claim 9, aluminum oxide coating).
Regarding claim 26, Hirata in view of Chou and Kelsey teaches The imaging device of claim 23,
Further, Kelsey teaches the device wherein the more than one layer comprises an outer layer comprising a material with a higher thermal emissivity than an inner layer (fig. 1, element 2, col. 3, ln. 56 – col. 4, ln. 8, polymeric substrate layer may include polypropylene).
Regarding claim 27, Hirata in view of Chou in view of Kelsey teaches The imaging device of claim 26,
Further, Kelsey teaches the device wherein the material with higher thermal emissivity comprises polyether ether ketone (PEEK), glazed porcelain, polypropylene, or a combination thereof (fig. 1, element 2, col. 3, ln. 56 – col. 4, ln. 8, polymeric substrate layer may include polypropylene).
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.
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 TIMOTHY TUAN LUU whose telephone number is (703)756-4592. The examiner can normally be reached Monday-Tuesday, Thursday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Carey can be reached on 5712707235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY TUAN LUU/ Examiner, Art Unit 3795
/MICHAEL J CAREY/ Supervisory Patent Examiner, Art Unit 3795